Game X Change, Inc. v.
Modern Empire Internet Ltd. c/o Administrator
Claim Number: FA0803001155839
PARTIES
Complainant is Game X Change, Inc. (“Complainant”), represented by Molly Buck Richard, of Richard Law Group, Inc.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gamexchange.com>, registered with Fabulous.com
Pty Ltd.
PANEL
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.
Alan L. Limbury, Sandra J. Franklin and M.
Kelly Tillery as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 3, 2008; the
National Arbitration Forum received a hard copy of the Complaint on March 4, 2008.
On March 4, 2008, Fabulous.com Pty Ltd. confirmed by e-mail to
the National Arbitration Forum that the <gamexchange.com> domain name is
registered with Fabulous.com Pty Ltd. and
that the Respondent is the current registrant of the name. Fabulous.com
Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. registration agreement
and has thereby agreed to resolve domain-name disputes brought by third parties
in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On March 5, 2008, the National Arbitration Forum drew Complainant’s
attention to certain deficiencies in the Complaint and invited Complainant to
rectify them. On March 6, 2008,
Complainant submitted an Amended Complaint.
On March 6, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of March 26, 2008 by which Respondent could
file a Response to the Amended Complaint, was transmitted to Respondent via
e-mail, post and fax, to all entities and persons listed on Respondent’s
registration as technical, administrative and billing contacts, and to
postmaster@gamexchange.com by e-mail.
A timely Response was received and determined to be complete on March
26, 2008.
On March 28, 2008, the parties filed a Joint Request to Stay the
Administrative Proceeding in this case.
The National Arbitration Forum subsequently granted this request, staying
the Proceeding until April 21, 2008.
On April 14, 2008, Respondent filed a Request to Remove the Stay of
Administrative Proceeding. The National
Arbitration Forum granted this request on April 14, 2008, reinstating the
instant proceeding.
On April 15, 2008, Complainant submitted a timely and complete
Additional Submission in accordance with the National Arbitration Forum’s
Supplemental Rule #7.
On April 21, 2008, Respondent submitted a timely and complete
Additional Submission in accordance with the National Arbitration Forum’s
Supplemental Rule #7.
On April 22, 2008, pursuant to Respondent’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Alan L. Limbury, Sandra J. Franklin and M.
Kelly Tillery as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Incorporated in 1992, Complainant is engaged in retail store services
featuring electronic games. It currently has 54 retail stores in the
Complainant reapplied to register the GAMEXCHANGE mark with the USPTO
in 2002 and the mark was registered on July 1, 2003 under Registration No. 2,732,090.
The GAMEXCHANGE mark has been used continuously by Complainant since 1992.
The disputed domain name, which was registered on August 19, 2004, incorporates
Complainant’s registered GAMEXCHANGE mark in its entirety and is confusingly
similar to that mark.
Respondent has no rights or legitimate interests in the disputed domain
name. It is not commonly known by that name and has not used it in connection
with a bona fide offering of goods or
services nor for a legitimate noncommercial or fair use. Complainant has not
authorized Respondent to use its GAMEXCHANGE mark.
Respondent registered and is using the disputed domain name in bad
faith. Based on Complainant’s prior use and registration of its mark, one could
easily infer that Respondent knew of Complainant’s ownership of the mark and
acted in bad faith by registering a domain name that includes a mark it knew or
should have known was the property of another.
Respondent has been a party to numerous Administrative Proceedings under
the Policy in which transfer has been ordered, thus evidencing a pattern of
conduct.
The disputed domain name resolves to a parked web page containing a
listing of links, some of which purport to be about games and others about
entirely unrelated businesses, products and services. Use of Complainant’s mark
to attract traffic to third party links unrelated to Complainant amounts to
competition and disruption of Complainant’s business under Policy ¶ 4(b)(iii). Profiting from such traffic through pay-per-click
revenues shows bad faith under Policy ¶ 4(b)(iv).
B. Respondent
This proceeding is based on a phonetic
equivalent of a generic term. The USPTO and the courts hold a phonetic
equivalent of a generic term itself to be generic. Complainant’s sole evidence
of an asserted right expressly disclaims the generic term ‘Game
Exchange,’ which
is not distinctive of Complainant.
Complainant’s previous, cancelled
registration (No. 1,844,850) was for the word mark GAME XCHANGE (disclaiming
the word GAME apart from the mark as shown) and is of no effect here.
Complainant chose not to avail itself of USPTO procedures for the revival of
such registrations, nor did it reapply for the same claim.
Complainant’s current registration is for the
graphical logo:
with an express disclaimer of the exclusive right to use ‘GAME
EXCHANGE’ apart from the mark as shown.
That disclaimer operates to disclaim
phonetic equivalents of the words disclaimed. Express disclaimers of
unregistrable matter in trademark registration documents have been routinely
recognized as having preclusive effect under the Policy: Dakota Beef, LLC v. Hagerott, FA 490093 (Nat. Arb. Forum July 11,
2005); VideoCall Co. v. M Koenig, FA 167922
(Nat. Arb. Forum Aug. 20, 2003).
Complainant produces no evidence of use of
“GAMEXCHANGE” or “GAME EXCHANGE” apart from the mark as shown in its extant
federal registration. The Policy does not provide a venue for the establishment
of rights which are not shown on the evidence to exist.
Complainant’s claim of distinctiveness
relies on graphical presentation, raising issues considered in Tesla Indus., Inc. v. Grossman, FA 547889
(Nat. Arb. Forum Dec. 5, 2005) and the cases there cited. Peeling away the
graphic elements and stylization of the Complainant’s mark, one is left with the
telescoped generic, unregistrable and
expressly disclaimed words “game exchange”, which describe the service in which
the Complainant purports to be engaged.
USPTO and other records demonstrate
widespread non-exclusive and non-distinctive use of the term at issue here and
numerous disclaimers by others of the term in compound or graphical marks. This
is relevant to whether Complainant can rightfully claim distinctiveness where
others have uniformly failed: VideoCall
Co. v. M Koenig, FA 167922 (Nat. Arb. Forum Aug. 20, 2003).
Complainant’s corporate name does not
establish trade or service mark rights for the purposes of the Policy. Indeed,
others include ‘GameXchange’ and ‘Game Exchange’ in their corporate names.
Complainant’s trade name is neither
distinctive nor exclusive. Whether Complainant had possessed rights in its
cancelled registration, multiple intervening users of the term since that time
have rendered Complainant unable to recapture whatever rights it abandoned in
2001. Having provided no evidence of exclusive or distinctive association with
“GAMEXCHANGE” or “GAME EXCHANGE,” and having expressly disclaimed the textual
and phonetically generic component of its compound graphical mark, Complainant
has failed to establish a trade or service mark right in the term at issue in
this Proceeding.
Respondent has rights and legitimate
interests in the disputed domain name, which Respondent has continuously used
as a generic term in connection with advertisements for trade in video games.
As to bad faith, Respondent denies actual
knowledge of Complainant’s mark and says that even if it had such knowledge, it would have known Complainant has disclaimed
the textual portion. The Policy does not extend to constructive notice except
in a few cases where the complainant has a
The telescoped term “game exchange” has a
direct primary meaning. Respondent’s use of the domain name has not utilized
Complainant’s claimed logo but has been directed to exploitation of that
primary meaning.
The domain name was originally registered
to a third party in 2001 and not renewed in 2004. Upon its expiration
Respondent obtained it through a service which provides lists and sales of
abandoned domain names. Accordingly, the timing of the registration was not
motivated by knowledge of Complainant. See
CNR Music B.V. v. High Performance Networks, Inc., D2005-1116 (WIPO Jan. 23, 2006).
There is nothing to suggest Respondent was
targeting Complainant. Other usual signs of bad faith are absent. Respondent is
not seeking to sell the domain name to Complainant or a competitor. As the
considerations of legitimate interests and bad faith overlap to some degree, where
a descriptive domain name is used in connection with the goods so described, it
does not follow that such use is bad faith use: Boutique
Tristan & Iseut Inc. v. B & B, D2007-1816 (WIPO Jan. 26, 2008).
Respondent’s motives for registering the domain name are manifest in the
manner in which it has been used. Accordingly, Complainant has failed to show
that the domain name was registered in bad faith.
C. Additional
Submissions
While the Forum’s Supplemental Rules
permit the filing of submissions in addition to the Complaint and Response,
they cannot require the Panel to consider them because to do so would be
inconsistent with paragraph 12 of the Rules, which does not contemplate
unsolicited submissions after the Complaint and Response and gives the Panel
the "sole discretion" as to acceptance and consideration of
additional submissions. See Eskimos, Inc. v. Phillips,
FA 105950 (Nat. Arb. Forum May 15, 2002); Am. Online, Inc. v. Miles, FA 105890
(Nat. Arb. Forum May 31, 2002) and Alain-Martin
Pierret v. Sierra Tech. Group, LLC, FA
472135 (Nat. Arb. Forum July 1,
2005).
In its Additional Submission, Complainant relies on asserted common law trademark rights in GAME X CHANGE and attaches Exhibits in furtherance of that contention. This material was clearly available to Complainant when filing the Complaint. Its inclusion in the Additional Submission involves Complainant in splitting its case and amounts to an amendment to the Complaint, in violation of the Forum’s Supplemental Rule 7(f). Complainant also repeats much of its argument on the issues of legitimacy and bad faith.
Nevertheless, since Respondent has responded to Complainant’s Additional Submission, the Panel exercises its discretion to admit both Additional Submissions insofar as they address the issue of common law rights.
Complainant
claims its continuous use of the mark GAME X CHANGE since 1992 establishes
common law rights. It exhibits material published
on the website < franchising.com> about “GAME X CHANGE®” having been founded in 1992, describing it as
“the largest video game franchise in the U.S.,” with “additional stores to be
opened in 2007,” and material published
on the website < franchisegator.com>, displaying Complainant’s
registered mark No. 2,732,090 and a
photograph of a store displaying that mark on the outside wall, and describing
the United States market for game sales as worth $7.4 billion in 2006.
Respondent
says Complainant submits no evidence of
common law rights and has changed the basis of the proceeding from its
federal registration, which clearly disclaims rights in “Game Exchange” apart
from its graphical presentation.
Ignoring the evidence that Complainant’s use of “Game Exchange”
is by no means exclusive, Complainant now claims it had common law rights and
that Respondent, in Hong Kong, had a duty to know of a store in
While Complainant simply asserts, contrary to its sworn
disclaimer, that it had common law rights of apparent world renown in 2004,
Complainant does not provide a single piece of historically relevant evidence
to support that assertion.
It is not enough for Complainant to show, as it has shown here, present use of a descriptive term for an exchange dealing in video games. In order to show acquired distinctiveness in such a descriptive term, Complainant must show that such use has been continuous, longstanding, and substantially exclusive. Complainant’s undated print-outs of recent information establish none of those things.
FINDINGS
Complainant has failed to establish that the
disputed domain name is identical or confusingly similar to a trademark in
which it has rights.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
The first step for a complainant is to establish that it has rights in
a trademark. There are three marks to be considered here, namely Complainant’s
previously registered mark No.1,844,850; Complainant’s
currently registered mark No. 2,732,090; and Complainant’s claimed common law
mark GAME X CHANGE.
Complainant has no rights to its previously registered mark No.1,844,850, which need not be further mentioned.
There is no dispute that Complainant has rights in the registered trademark No. 2,732,090
with a disclaimer as to the expression ‘Game Exchange.’ Whether or not the disputed domain name is confusingly similar to that mark is discussed below, once the question whether Complainant has shown that it has common law rights in the mark GAME X CHANGE has been considered.
As to that claimed common law mark, to succeed in a complaint under the Policy in relation to an unregistered mark, it is necessary for a complainant to prove that the mark is in fact a trademark. Thus, the complainant must produce evidence proving that, prior to the filing of the complaint, it has provided goods or services under the unregistered mark and had thereby acquired a reputation such that members of the public would associate those goods or services with the complainant and not with others not authorized by the complainant to use the mark. That is to say, the complainant must prove that, prior to filing the complaint, it had acquired a right in the unregistered mark such as would enable it to bring a legal action against a third person using the mark without its consent: British Heart Found. v. Meyer, AF-0957 (eResolution Nov. 13, 2001).
Here the Complaint asserts use since 1992 of
the mark GAME X CHANGE but the only evidence of use is of recent use and is
insufficient to establish distinctiveness, especially having regard to
Complainant’s disclaimer to the USPTO in 2003 that it did not have the
exclusive right to use the expression Game Exchange. That disclaimer
eliminated any special common law trademark rights Complainant may ever have had
to “GAME EXCHANGE.” See
VideoCall Co. v.
M Koenig, FA 167922 (Nat. Arb. Forum Aug. 20, 2003).
It also eliminated any special common law trademark rights Complainant may
ever have had to phonetic and telescoped equivalents such as “GAME X CHANGE.”
Under these circumstances Complainant has not
satisfied the Panel that Complainant has or ever has had common law rights in
the mark GAME X CHANGE.
Returning to the
question whether the disputed domain name is confusingly similar to Complainant’s
registered mark No. 2,732,090, it is well established that the specific top
level of a domain name such as “.com,” “.org” or “.net” does not affect the
domain name for the purpose of determining whether it is identical or
confusingly similar. See Magnum
Piering, Inc. v. The
Mudjackers & Garwood S. Wilson, Sr., D2000-1525 (WIPO Jan. 29, 2001); Rollerblade, Inc. v. McCrady, D2000-0429
(WIPO June 25, 2000).
Many cases have established that the test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the other marketing and use factors, such as the "Sleekcraft factors" – AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 346 (9th Cir. 1979), usually considered in trademark infringement or unfair competition cases. See BWT Brands, Inc. & British Am. Tobacco (Brands), Inc v. NABR, D2001-1480 (WIPO Mar. 26, 2002); Britannia Bldg. Soc’y v. Britannia Fraud Prevention, D2001‑0505 (WIPO July 6, 2001); Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000); Koninklijke Philips Elecs. N.V. v. In Seo Kim, D2001‑1195 (WIPO Nov. 12, 2001); Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001); Vivendi Universal v. Sallen & GO247.COM, Inc., D2001-1121 (WIPO Nov. 7, 2001), and the cases there cited. See also the similar approach adopted by the U.S. Federal court in Northern Light Tech., Inc. v. N. Lights Club 2000 U.S. Dist. LEXIS 4732 (D. Mass. March 31, 2000).
Confusion in this context, in the sense of
bewilderment or failing to distinguish between things, is a state of wondering
whether there is an association, rather than a state of erroneously believing
that there is one. An appropriate formulation might be: “Is it likely that,
because of the similarity between the domain name on the one hand and the
Complainant’s trademark on the other hand, people will wonder whether the
domain name is associated in some way with the Complainant?”: SANOFI-AVENTIS
v. Trevenio, D2007-0648
(WIPO July 11, 2007).
Design elements are generally ignored in making the
comparison between a domain name and a trademark: See Roux Labs.,
Inc. v. Sheldeez Beauty Salon,
D2005-0799 (WIPO Sept. 30, 2005);
Global Affiliates, Inc. v.
The rationale for these cases is explained in
… it is open to a Panel to make a finding under the first element of the Policy, based on the “dominant [word] elements” of a mark. There are two reasons for this.
Firstly, it is obvious that a mark, to the extent that it includes a device, cannot be reproduced in a domain name. To require some similarity with a device itself, for a finding under this first element of the Policy, would always place the owners of such marks at a significant disadvantage. The terms of the Policy include no such limitation against owners of such marks.
Secondly, it follows from the above […] that whether a domain name is identical or confusingly similar to a mark, is to be judged against the dominant textual elements of a complainant’s mark. This approach is supported by a series of prior panel decisions. (See e.g. Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031, and the cases cited in that one. In that case, the panel noted that: ‘…graphic elements, such as the Sweeps design, not being reproducible in a domain name, need not be considered when assessing identity or confusing similarity.’) The nature of a design mark may be relevant to whether its textual components are sufficiently dominant. But this is something that can only be judged on a case by case basis – according to the nature of the mark in question. Put in other words, the more distinctive or particular the textual elements of the trademark, the greater the likelihood of it being identical or confusingly similar.
Accordingly,
in cases in which the device of figurative element is an integral
element of the trademark’s distinctiveness, domain names identical or
confusingly similar to the textual components of the mark have been found to be not identical or confusingly similar to
the mark. See for example Province of
Brabant Wallon v. Domain Purchase, NOLDC, Inc., D2006-0778 (WIPO Oct. 18,
2006); Brisbane City Council v. Warren Bolton Consulting Pty Ltd.,
D2001-0047 (WIPO May 7, 2001) and Cream Holdings Ltd. v. Nat’l Internet Source,
Inc., D2001-0964 (WIPO Sept.
28, 2001).
Here, in addition to a device or figurative element, there is a disclaimer of the entire textual element. In the similar circumstances of Dakota Beef, LLC v. Hagerott, FA 490093 (Nat. Arb. Forum July 11, 2005), on which Respondent relies, the panelist said:
There
is no meaningful distinction to be made between the textual portion of
Complainant’s registered DAKOTA BEEF service mark and the disputed domain name <dakotabeef.com>. Hannover Ruckversicherungs AG v. Ryu, FA 102724 (Nat. Arb.
Forum Jan. 7, 2001). However, Complainant has, in its service mark
registration application, specifically disclaimed entitlement to the exclusive
use of the term “Dakota Beef” apart from the accompanying beef cow design. Thus, even though Respondent’s domain name is
either substantively identical or confusingly similar to Complainant’s mark,
Complainant cannot look to its registered mark to undergird its claim to
superior rights to use the DAKOTA BEEF mark under ¶4(a)(i) of the Policy.
In that case the domain name was registered before the complainant’s mark. Early panel decisions interpreted ¶ 4(a)(i) of the Policy as requiring a complainant to show that it had trademark rights prior to the registration of the disputed domain name. The current view is that the Policy does not address the issue of superiority, rather that ¶ 4(a)(i) of the Policy does not require trademark rights to have arisen before the disputed domain name was registered, so long as they be shown to exist by the time the complaint is filed with the Provider. See Valve Corp. v. ValveNET, Inc., D2005‑0038 (WIPO Mar. 9, 2005) and the cases there cited. Of course, the timing of the respective rights is relevant to the issues of legitimacy and bad faith.
In another case involving disclaimer, Minibar
6.11 The status and impact of disclaimers has
been discussed in a number of UDRP decisions. The fact that words incorporated
into either a longer word trademark or in a device mark have been disclaimed
does not necessarily mean that a finding of confusing similarity with a domain
name using those words is not possible. For example, in Park Place
Entertainment Corporation v. Mike Gorman, WIPO Case No. D2000-0699, there was still confusing similarity between the
domain name <paris-lasvegas.com> and a design mark that incorporated the
words
6.12 The situation in
<paris-lasvegas.com> and in <franchiserecruiters.com> does not
appear to be quite the same as the situation now before the Panel. The words
“Minibar Systems” have been disclaimed together and “Minibar Systems” is
essentially the entire substance of the Domain Name. Once the disclaimed words
have been discounted, it would be difficult to see anything left in the
trademark with which there can be said to be confusing similarity. The current
case appears similar to that in Innovative Measurement Solutions Inc v. Hart
Info Systems, WIPO Case No. D2001-0552. There
the mark was for the words “Formulation Workstation, the workflow software
for formulators”, the disclaimer for “Formulation Workstation” and the domain
name in issue was <formulationworkstation.com>. The panel in that case
concluded there was no trademark right upon which the Claimant could rely.
Accordingly, each case
must turn on its particular facts and the nature of the particular mark under
consideration. Here, as in
Adopting the approach in Minibar North America Inc. v. Musk, D2005-0035 (WIPO Mar. 2, 2005), the words “Game Exchange” have been disclaimed together and “Game Exchange” is essentially the entire substance of the disputed domain name. Once the disclaimed expression has been discounted, there is nothing left in the trademark with which there can be said to be confusing similarity.
Accordingly
Complainant has failed to establish this element. It is therefore unnecessary
to consider the remaining elements.
DECISION
Complainant having failed to establish all three elements required
under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Alan L. Limbury,
Presiding Panelist
Sandra J. Franklin M.
Kelly Tillery Panelist Panelist
Dated: May 6, 2008
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