The Gamebreaker Corp., Inc. v. David Swan
Claim Number: FA1302001486448
Complainant is The Gamebreaker Corp., Inc. (“Complainant”), represented by Clifford E. Hardwick, Georgia, USA. Respondent is David Swan (“Respondent”), Connecticut, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gamebreaker.com>, registered with GoDaddy.com, LLC.
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.
Luiz Edgard Montaury Pimenta as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 22, 2013; the National Arbitration Forum received payment on February 22, 2013.
On February 22, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <gamebreaker.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 February 27, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 19, 2013 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@gamebreaker.com. Also on February 27, 2013, 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 March 18, 2013.
On April 2, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Luiz Edgard Montaury Pimenta 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant alleges that the disputed domain name is creating confusion in the marketplace. Complainant alleges having rights over the trademark
GAMEBREAKER, which is the brand name for a line of apparel.
Complainant alleges that a substantial percentage of potential customers search for the disputed domain name when trying to locate the Complainant.
Complainants also alleges that the Respondent should not have rights to the domain name because the Respondent has owned the disputed domain name since January 1999 and has chosen / failed to published a live website,
Respondent has indicated that he is not planning on publishing a live website in the foreseeable future, because during the past 12 months Complainant has attempted to negotiate a financial settlement with Respondent, however, he has refused all attempts at any settlement resolution.
Complainant alleges that he has advised Respondent about his trademark rights over the trademark GAMEBREAKER.
Finally Complainant alleges that the Disputed Domain Name is being used in bad faith because it only displays an “Under Construction” message and does not host an active website.
B. Respondent
Respondent alleges he has registered the disputed domain name before Complainant acquired trademark rights over the trademark GAMEBREAKER. Respondent also refutes Complainant’s allegations of cybersquatting, informing he has not offered the disputed domain name for sale. Respondent further alleges he is planning to relaunch the website under the disputed domain name. He informs the website went live on 2002 as an online radio talk show with content focused on the Video Game Industry.
The Panel finds that Complainant has trademark rights over the trademark GAMEBREAKER, from the United States Patent & Trademark Office (“USPTO”) trademark registration for the GAMEBREAKER mark, used in conjunction with the sale of clothing. See Reg. No. 3,186,659 registered on Dec. 19, 2006.
The Panel finds that Respondent has owned the <gamebreaker.com> domain name since January 12, 1999.
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.
Complainant contends that it owns USPTO trademark registration for the GAMEBREAKER mark, used in conjunction with the sale of clothing. See Reg. No. 3,186,659 registered on Dec. 19, 2006 (filed on Jan. 23, 2006; first used in commerce on Jan. 1, 2005; first use on Aug. 25, 1999). The Panel concludes that USPTO registration is a satisfactory showing of Complainant’s Policy ¶ 4(a)(i) rights in the mark back to the January 23, 2006 filing date of the trademark registration. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”); Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date). The Panel also notes that Complainant did not provide any evidence of common law rights for the period from August 25, 1999 through January 26, 2006, but that Policy ¶ 4(a)(i) only looks to if Complainant has rights in a mark and if the domain name is similar, not to priority, which arises under Policy ¶ 4(a)(ii) and (iii).
Complainant argues that Respondent’s <gamebreaker.com> domain name is confusingly similar to the GAMEBREAKER mark. The Panel notes that the domain name features the entire GAMEBREAKER mark and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the domain name is identical to the GAMBREAKER mark under Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Ohno, FA 511463 (Nat. Arb. Forum Aug. 23, 2005) (holding that the <reebok.net> domain name was identical to the complainant’s REEBOK mark because it fully incorporates the mark and merely adds a generic top-level domain).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then 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.”).
The Panel finds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Respondent asserts that he has been clear with Complainant that he plans to re-launch the <gamebreaker.com> domain name as a website discussing the video game industry. Respondent argues that he used the domain name to host a radio show that discussed video games in 2002. Respondent has submitted evidence of such use. The Panel notes that the record illustrates that the <gamebreaker.com> domain name was used to host a video game discussion website as of March 28, 2002. See Respondent’s Exhibit A. The Panel finds that Respondent has Policy ¶ 4(a)(ii) rights and legitimate interests in the <gamebreaker.com> domain name. See Puky GmbH v. Agnello, D2001-1345 (WIPO Jan. 3, 2002) (holding that the respondent’s submission of an invoice demonstrating that the respondent has been planning to trade under the name PURKHON KI YADEN since at least as early as January 28, 2000, was evidence that the respondent had rights or legitimate interests in the disputed domain name).
Respondent also argues that Complainant’s claim that Respondent sought to sell the domain name is baseless and untrue, as evidenced by Complainant’s inability to provide any accurate record of any such statement. Respondent avows that it has never had any plans to sell the domain name, nor does Respondent presently have any plan to sell the domain name to Complainant or anyone else. The Panel finds that Complainant has failed to provide adequate evidence to support its claim that Respondent offered this domain name for sale, and, therefore, Complainant has failed to defeat Respondent’s Policy ¶ 4(a)(ii) rights and legitimate interests. See Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that absent a showing of any facts by the complainant that establish the respondent lacks rights or legitimate interests in the disputed domain name, the panel may decline to transfer the disputed domain name).
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith). As a matter of fact, Complainant has failed to evidence or even to allege that the Disputed Domain Name was registered in bad faith, as all of his allegations were only regarding the use of Disputed Domain Name.
Respondent has rights or legitimate interests in the <gamebreaker.com> domain name pursuant to Policy ¶ 4(a)(ii), and, therefore, the Panel finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
The Panel further finds that Respondent has not registered or used the <gamebreaker.com> domain name in bad faith, as Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
Respondent believes that Complainant’s claim that Respondent sought to sell the domain name is baseless and untrue, as evidenced by Complainant’s inability to provide any accurate record of any such statement. Respondent avers that the domain name is not now, nor has it ever been, for sale to anyone.
Respondent notes that because it registered the domain name years prior to Complainant’s use of its mark, it is illogical to conclude that Respondent registered this domain name with the intent to sell it. The Panel agrees that Respondent lacks bad faith under Policy ¶ 4(a)(iii) as Respondent’s registration of the domain name in 1999 illustrates that at the time of registration, Respondent was not acting in bad faith. Complainant has not demonstrated that it had any rights in its mark prior to January 2006, and the Panel finds that Respondent’s registration of the domain name in 1999 for use with a radio show (or even for parking or domain name speculation) was not bad faith registration because it was not targeted at Complainant and its marks. See Seaway Bolt & Specials Corp. v. Digital Income Inc., FA 114672 (Nat. Arb Forum Aug. 5, 2002) (finding that because the complainant’s mark was not particularly well-known outside of its field, and the complainant failed to show that the respondent knew or should have known about the complainant at the time of registration, the respondent did not register the domain name in bad faith).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <gamebreaker.com> domain name REMAIN WITH Respondent.
Luiz Edgard Montaury Pimenta, Panelist
Dated: April 16, 2013
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