Kabam, Inc. v. Yongyuan Lin / SMGP CO. LTD
Claim Number: FA1308001515131
Complainant is Kabam, Inc. (“Complainant”), represented by Nate Garhart of Cobalt, LLP, California, USA. Respondent is Yongyuan Lin / SMGP CO. LTD (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cheapkocgems.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 15, 2013; the National Arbitration Forum received payment on August 19, 2013.
On August 16, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <cheapkocgems.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 August 21, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 10, 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@cheapkocgems.com. Also on August 21, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 12, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <cheapkocgems.com> domain name, the domain name at issue, is confusingly similar to Complainant’s KOC mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has used the KOC marks in connection with its KOC games and services since 2009. Complainant has filed two trademark applications for the KOC mark, which are currently pending with the United States Patent and Trademark Office (“USPTO”): Application Number 85,825,142 filing date January 16, 2013; Application number 85,826,162 filing date January 17, 2013. Complainant has spent millions of dollars on advertising of the KOC mark and the games associated with the mark. Complainant’s KOC marks have acquired substantial commercial value, distinctiveness, and secondary meaning for Complainant and its goods and services. Complainant’s has used its mark for approximately four years prior to Respondent’s registration of the disputed domain name. In connection with KOC games, players collect virtual gems used for in game purchases.
Respondent’s <cheapkocgems.com> domain name is confusingly similar to Complainant’s KOC mark, because it incorporates Complainant’s KOC mark in its entirety and merely adds the generic terms “cheap” and “gems” to the KOC mark. Respondent registered the disputed domain name on February 20, 2013. Respondent holds no trademark registrations or applications for the KOC mark anywhere in the world and has not been licensed or permitted to use Complainant’s marks. Respondent attempts to sell Complainant’s products at the website associated with the disputed domain name. Respondent intentionally registered the disputed domain name in order to divert consumers away from Complainant and thus derive revenue through advertising and click-through fees. Respondent’s disputed domain name resolves to a website containing references to Complainant and its services thus causing a likelihood of confusion.
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.”).
Complainant owns the KOC mark in connection with games and services and has made a continuous use of the KOC mark to identify its software and services since 2009, when it released the Kingdoms of Camelot game. Complainant contends that its applications with the USPTO for the KOC mark support its claim of rights in the mark.
Application Number 85,825,142 filing date January 16, 2013.
Application number 85,826,162 filing date January 17, 2013.
While pending trademark applications typically do not confer rights under the Policy, previous UDRP cases have held that a complainant need not own a valid trademark registration for its mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i). See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Complainant’s mere application to the USPTO to register the ECG mark is insufficient to establish rights to the mark.”); but see British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).
In light of the fact that this is a default proceeding and the evidence presented by Complainant, the Panel finds that Complainant has common law rights in the United States in its KOC mark through continuous, widespread use of the mark and trade name since 2009 in connection with its software and services. While the Panel notes that Complainant provides no evidence of its use in 2009 or any time earlier than 2013. Complainant does contend that its KOC games have over 8.4 million installations and are played in at least 230 countries. Complainant also argues that it spent over 6.5 million dollars on advertising for the KOC marks and games over the course of the past year. Previous panels have found that similar facts can indicate that a respondent has common law rights in a mark. See Mary’s Futons, Inc. v. Tex. Int’l Prop. Assocs., FA 1012059 (Nat. Arb. Forum Aug. 13, 2007) (“A common law trademark must be shown by evidence such as sales figures, advertising expenditure, [and] numbers of customers.”). Based on the evidence provided, the Panel finds that Complainant has common law rights in the KOC mark pursuant to Policy ¶ 4(a)(i).
Respondent’s <cheapkocgems.com> domain name is confusingly similar to Complainant’s KOC mark under Policy ¶ 4(a)(i). Respondent’s <cheapkocgems.com> domain name features Complainant’s KOC mark in its entirety with the addition of the generic terms “cheap” and “gems.” Complainant asserts that the use of the term “gems” is confusingly similar because Complainant uses the term “gems” to represent virtual currency available through Complainant’s games. Respondent also adds the generic top-level domain (“gTLD”) “.com.” Previous panels have found that adding generic terms and gTLDs is insufficient to differentiate a disputed domain name from a given mark. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”); see also Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word “Net” to the complainant’s ICQ mark, makes the <neticq.com> domain name confusingly similar to the complainant’s mark). The Panel therefore finds that Respondent’s <cheapkocgems.com> domain name is confusingly similar to Complainant’s KOC mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent has no rights or legitimate interests in the <cheapkocgems.com> domain name because Respondent is not commonly known by the domain name. Complainant alleges that Respondent has no trademark or service mark applications or registrations for the KOC mark anywhere in the world. Complainant claims that Respondent is not affiliated with Complainant, and Complainant has not licensed or permitted Respondent to use Complainant’s marks. The WHOIS information for Respondent’s <cheapkocgems.com> domain name lists “Yongyuan Lin” as registrant. Previous panels have found that a respondent has no rights or legitimate interests in a disputed domain name where the respondent is not authorized to use the complainant’s marks and when there is no evidence on the record indicating that respondent is commonly known by the disputed domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent has no rights or legitimate interests in the disputed domain name because it is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain under Policy ¶¶ 4(c)(i) or 4(c)(iii). Respondent registered the disputed domain name on February 20, 2013, which Complainant claims is approximately four years after Complainant began using the KOC mark. The screenshot of Respondent’s website resolving from the <cheapkocgems.com> domain name features Complainant’s games and products. It appears that Respondent is attempting to sell Complainant’s products from the resolving website. Previous panels have found that competing with a complainant by using a confusingly similar domain name to sell a complainant’s goods and feature pay-per-click links is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name. See G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that because the respondent is using the infringing domain name to sell prescription drugs, the panel could infer that the respondent is using the complainant’s mark to attract Internet users to its website for commercial benefit); see also H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use). The Panel thus finds that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent’s use of the disputed domain name disrupts Complainant's business. Respondent’s resolving website features commercial links for the sale of Complainant’s virtual currency. Respondent uses a confusingly similar domain name to direct Internet users away from Complainant’s official website, thus disrupting Complainant’s business. Previous panels have found that using a confusingly similar domain name to offer services or goods that are in competition with a complainant’s offerings indicates bad faith use and registration. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant). This Panel concludes that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Respondent must have had constructive and/or actual notice of Complainant's rights in the KOC mark prior to registration of the <cheapkocgems.com> domain name. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cheapkocgems.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: September 15, 2013
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