KIXEYE Inc. v. Philip Marloe
Claim Number: FA1211001469671
Complainant is KIXEYE Inc. (“Complainant”), represented by Devra Hirshfeld of KIXEYE Inc., California, USA. Respondent is Philip Marloe (“Respondent”), Oregon, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <backyardmonsterscheats.com>, registered with Register.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 November 2, 2012; the National Arbitration Forum received payment on November 12, 2012.
On November 5, 2012, Register.com confirmed by e-mail to the National Arbitration Forum that the <backyardmonsterscheats.com> domain name is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.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 November 20, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 10, 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@backyardmonsterscheats.com. Also on November 20, 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 December 26, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <backyardmonsterscheats.com> domain name is confusingly similar to Complainant’s BACKYARD MONSTERS mark.
2. Respondent does not have any rights or legitimate interests in the <backyardmonsterscheats.com> domain name.
3. Respondent registered and used the <backyardmonsterscheats.com> domain name in bad faith.
B. Respondent failed to submit a timely Response in this proceeding.
Complainant has rights to the BACKYARD MONSTERS trademark, which it registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,073,264 registered December 20, 2011). Complainant has sold its popular BACKYARD MONSTERS game since 2010 on the social networking site Facebook.
Respondent registered the <backyardmonsterscheats.com> domain name on March 23, 2012, and uses the domain name to host a website that promotes and sells unauthorized copies of Complainant’s BACKYARD MONSTERS computer game.
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 successfully establishes trademark rights in its BACKYARD MONSTERS mark via its trademark registration with the USPTO, for the purposes of Policy ¶ 4(a)(i). In Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005), the panel similarly held that the complainant’s USPTO trademark registration sufficed to demonstrate rights in the mark pursuant to the Policy.
Respondent’s <backyardmonsterscheats.com> domain name is confusingly similar to Complainant’s BACKYARD MONSTERS mark, because the domain name includes the entire mark without a space, and the generic term “cheats,” which does not sufficiently distinguish the domain name from the mark. See Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to the complainant’s THE BODY SHOP trademark); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”).
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 cannot demonstrate that it is commonly known by the <backyardmonsterscheats.com> domain name because Respondent’s recent domain name registration on March 23, 2012 does not stand up to Complainant’s use of the BACKYARD MONSTERS mark since April of 2010. The WHOIS information for the domain name identifies “Philip Marloe” as the registrant, which does not demonstrate that Respondent is commonly known by the <backyardmonsterscheats.com> domain name for the purposes of Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant claims that Respondent uses the domain name to provide an illegal, unauthorized, and modified version of the BACKYARD MONSTERS computer game, and to provide unauthorized “cheats” that allow purchasers an unfair advantage over users that have paid to create assets on the game. The Panel finds this does not constitute 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). See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”)
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s use of the <backyardmonsterscheats.com> domain name enables players to enhance their gaming experience without making a payment to Complainant, a significant disruption to Complainant’s business. The panel in G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002), stated that the respondent was not authorized to sell the complainant’s goods, and thus found that respondent used the disputed domain name in bad faith under Policy ¶ 4(b)(iii). The Panel similarly finds that Respondent registered and uses the <backyardmonsterscheats.com> domain name to sell unauthorized, modified versions of Complainant’s product to consumers, which disrupts Complainant’s business in violation of Policy ¶ 4(b)(iii).
Respondent attracts Internet users to its website for the purpose of making a commercial gain by causing consumer confusion between Complainant’s mark and the resolving website. The Panel finds that Respondent’s sale of cheats to Internet consumers, using the BACKYARD MONSTERS mark, demonstrates Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products).
Respondent registered the <backyardmonsterscheats.com> domain name in opportunistic bad faith, due to the clear association with Complainant’s BACKYARD MONSTERS mark. The panel in Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000), found that the respondent registered and used the domain name in bad faith because it was inconceivable that the respondent could make an active use of the domain name without creating a false impression of being associated with the complainant. The Panel finds that Respondent’s use of Complainant’s BACKYARD MONSTERS mark in the disputed domain name is an attempt to associate with Complainant’s business, and that Respondent opportunistically registered and uses the <backyardmonsterscheats.com> domain name in bad faith pursuant to 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 <backyardmonsterscheats.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: January 2, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page