Gamestop, Inc. v. Private Registrations Aktien Gesellschaft / Domain Admin
Claim Number: FA1205001444484
Complainant is Gamestop, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Private Registrations Aktien Gesellschaft / Domain Admin (“Respondent”), Saint Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <gametsop.com>, <gomestop.com>, <gameestop.com>, <ggamestop.com>, <gamestoop.com>, <gamestoip.com>, and <gamesptop.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.Com.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 16, 2012; the National Arbitration Forum received payment on May 16, 2012.
On May 19, 2012, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.Com confirmed by e-mail to the National Arbitration Forum that the <gametsop.com>, <gomestop.com>, <gameestop.com>, <ggamestop.com>, <gamestoop.com>, <gamestoip.com>, and <gamesptop.com> domain names are registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.Com and that Respondent is the current registrant of the names. Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.Com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.Com 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 May 30, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 19, 2012 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@gametsop.com, postmaster@gomestop.com, postmaster@gameestop.com, postmaster@ggamestop.com, postmaster@gamestoop.com, postmaster@gamestoip.com, and postmaster@gamesptop.com. Also on May 30, 2012, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 22, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <gametsop.com>, <gomestop.com>, <gameestop.com>, <ggamestop.com>, <gamestoop.com>, <gamestoip.com>, and <gamesptop.com> domain names are confusingly similar to Complainant’s GAMESTOP.COM mark.
2. Respondent does not have any rights or legitimate interests in the <gametsop.com>, <gomestop.com>, <gameestop.com>, <ggamestop.com>, <gamestoop.com>, <gamestoip.com>, and <gamesptop.com> domain names.
3. Respondent registered and used the <gametsop.com>, <gomestop.com>, <gameestop.com>, <ggamestop.com>, <gamestoop.com>, <gamestoip.com>, and <gamesptop.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant uses its GAMESTOP.COM mark in connection with retail store and online retail store services featuring video, computer, and electronic games. Complainant owns trademark registrations for the GAMESTOP.COM mark (e.g., Reg. No. 2,489,084 registered September 11, 2001) with the United States Patent and Trademark Office (“USPTO”).
The <gametsop.com>, <gomestop.com>, <gameestop.com>, <ggamestop.com>, <gamestoop.com>, <gamestoip.com>, and <gamesptop.com> domain names resolve to websites which display links to Complainant and Complainant’s competitors. All of the disputed domain names were registered in 2005.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The Panel finds that Complainant has rights in the GAMESTOP.COM mark pursuant to Policy ¶ 4(a)(i) due to its USPTO registrations for the mark. Panels have found that, regardless of the location of the parties to a dispute, Policy ¶ 4(a)(i) is satisfied by a showing of registration of a mark with a trademark authority. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country).
Respondent’s <gametsop.com>, <gomestop.com>, <gameestop.com>, <ggamestop.com>, <gamestoop.com>, <gamestoip.com>, and <gamesptop.com> domain names are confusingly similar to Complainant’s GAMESTOP.COM mark. Respondent uses Complainant’s mark and either deletes one letter, adds one letter, or transposes two letters, failing to make any of the disputed domain names distinct from Complainant’s mark. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Granarolo S.p.A. v. Dinoia, FA 649854 (Nat. Arb. Forum Apr. 17, 2006) (finding that the <granarolo.com> domain name was confusingly similar to the complainant’s registered G GRANAROLO mark); see also Pier 1 Imps., Inc. v. Success Work, D2001-0419 (WIPO May 16, 2001) (finding that the domain name <peir1.com> is confusingly similar to the complainant's PIER 1 mark). Therefore, the Panel finds that Respondent’s <gametsop.com>, <gomestop.com>, <gameestop.com>, <ggamestop.com>, <gamestoop.com>, <gamestoip.com>, and <gamesptop.com> domain names are confusingly similar to the GAMESTOP.COM mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent is not commonly known by the <gametsop.com>, <gomestop.com>, <gameestop.com>, <ggamestop.com>, <gamestoop.com>, <gamestoip.com>, and <gamesptop.com> domain names. Complainant asserts that Respondent is not sponsored by or legitimately affiliated with Complainant and has not been given permission to use the GAMESTOP.COM mark. The WHOIS record for the disputed domain names that Complainant provides all list “Private Registrations Aktien Gesellschaft / Domain Admin” as the domain name registrant. Panels have found that the WHOIS information and other available information is illustrative of whether a respondent is commonly known by a disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name). Therefore, the Panel finds that Respondent is not commonly known by the <gametsop.com>, <gomestop.com>, <gameestop.com>, <ggamestop.com>, <gamestoop.com>, <gamestoip.com>, and <gamesptop.com> domain names pursuant to Policy ¶ 4(c)(ii).
Complainant asserts that the <gametsop.com>, <gomestop.com>, <gameestop.com>, <ggamestop.com>, <gamestoop.com>, <gamestoip.com>, and <gamesptop.com> domain names are not being used in a way that is protected under Policy ¶¶ 4(c)(i) and 4(c)(iii). Complainant contends that the disputed domain names display links to Complainant and Complainant’s competitors. Screenshots of the resolving website provided by Complainant demonstrate that these links are listed under headings such as “GameStop® Official Site” and “Sony PS3 Games.” The panel in Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007), held that the display of links to the complainant and the competitors of the complainant is not a use of a disputed domain name which gives the respondent rights or legitimate interests. Therefore, the Panel finds that Respondent’s use of the <gametsop.com>, <gomestop.com>, <gameestop.com>, <ggamestop.com>, <gamestoop.com>, <gamestoip.com>, and <gamesptop.com> domain names is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent, Private Registrations Aktien Gesellschaft / Domain Admin, has been the respondent in multiple previous UDRP proceedings that resulted in the disputed domain names in those cases being transferred to the respective complainants. Complainant provides copies of some of these disputes including the following:
· Ashley Furniture Indust., Inc. v. Private Registrations Aktien Gesellschaft c/o Domain Admin, FA 1338925 (Nat. Arb. Forum Sept. 13, 2010);
· State Farm Mut. Auto. Ins. Co. v. Private Registrations Aktien Gesellschaft Domain Admin, FA 1308139 (Nat. Arb. Forum Apr. 12, 2010);
· UnitedHealth Grp. Inc. v. Private Registrations Aktien Gesellschaft c/o Domain Admin, FA 1277666 (Nat. Arb. Forum Sept. 24, 2009); and
· DatingDirect.com Ltd. v. Private Registrations Aktien Gesellschaft c/o Domain Admin, FA 1227747 (Nat. Arb. Forum Nov. 24, 2008).
The Panel finds that multiple adverse UDRP proceedings constitute evidence of Respondent’s serial cybersquatting and Respondent’s bad faith registration and use of the current domain names under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
The <gametsop.com>, <gomestop.com>, <gameestop.com>, <ggamestop.com>, <gamestoop.com>, <gamestoip.com>, and <gamesptop.com> domain names resolve to a website which displays headings such as “GameStop Games” and “Free Games on Google+” for links to Complainant and its competitors. Respondent is no doubt compensated for the display of these links and the Internet users who click through them. Respondent is using Complainant’s GAMESTOP.COM mark to create a wrongful commercial advantage by attracting Internet users to the disputed domain names. Therefore, the Panel finds that Respondent registered and is using the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Respondent’s bad faith registration and use of the <gametsop.com>, <gomestop.com>, <gameestop.com>, <ggamestop.com>, <gamestoop.com>, <gamestoip.com>, and <gamesptop.com> domain names is further demonstrated by the fact that Respondent typosquatted. See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.). Therefore, the Panel finds that Respondent registered and is using the <gametsop.com>, <gomestop.com>, <gameestop.com>, <ggamestop.com>, <gamestoop.com>, <gamestoip.com>, and <gamesptop.com> domain names in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gametsop.com>, <gomestop.com>, <gameestop.com>, <ggamestop.com>, <gamestoop.com>, <gamestoip.com>, and <gamesptop.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: June 29, 2012
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