Electronic Arts Inc. v. Michele Dinoia
Claim Number: FA1108001403750
Complainant is Electronic Arts Inc. (“Complainant”), represented by Eugene M. Pak of Wendel, Rosen, Black & Dean, LLP, California, USA. Respondent is Michele Dinoia (“Respondent”), represented by Micah J. Ogilvie of Safenames Ltd (Legal), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dungeonkeeper.com>, registered with Fabulous.com Pty Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 17, 2011; the National Arbitration Forum received payment on August 18, 2011.
On August 21, 2011, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <dungeonkeeper.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third-parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 22, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 12, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@dungeonkeeper.com. Also on August 22, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on September 12, 2011.
A timely Additional Submission which complies with Supplemental Rule 7 was received on September 16, 2011.
On September 16, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends in part as follows:
EA uses its DUNGEON KEEPER mark in connection with its well-known computer game Dungeon Keeper and has obtained registrations for the mark and filed applications to register the mark in various jurisdictions.
In addition to the common law rights EA owns in the mark through this extensive use and favorable publicity, EA obtained a federal registration for the DUNGEON KEEPER mark in 1997 which remained active through 2008. EA also owns trademark registrations for DUNGEON KEEPER in the European Union (CTM), Japan, and China, as well as pending applications, as shown in the table above.
There are no other registrations for the mark DUNGEON KEEPER in the U.S., European Union, and the dozens of other countries covered by the Saegis database, a popular commercial database of trademarks which is used by many trademark practitioners. The DUNGEON KEEPER mark is therefore highly distinctive and unique.
In light of EA's extensive and substantially exclusive use of the mark, its trademark registrations in the European Union, China, and Japan, its prior United States registration through 2008, and its pending allowed applications in the United States, EA is the undisputable owner of the DUNGEON KEEPER Mark.
In contrast, Respondent has no prior rights to the DUNGEON KEEPER mark or corresponding domain name. Respondent only registered the <dungeonkeeper.com> domain name on December 29, 2002, more than five years after EA first began using DUNGEON KEEPER Mark. In fact, EA had itself owned and used the domain name for a website promoting the game but had allowed the domain name registration to lapse, though EA continued to sell the game through 2002 and beyond.
Since registering the domain name, Respondent has used this domain name for a page of sponsored links and searches linking to other websites, most about gaming, in a clear and brazen attempt to capitalize upon the brand equity and goodwill that EA has built in the DUNGEON KEEPER Mark.
There is no dispute that the domain name <dungeonkeeper.com> is essentially identical to and confusingly similar to EA's DUNGEON KEEPER Mark. The Respondent has done nothing to distinguish the domain name from EA's Mark, and has in fact attempted to capitalize upon EA's goodwill in the Mark, as discussed below. The confusion is exacerbated by the fact that the Respondent has used the domain name for a website that contains links to other gaming sites.
Respondent has no right or legitimate interest in the term DUNGEON KEEPER and the corresponding domain name. Rather, the Respondent is trading off of the goodwill created by EA in its DUNGEON KEEPER Mark. There is no evidence that Respondent, Michele Dinoia, was commonly known as DUNGEON KEEPER or had any use of DUNGEON KEEPER prior to registering the domain name.
Respondent is attempting to sell the domain name as the top of the home page states in bold letters: "This domain has recently been listed in the marketplace at domainnamesales.com. Click here to inquire."
The registration of a domain name that is confusingly similar to a distinctive trademark, such as DUNGEON KEEPER, by any entity that has no relationship to that mark, is itself sufficient evidence of bad faith registration and use. Respondent has no connection to EA or the popular DUNGEON KEEPER game; thus, its registration and use of the domain name is in bad faith.
Respondent registered the domain name in order to take advantage of EA's goodwill in the mark and to try to capture the Internet traffic to the domain name. Respondent is a serial cybersquatter and has repeatedly registered domain names containing trademarks of other entities in order to capitalize on the goodwill developed by others.
Respondent's use of sponsored links on the site at <dungeonkeeper.com> further evidences this bad faith. The links on the current page at <dungeonkeeper.com> primarily relate to computer game related search terms such as "PC Games Download," "PC Game Hints Cheats" as well as links for search terms containing the DUNGEON KEEPER mark itself such as "Dungeon Keeper" and "Dungeon Keeper II Manual."
The Respondent has also engaged in bad faith by preventing EA from using the domain name which corresponds to EA's DUNGEON KEEPER mark and by engaging in a pattern of such abusive registration. Respondent registered the domain name only because EA owned the mark DUNGEON KEEPER and had operated a site at the domain name. Respondent had no legitimate use of "Dungeon Keeper" prior to registering the domain name and has only used the domain name for a webpage that feature sponsored links to other gaming sites, as explained above. Second, Respondent has engaged in a pattern of abusive domain name registration. Numerous previous UDRP panels have already found that the Respondent (or related entities) has engaged in a pattern of abusive registration in violation of the UDRP.
B. Respondent
Respondent contends in part as follows:
Respondent does not contest the fact that the domain name is identical to a trademark in which the Complainant has rights.
Respondent has a legitimate interest in the domain name. Prior to any notice of the dispute, Respondent has been using the domain in relation to her business model of registering domain names which it deems generic and descriptive and generating revenue from such domain names through the use of pay-per-click (PPC) parking pages which there is nothing inherently wrong with.
As it is well established that the requirement under Paragraph 4(a)(iii) is a conjunctive requirement, Respondent avers that the Complaint should be denied as Complainant has failed to establish that the domain name has been registered and is being used in bad faith. Respondent holds that the domain was not registered in bad faith but with bona fide intent.
The domain name in dispute is a combination of the common dictionary words “Dungeon” and “Keeper” and is not protectable. Respondent does not contest Complainant’s registered trademarks but is rather, emphasizing that even where a Complainant has registered trademarks, where such trademarks consist of common generic words, such descriptive trademarks require a greater degree of proof that the trademark is well known and connected with the goodwill of the Complainant. Thus the onus is on the Complainant and such proof is proportionally higher when trying to establish rights to generic terms.
Complainant’s mark consists of two common English words. The fact that Respondent is based in Italy where the native language is Italian and not English is a fact that must not be ignored.
Complainant has given us a bald statement that it used the DUNGEON KEEPER mark in Europe but gives us no precise details of the amount of sales, the distributors used or more specifically, the countries such products were sold in.
Without conclusive evidence of the marks reputation or distinctiveness to demonstrate the actual or constructive knowledge of the Complainant’s mark on Respondent’s part, Respondent had no reason to believe that she was not entitled to register an expired domain name based on a descriptive phrase made up of dictionary words.
Complainant relies heavily on its US and Japanese trademark registrations which are the only trademarks provided that predate the domain registration. However for the purposes of Paragraph 4 (b) there is no evidence to suggest that these trademarks were well known outside these designated areas. There is no evidence that the Complainant’s mark, whilst perhaps enjoying relative fame in the US and Japan at the time of registration, were well-known outside of such countries, particularly in Italy where the Respondent is resident. Complainant does have a registered European trademark in the term “Dungeon Keeper” however this was only registered in 2010; 8 years after Respondent had registered the domain. For the purposes of proving bad faith registration the onus is on the Complainant to provide evidence sufficient to prove that its mark was recognized by the public at large as an indicator of its goods or services when the domain name was registered. The evidence provided does not show that the Complainant's mark was sufficiently widely used when the domain name was registered in 2002.
Complainant has failed to provide any such evidence to actually demonstrate the length and amount of sales under the mark, the nature and extent of advertising or media recognition at the time of registration to assert that Respondent or even that the general public should have been aware of their rights in the DUNGEON KEEPER mark. Complainant has only provided as part of its complaint the bald claim that they have “enjoyed more than $10M in revenue from sales of the Dungeon Keeper game and ancillary products in the United States, throughout Europe, and in several Asian countries” but no evidence to support this statement and no evidence which demonstrates that the product was even sold in Europe or more specifically Respondent’s place of residence; Italy.
If the Complainant is alleging bad faith registration, the policy requires that they place its trademark rights prior to the Respondent’s registration of the domain name and offer sufficient evidence that the domain was registered with the trademark in mind. As Respondent is based in Italy and at the time a European Community Trademark did not exist at the time of registration Respondent firmly asserts that they did not have knowledge of the Complainants rights in the term DUNGEON KEEPER. The fact that Complainant has provided no evidence to support a claim that Respondent should have been aware of its rights due to its supposed fame across Europe is tantamount to admitting that there is no evidence of bad faith registration or that the mark was widely used at the time of registration. For this reason, as there was no knowledge of the Complainants trademarks rights, this proves that Respondent registered the domain name for its descriptive value rather than its value as a trademark. Under the policy there is no obligation for Respondent to have conducted a trademark search in every country to see whether the registration of the domain name was infringing third parties’ rights.
Even if Respondent would have reasonably been expected to have searched the trademark Databases of Italy and the OHIM to establish if trademarks did exist, protectable in the area in which he resides he would have found nothing, as Complainant’s European Community Trademark was not filed at this time.
Respondent’s domain portfolio consisting of generic dictionary words negates Complainant’s suggestion that it was targeted and further supports the assertion that the domain name was registered with bona fide intent.
The Respondent asserts that the domain in dispute is just one of a number of descriptive domain names that it owns and was registered in that period. The domain in dispute was just one of these domain names that was among a list of expired and abandoned domain names that were allowed to expire in 2002 and that her large portfolio are all parked by a third party advertising feed provider in this same manner.
Complainant is wrong to assert that the Respondent’s [intention] at the time of registration was to attract for commercial gain by creating a likelihood of confusion with Complainant’s mark.
Respondent firmly asserts that the she utilizes Google “Adsense” advertisements on all of his domains which are purchased by Google advertising customers to be displayed in response to key words appearing in the context of the webpage into which they are incorporated. Their selection is entirely generated by Google, not the operator of the website, who is forbidden by the terms for using Google Adsense advertisements from interfering with Google’s selection.
The Respondent has no duty to police the use of trademark in advertisements which the Respondent cannot see and of which he is not aware.
The Complainant has failed to give any explanation as to why the domain registration was allowed to expire in 2002 and why they have allowed Respondent to continuously use the domain name for a lengthy time period of 9 years, during which Respondent has not once received any notice of contention of ownership from Complainant.
Complainant makes no mention of when they became aware of the Disputed Domain name, and no mention of what it did after acquiring that knowledge.
The doctrine of Laches should apply. The passage of time which has elapsed since the time of registration and the fact that Respondent has been allowed to use the domain name without opposition or interruption during that passage of time is an important issue.
Complainant has taken no action since the time of registration to make Respondent aware of its rights in a trademark or any action in opposition to the registration of the domain name.
The circumstances where Respondent has allowed a sufficient amount of time to lapse and still has not developed her domain into an active website can draw an inference that Respondent lacks a legitimate interest and right in the domain name. Respondent however argues that Complainant’s silence on such matters and its substantial delay in bringing the complaint forward should draw an inference that the registration of the domain name was not in bad faith.
Complainant’s conduct is a harbinger of its bad faith intent when bringing this Complaint to try and retrieve a domain that it knew was more likely than not registered in good faith. This is made evident by the weakness of the evidence provided by Complainant; its evidence purporting that the DUNGEON KEEPER mark is well known is drawn from recent times with nothing to support the period between when the trademark was registered up until the time the domain was registered.
Contrary to Complainant’s claim, Respondent has not registered or acquired the domain name primarily for the purpose of selling it. Respondent wishes to emphasize that the Policy requires a Complainant demonstrate that the domain was registered “primarily for the purpose of selling” and without such intent, no finding of bad faith can be made under Paragraph
4(b)(i) of the Policy.
Respondent has registered the domain name in good faith on the basis of its generic descriptive meaning and has listed it for sale 8 years later with the intention of resale due to the upturn in the domain name industry. Intention to sell a domain name long after the date of registration does not and cannot lead to a conclusion that the bad faith intention existed at the time of the Registration
Complainant argues that Respondent has been involved in numerous UDRP proceedings and is engaged in a pattern of abusive registrations however these decisions were based on the merits of each individual case and where it was warranted 6 of these cases were denied, for similar reasons to why the present case should also be denied.
C. Additional Submissions
Complainant contends in part in its Additional Submission as follows:
The mark DUNGEON KEEPER is not generic or descriptive, and there is no evidence that anyone has ever used the mark "dungeon keeper" other than in reference to Complainant's game. Respondent is a notorious, serial cybersquatter that has deliberately registered the trademarks of numerous other companies (e.g., ANHEUSER BUSCH) as domain names in order to profit from these brands. Respondent has no legitimate interest in <dungeonkeeper.com> and offers no competent evidence to rebut the prima facie showing made by Complainant.
The domain name consists of Complainant's distinctive trademark DUNGEON KEEPER which Respondent registered precisely because the domain name had been used by Complainant to promote its DUNGEON KEEPER game
Respondent has never attempted to develop any bona fide website or business at the URL address. Furthermore, there is no dispute that Respondent has routinely engaged in cybersquatting as evidenced by at least fifty-three (53) other UDRP decisions in which Respondent was ordered by UDRP panels to transfer domain names to their rightful trademark owners.
While Respondent meekly asserts that she was not actually aware of the mark prior to registration of the domain name, this argument fails because the UDRP does not require a complainant to show actual knowledge by respondent, but only that the evidence indicates bad faith. Whether bad faith exists under the UDRP Policy is an objective test, and is not based on the subjective statements of the Respondent. The evidence clearly demonstrates that it is more likely than not that Respondent had actual or constructive knowledge of Complainant’s rights since Complainant owned trademark registrations for the mark at the time of the domain name registration and had extensively used the Mark, including with the domain name itself just prior to Respondent's registration of the domain name. Respondent’s claim that he was "entirely unaware of Complainant's brand prior to the filing of [the] Complaint" is not credible. Respondent's website is entitled "dungeonkeeper.com: The Leading Dungeon Keeper Site on the Net" and most of the pay-per-click links on the site are to websites about Complainant's Dungeon Keeper game or computer games generally.
Respondent's claim that Complainant purportedly "failed to disclose" that the "sale of the game was discontinued prior to 2002" is patently false. The sale of the game was not discontinued prior to 2002, rather Complainant decided at that time not to continue a project to make a third sequel to the game, a Dungeon Keeper 3. The prior versions of the game, however, continued to be sold.
It is undisputed that Respondent had never used "DUNGEON KEEPER" prior to registering the domain name and that she was not known as "DUNGEON KEEPER." Respondent also effectively concedes that she engaged in commercial exploitation of the domain name.
Respondent's main argument that it has a purported "legitimate interest" in the domain name is his assertion that DUNGEON KEEPER is a generic or merely descriptive term, and that she has a legitimate interest in "generating revenue from such domain names through the use of pay-per click parking pages which there is nothing inherently wrong with [sic]." Respondent's argument fails as a matter of law and fact.
DUNGEON KEEPER is not a generic term or merely descriptive mark. Respondent's only evidence to support this argument consists of dictionary definitions of the separate terms "dungeon" and "keeper." However, the disputed domain name is DUNGEONKEEPER.COM, and not DUNGEON.COM or KEEPER.COM. Respondent fails to submit any recognized definition for the term at issue, the combined term "dungeon keeper."
Respondent here has not submitted any "concrete evidence" that DUNGEON KEEPER is in widespread use in a descriptive sense or that other businesses use this term. Nor has Respondent submitted a USPTO office action or other similar determination that "dungeon keeper" is a descriptive term.
The USPTO granted a registration to Complainant for the DUNGEON KEEPER trademark on the Principal Register without any disclaimer as to the words "dungeon" or "keeper" or a descriptiveness refusal" Such a registration is presumptive evidence that the term "DUNGEON KEEPER" is distinctive, and is not merely descriptive.
A search of the term "DUNGEON KEEPER" on the Google search engine in the Italian language and otherwise shows that the term DUNGEON KEEPER is a distinctive trademark and not a common descriptive term. Even the pay-per-click links on Respondent's own website at www.dungeonkeeper.com are references to Complainant's game.
Respondent's argument that she has a legitimate interest in DUNGEON KEEPER because it is allegedly only a descriptive term, is demonstrably false. Respondent's argument also fails because there is no "legitimate" interest in using a domain name such as DUNGEONKEEPER.COM to generate pay-per-click ad revenue. Respondent argument has been repeatedly rejected in other UDRP cases against him. Respondent cites no UDRP decision for the proposition that registering domain names that are trademarks to generate pay-per-click ad revenue is a "legitimate" interest.
Nothing in the Policy requires that a complainant prove that respondent was actually aware of its mark at the time of registration in order to show bad faith. Respondent's argument also fails because she has not submitted any evidence, such as an affidavit or sworn declaration.
Respondent was aware of or should have been aware that DUNGEON KEEPER was a trademark of Complainant. At the time that Respondent registered the domain name on December 29, 2002, and for several years thereafter, Complainant owned active U.S. and Japanese registrations for the Mark. This is undisputed. The registrations provided constructive notice to Respondent of Complainant's rights. These registrations, coupled with the other indicia of knowledge demonstrate that Respondent's knowledge and that she has engaged in bad faith conduct.
Respondent’s assertion that she resides in Italy rather than the U.S. or Japan is irrelevant. As such, Respondents cannot "hide" in Italy.
Moreover, contrary to Respondent's assertions in its Response, the Dungeon Keeper game was not abandoned in 2000. Rather, as the evidence cited by Respondent itself demonstrates, it was only the plan to develop another sequel, a Dungeon Keeper, that were shelved, Respondent’s assertion that the brand was "abandoned" in 2000 is not only false, but also does not directly address whether or not Respondent knew or should have known about Complainant's mark at the time of the domain name registration in 2002. If Respondent was unaware of the game in 2002 as she claims, then she also would not have been aware of any purported "abandonment" of the game in 2000. Notably, Respondent does not argue that she was aware of and relied on this alleged "abandonment" of the mark when registering the domain name, but argues that she had no knowledge of the game at all. Thus, whether or not it was "abandoned" - it was not - does not negate Respondent's bad faith in this case.
While Respondent "firmly asserts" that she uses Google AdSense on all domains and it is Google AdSense which generates the ads based on computer user searches, this does not absolve Respondent of bad faith. Respondent is not required to use Google AdSense at the site, she chooses to do so and derives economic gain from doing so. She is ultimately responsible for the content appearing at his website.
Respondent's claim that she was and is unaware of Complainant's trademark is belied by the fact that Respondent has entitled the website as "dungeonkeeper.com: The Leading Dungeon
Keeper Site on the Net."
Respondent's assertion that laches applies is meritless. That laches is not a defense in a UDRP action makes perfect sense because laches generally only bars the recovery of damages, not injunctive relief. And even if laches were applicable in UDRP actions, Respondent's argument fails. In order to rely on the defense of laches, a defendant or respondent must show that it suffered prejudice by the delay such as where it developed a brand and business. Respondent has actually benefitted as it has been able to reap the ad revenue generated by use of Complainant's mark in the domain name.
Complainant has trademark rights in the mark DUNGEON KEEPER and had such rights at the time the domain name was registered. These rights were acquired prior to the date the domain name was registered.
Respondent is sophisticated in the area of domain names and trademarks having been involved in numerous UDRP proceedings and having registered multiple domain names for the purpose of holding such domain name for their intrinsic and speculative value.
Respondent was effectively aware of Complainant’s rights in the mark DUNGEON KEEPER at the time it registered the at-issue domain name.
Respondent has not been prejudiced by any delay in bringing the instant Complaint.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Preliminary Matter - Laches
Respondent contends that Complaint fails pursuant to the doctrine of laches because of the long delay from the date the domain name was registered until the time the instant action was initiated. The Panel’s reasoning in Avaya Inc. v. Holdcom , FA 1210545 (Nat. Arb. Forum August 18, 2008) is instructive in the instant case. In Avaya the Panel stated:
. . . Respondent urges that the Complainant’s claims may be time barred under the doctrine of laches, Complainant having waited too long between first becoming aware of the Respondent’s activities and filing its Complaint. The Panel disagrees. While UDRP panels have not unanimously agreed on the propriety of permitting equitable defenses in UDRP administrative hearings, the application of the laches doctrine in our case would be ineffective. Laches "requires proof of (1) lack of diligence by the party against whom the defense is asserted, and (2) prejudice to the party asserting the defense." See Nat'l R.R. Passenger Corp. v. Morgan, 536 U.S. 101, 121-22, 122 S. Ct. 2061 (2002) . . . . Respondent offers no evidence as to how it was prejudiced by the delay, asserting only the conclusion that it was. Therefore, Respondent’s putative laches defense fails. Likewise, Complainant’s failure to act does not conclusively indicate that it waived its rights or acquiesced to Respondent’s continuing conduct.
In
our case, Respondent not only neglects to show how it was prejudiced by delay
but fails to plead that it was prejudiced at all by Complainant’s delay in
bringing the instant Complaint. As such Respondent’s laches defense is
effectively dismissed without the Panel having to consider the defense’s
propriety within the context of UDRP proceedings. See generally Internet
Specialties West v. Milon-DiGiorgio
h
Enterps.
Inc., 559
F.3d 985, 990 (9th Cir. 2009).
The at-issue domain name is identical to a mark in which Complainant has rights.
Respondent concedes in its Response that the disputed domain name is identical to a trademark in which Complainant has rights. Moreover, Complainant’s various registrations of DUNGEON KEEPER sufficiently establish Complainant’s rights in the mark for the purposes of Policy ¶ 4(a)(i) and otherwise. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Respondent’s <dungeonkeeper.com> domain name is identical to Complainant’s DUNGEON KEEPER mark. The only differences consist of the elimination of the space between the terms in the mark and the addition of the generic top-level domain (“gTLD”) “.com.” Neither the omission of a space nor the addition of a gTLD significantly affects the identical nature of the disputed domain name for the purposes of Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
Respondent does not have rights or interests in respect of the at-issue domain name.
The application of Policy 4(a)(ii) is, in a sense, a two‑tiered process. Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in the disputed domain name. The threshold for such showing is low. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Once Complainant establishes a prima facie case the burden effectively shifts to Respondent who must demonstrate that she nevertheless has rights and legitimate interests in the at-issue domain name.
Complainant asserts and Respondent does not deny that Respondent is neither commonly known by the <duneonkeeper.com> domain name nor licensed to use Complainant’s DUNGEON KEEPER mark. The WHOIS information for the disputed domain name lists <duneonkeeper.com>’s registrant as the Respondent, Michele Dinoia. Respondent is thus not commonly known by the disputed domain name for the purpose of Policy ¶4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Given the forgoing, Complainant makes out a prima facie showing that Respondent lacks rights and interests in the at-issue domain name. See G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii)”). In their papers, the parties debate whether or not Respondent was aware of the Complainant’s trademark interest in the at-issue domain name at the time Respondent registered the name. In determining Respondent’s intent in registering the domain name the Panel objectively considers whether or not the record indicates that the Respondent had knowledge of the Complainant’s interest in the DUNGEON KEEPER mark and the reasonableness of Respondent’s claim that Respondent was unaware of such mark.
On balance, the record suggests that Respondent knew of the Complainant’s mark and that the claim that Respondent was unaware of Complainant’s rights in the at-issue mark is unreasonable. The only suggestion that Respondent was actually unaware of Complainant’s mark is proffered by a bald statement made in the Response. The Response is neither signed nor otherwise attested to by the nominal Respondent, Michele Dinoia. There is no supporting evidence in the form of a signed declaration from Michele Dinoia or any indication that the author of the Response was informed by the nominal Respondent regarding her intent in registering the domain name. Therefore the statement that Respondent was unaware of Complainant’s rights is given little weight.
Respondent registers large number of domain names and must be particularly careful with respect to the rights of others claiming an interest in such name.
[T]hose who register domain names, and particularly those who register domain names in large numbers using automated programs and processes, are not allowed to simply turn a blind eye to the possibility that the names they are registering will infringe or violate the rights of trademark owners. That responsibility derives from paragraph 2 of the Policy, and in particular the words: “It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights”
See Vaga-lume Midia Ltda v. Ouz, FA 1287151 (Nat. Arb. Forum Dec. 7, 2009) (quoting Grundfos A/S v. Tex. Int’l Prop. Assocs., D2007-1448 (WIPO Dec. 14, 2007)). The Panel thus finds that it is more likely than not that the Respondent knew of the Complainant’s mark or was willfully blind to such mark at the time it registered the disputed domain name.
Respondent asserts that it demonstrates rights and interest pursuant to Policy ¶4(c)(i). Respondent claims that it implemented a website at <duneonkeeper.com> for the purposes of providing advertising via Adsense prior to notice of the dispute. A panel might be tempted to conclude that Respondent thereby makes a bona fide offering of goods or services and that Respondent thus demonstrates its rights and interests in the at-issue domain name. However, the competing use of an identical disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
It also appears from the record that Respondent is attempting to sell the at-issue domain name. A general offer to sell a disputed domain name is further evidence that Respondent lacks rights and interests in the <dungeonkeeper.com> domain name pursuant to Policy ¶4(a)(ii). See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
The domain name was registered and is being used in bad faith.
The Panel does not consider the substance of the numerous individual past UDRP decisions where Respondent appeared as being relevant to merits of the instant dispute. As discussed above, Respondent was effectively aware of the Complainant’s interest in the domain name at the time it registered <duneonkeeper.com> and thereafter. Respondent made a general offer to sell the at-issue domain name on the domain name’s website. These circumstance evidence bad faith registration and use pursuant to Policy ¶4(b)(i). See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that the attempted sale of a domain name is evidence of bad faith); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
The fact that the domain may be dissected into two descriptive terms is unavailing to Respondent’s assertion that she was merely registering a descriptive domain name. The at-issue mark is the single term DUNGEON KEEPER and is considered as a whole. See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”); see also Official Airline Guides, Inc. v. Churchfield Publ., Inc., 6 F.3d 1385, 1392 (9th Cir. 1993) (“[U]nder the anti-dissection rule, the validity and distinctiveness of a composite trademark is determined by viewing the trademark as a whole, as it appears in the marketplace.”). Importantly, Complainant’s trademark registration with United States Patent and Trademark Office for the at-issue mark creates a presumption of validity; Respondent has not controverted that presumption. See ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (concluding that the complainant demonstrated its rights in the SPORTSCENTER mark through its valid trademark registrations with the USPTO and similar offices around the world).
Additionally, Respondent’s website uses the Complainant’s mark in a trademark sense rather than descriptively. Respondent titles her website: "dungeonkeeper.com: The Leading Dungeon Keeper Site on the Net." Respondent’s use of Complainant’s mark in a trademark sense rather than a descriptive sense estops Respondent from claiming that the domain name is purely descriptive or generic. The <dungeonkeeper.com> domain name resolves to a website that contains hyperlinks to Complainant’s competitors in the gaming industry. The registration of the identical disputed domain name for such a use disrupts Complainant’s business. At a minimum there is disruption caused by Complainant filing its Complaint to seek transfer of the Respondent’s domain name. See Policy ¶ 4(b)(iii); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Respondent is attempting to attract Internet users to her website for gain by creating a likelihood of confusion with Complainant’s DUNGEON KEEPER mark. Respondent receives click-through fees from the links listed on the targeted website; Respondent admits that she is attempting to profit from the receipt of click-through fees. It follows from the Panel’s factual finding that Respondent was aware of Complainant’s rights in the DUNGEON KEEPER mark at the time of registration that Respondent registered and uses the <dungeonkeeper.com> domain name to attempt to create confusion as to Complainant’s affiliation with the disputed domain name and profit from that confusion. See Policy ¶ 4(b)(iv); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
For all of the foregoing reasons the Panel finds that the at-issue domain name was registered and used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dungeonkeeper.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 30, 2011
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