Gamestop, Inc. v. PPA Media Services / Ryan G Foo
Claim Number: FA1308001515572
Complainant is Gamestop, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is PPA Media Services / Ryan G Foo (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <gamertop.com>, <gamestop0.com>, <gamestpop.com>, and <gmamestop.com>, registered with Internet.Bs Corp.
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 August 20, 2013; the National Arbitration Forum received payment on August 20, 2013.
On August 28, 2013, Internet.Bs Corp. confirmed by e-mail to the National Arbitration Forum that the <gamertop.com>, <gamestop0.com>, <gamestpop.com>, and <gmamestop.com> domain names are registered with Internet.Bs Corp. and that Respondent is the current registrant of the names. Internet.Bs Corp. has verified that Respondent is bound by the Internet.Bs Corp. 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 September 13, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 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@gamertop.com, postmaster@gamestop0.com, postmaster@gamestpop.com, postmaster@gmamestop.com. Also on September 13, 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 October 8, 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 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
1. Respondent’s <gamertop.com>, <gamestop0.com>, <gamestpop.com>, and <gmamestop.com> domain names are confusingly similar to Complainant’s GAMESTOP mark.
2. Respondent does not have any rights or legitimate interests in the <gamertop.com>, <gamestop0.com>, <gamestpop.com>, and <gmamestop.com> domain names.
3. Respondent registered and uses the <gamertop.com>, <gamestop0.com>, <gamestpop.com>, and <gmamestop.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant uses the GAMESTOP mark in connection with the sale of video and electronic games through retail stores. Complainant registered the GAMESTOP mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 1,707,460 registered on August 11, 1992).
Respondent registered the disputed domain names as follows:
<gamertop.com>, registered on September 30, 2006;
<gamestop0.com>, registered on November 7, 2009;
<gamestpop.com>, registered on August 31, 2006; and,
<gmamestop.com>, registered on November 29, 2009.
Respondent uses the disputed domain names for various hyperlink advertisements that shuttle Internet users to competing businesses.
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’s USPTO registration establishes rights in its GAMESTOP mark for purposes of Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). Previous panels have not required a mark to be registered in one particular jurisdiction, so long as the complainant can show its rights in the mark in any jurisdiction. See, e.g., Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Respondent’s <gamertop.com>, <gamestop0.com>, <gamestpop.com>, and <gmamestop.com> domain names misspell Complainant’s GAMESTOP mark or add an extra character to the mark. The Panel notes that the addition of a gTLD is not relevant to a Policy ¶ 4(a)(i) analysis. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel finds that changing Complainant’s mark by one character does distinguish the disputed domain names from the mark. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive).
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 argues that Respondent is not been known by the <gamertop.com>, <gamestop0.com>, <gamestpop.com>, and <gmamestop.com> domain names, and that it has not authorized Respondent to use the GAMESTOP mark in domain names. The WHOIS information for the domain names lists “PPA Media Services / Ryan G Foo” as the registrant. Previous panels have determined that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) when it is clear that there is no connection between the respondent and the domain name. See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003). Thus, Panel finds that Respondent is not known by the <gamertop.com>, <gamestop0.com>, <gamestpop.com>, and <gmamestop.com> domain names under Policy ¶ 4(c)(ii).
Complainant argues that Respondent uses the <gamertop.com>, <gamestop0.com>, <gamestpop.com>, and <gmamestop.com> domain names to shuttle Internet users to various websites that feature hyperlinks related to video gaming and selling video games, in competition with Complainant. In Microsoft Corp. v. BARUBIN, FA 1174478 (Nat. Arb. Forum May 6, 2008), the panel declined to construe the use of a domain name for competing advertisements as any sort of bona fide offering. The Panel finds that Respondent is not making a Policy ¶ 4(c)(i) bona fide offering of goods or service, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel notes that the record reflects the fact that the <gamestop0.com> and <gmamestop.com> domain names are being posted for general sale on the WHOIS pages for the <gamestop0.com> and <gmamestop.com> domain names. In Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000), the panel found bad faith when the respondent had placed the domain names up for a general, public sale. Thus, the Panel finds Policy ¶ 4(b)(i) bad faith in regards to the <gamestop0.com> and <gmamestop.com> domain names.
Complainant argues that Respondent is a recalcitrant cybersquatter and provides evidence of prior UDRP decisions decided against Respondent. See, e.g., Bath & Body Works Brand Mgmt., Inc. v. PPA Media Serv.s / Foo, FA 1510255 (Nat. Arb. Forum Aug. 27, 2013); Under Armour, Inc. v. PPA Media Servs. / Foo, FA 1507330 (Nat. Arb. Forum Aug. 24, 2013); Victoria’s Secret Stores Brand Mgmt., Inc. v. PPA Media Servs. / Foo, FA 1505712 (Nat. Arb. Forum July 30, 2013). The Panel agrees that these prior findings of bad faith are evidence of Respondent’s bad faith in this dispute 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).
Respondent is disrupting Complainant’s business by using the disputed domain names yo promote various hyperlink advertisements that shuttle Internet users to competing businesses. The Panel finds that this constitutes Policy ¶ 4(b)(iii) bad faith registration and use. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).
Respondent is promoting competing hyperlinks through the <gamertop.com>, <gamestop0.com>, <gamestpop.com>, and <gmamestop.com> domain names in an attempt to confuse Internet users into believing that Respondent is associated with or affiliated with Complainant and the GAMESTOP mark, presumably for commercial gain. In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), the panel found bad faith when the respondent utilized confusingly similar domain names to promote competing and unrelated hyperlink advertisements, from which the respondent drew advertising revenues. The Panel thus finds further bad faith under Policy ¶ 4(b)(iv).
The Panel finds that Respondent’s use of disputed domain names with intentional misspellings of Complainant’s GAEMSTOP mark, or “typosquatting,” is itself evidence of bad faith. See Liberty Mut. Ins. Co. v. Domain Park Ltd., FA 1189049 (Nat. Arb. Forum June 23, 2008), defining typo-squatting as the “registration of a disputed domain name that capitalizes on Internet users’ typo-graphical errors.”
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 <gamertop.com>, <gamestop0.com>, <gamestpop.com>, and <gmamestop.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 15, 2013
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