Rovio Entertainment Ltd. v. Liyanghua / yanghua li / angrybirdsite
Claim Number: FA1304001495026
Complainant is Rovio Entertainment Ltd. (“Complainant”), represented by Ashly E. Sands of Epstein Drangel LLP, New York, USA. Respondent is Liyanghua / yanghua li / angrybirdsite (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <angrybirdsmart.com> and <angrybirdsite.com>, registered with BizCN.com, Inc.
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 April 16, 2013; the National Arbitration Forum received payment on April 16, 2013. The Complaint was submitted in both English and Chinese.
On April 23, 2013, BizCN.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <angrybirdsmart.com> and <angrybirdsite.com> domain names are registered with BizCN.com, Inc. and that Respondent is the current registrant of the names. BizCN.com, Inc. has verified that Respondent is bound by the BizCN.com, Inc. 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 13, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of June 3, 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@angrybirdsmart.com and postmaster@angrybirdsite.com. Also on May 13, 2013, the Chinese language 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 12, 2013, 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 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.
Pursuant to Rule 11(a), the Panel notes that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: Multiple Respondents
Complainant has alleged that the disputed domain names are effectively controlled by the same person and/or entity, operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that although the WHOIS information reflects that the registrant for <angrybirdsmart.com> is different from the registrant for <angrybirdsite.com>, the domains <angrybirdsmart.com> and <angrybirdsite.com> are commonly owned. Complainant asserts that both website originate in China and were selling counterfeit ANGRY BIRDS products, and, until recently, the websites were nearly identical in look and feel and content. Complainant claims that a reverse IP domain check revealed that both domains were hosted on the same web server. Further, Complainant contends that the registry data revealed that the registrar for both <angrybirdsmart.com> and <angrybirdsite.com> is BIZCN.COM, Inc. Finally, Complainant argues that the banner that appears at the top of <angrybirdsite.com> reading: “Angry Birds Mart” is identical to the one that appeared on <angrybirdsmart.com>.
In the absence of a response from Respondent, the Panel accepts Complainant’s evidence that the disputed domain names are controlled by the same entity and will proceed with this case.
A. Complainant makes the following assertions:
1. Respondent’s <angrybirdsmart.com> and <angrybirdsite.com> domain names are confusingly similar to Complainant’s ANGRY BIRDS mark.
2. Respondent does not have any rights or legitimate interests in the <angrybirdsmart.com> and <angrybirdsite.com> domain names.
3. Respondent registered and used the <angrybirdsmart.com> and <angrybirdsite.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the ANGRY BIRDS mark (e.g., Reg. No. 3,976,576, registered June 14, 2011), used in connection with video games. Complainant is the owner of pending trademark registrations with China’s State Administration for Industry and Commerce (“SAIC”) for the ANGRY BIRDS mark (e.g., App. No. 10927483, App. Date May 7, 2012).
Respondent registered the <angrybirdsmart.com> domain name on March 13, 2012, and the <angrybirdsite.com> domain name on December 30, 2012.
Respondent is selling counterfeit ANGRY BIRDS products on the website at the domain names in direct competition with Complainant.
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, although Complainant’s registration of the ANGRY BIRDS trademark with the SAIC is pending, Complainant’s registration of the ANGRY BIRDS mark with the USPTO sufficiently demonstrates its rights in the mark under Policy ¶ 4(a)(i). See Annex B. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Respondent’s disputed domain names <angrybirdsmart.com> and <angrybirdsite.com> fully incorporate Complainant’s registered trademark and simply add the generic words “mart” and “site.” This change does not distinguish Respondent’s domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark). Respondent’s disputed domain names also contain the gTLD “.com,” and do not have the spaces in Complainant’s ANGRY BIRDS, irrelevant changes under Policy ¶ 4(a)(i). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Consequently, the Panel finds that Respondent’s <angrybirdsmart.com> and <angrybirdsite.com> domain names are confusingly similar to Complainant’s ANGRY BIRDS 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 claims that Respondent is not commonly known by either domain name and does not own any trademark registrations related to <angrybirdsmart.com> and <angrybirdsite.com>. The WHOIS information for Respondent’s <angrybirdsmart.com> domain name provides that “Liyanghua / yanghua li” is the registrant of the domain name, which is not similar to the ANGRY BIRDS mark. The WHOIS record for Respondent’s <angrybirdsite.com> domain name identifies “angrybirdsite” as the registrant. Complainant asserts that Respondent is not authorized by Complainant or its licensees to use Complainant’s registered trademark as part of a domain name or for any other purpose. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant alleges that Respondent appears to be a China-based company and is selling counterfeit ANGRY BIRDS products in violation of Complainant’s registered trademarks and copyrights. The Panel notes that Respondent’s <angrybirdsmart.com> and <angrybirdsite.com> domain names resolve to a website that sells ANGRY BIRDS clothing, accessories, shoes, and backpacks. Previous panels have found that Respondent’s sale of counterfeit products shows that Respondent is not using the domain names in connection with a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name). Accordingly, the Panel finds that Respondent is not using the <angrybirdsmart.com> and <angrybirdsite.com> domain names for a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is selling counterfeit ANGRY BIRDS products on the website at the domain names in direct competition with Complainant. The Panel finds that this disrupts Complainant’s business, and thus Respondent has registered and is using the domain names in bad faith under Policy ¶ 4(b)(iii). See Juicy Couture, Inc. v. Chinasupply, FA 1222544 (Nat. Arb. Forum Oct. 13, 2008) (holding that the selling of counterfeit versions of a complainant’s products disrupted the complainant’s business and is evidence of bad faith registration and use).
Complainant argues that Respondent intentionally registered and is using the disputed domain names to capitalize on Complainant’s commercial success by diverting consumers who wish to purchase authentic ANGRY BIRDS products to Respondent’s website for commercial gain. The Panel agrees and finds that Respondent is therefore using the <angrybirdsmart.com> and <angrybirdsite.com> domain names is bad faith under Policy ¶ 4(b)(iv). See Annex F. In H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009), the panel determined that respondent’s selling of counterfeit products created the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allowed respondent to profit from that confusion.
Complainant alleges that given the worldwide fame of Complainant’s ANGRY BIRDS game, the worldwide commercial success of its related products, and Respondent’s use of the disputed domains to sell counterfeit products, Respondent had actual knowledge of Complainant’s rights. The Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name")."
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 <angrybirdsmart.com> and <angrybirdsite.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: June 18, 2013
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