Vision Studios LLC v. kirk Dusty
Claim Number: FA0909001284125
Complainant is Vision Studios, LLC (“Complainant”), represented by Steven
L.
REGISTRAR
The domain names at issue are <fpscheats.com>, <fps-cheats.org>, <fpscheats.org>, <fpscheatsblog.com>, and <combatarmshacks.com>, registered with Enom, Inc.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 13, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 17, 2009.
On
On September 24, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 14, 2009 by which Respondent could file a response to the 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@fpscheats.com, postmaster@fps-cheats.org, postmaster@fpscheats.org, postmaster@fpscheatsblog.com, and postmaster@combatarmshacks.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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." 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 makes the following assertions:
1. Respondent’s <fpscheats.com> and <fpscheats.org> domain names are identical to Complainant’s FPS CHEATS mark. Respondent’s <fpscheatsblog.com> and <fps-cheats.org> domain names are confusingly similar to Complainant’s FPS CHEATS mark. Respondent’s <combatarmshacks.com> domain name is confusingly similar to Complainant’s COMBAT ARMS HACK mark.
2. Respondent does not have any rights or legitimate interests in the <fpscheats.com>, <fps-cheats.org>, <fpscheats.org>, <fpscheatsblog.com>, and <combatarmshacks.com> domain names.
3. Respondent registered and used the <fpscheats.com>, <fps-cheats.org>, <fpscheats.org>, <fpscheatsblog.com>, and <combatarmshacks.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Vision Studios
LLC, operates websites that sell information on popular video games. Complainant has invested heavily in designing
and programming its websites. Almost
150,000 individuals have registered for accounts with Complainant’s websites,
from which Complainant derived revenue in the form of informational services
purchased and cost-per-impression revenue from third-parties. From 2007 to 2009, Complainant’s websites have
attracted millions of visitors and have generated more than $40,000 in revenue
each month. Complainant offers its video
game information under the FPS CHEATS and the COMBAT ARMS HACKS marks.
Complainant originally
registered all of the disputed domain names between 2006 and 2008. In early 2009, Respondent, kirk Dusty, hacked into Complainant’s websites resolving
from the disputed domain names, re-registered the disputed domain names in
Respondent’s name, and stole Complainant’s customers’ information. All of the disputed domain names resolve to a
website that sells video game information in direct competition with
Complainant. In addition, Respondent periodically
posted pictures of Complainant’s family on the resolving website and added
disparaging comments. Respondent has
offered to sell the disputed domain names back to Complainant for $1,000 to
$10,000.
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."
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.”).
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.
The Panel finds that Complainant need not hold registrations of the FPS CHEATS and the COMBAT ARMS HACKS marks in order to establish rights in each mark under Policy ¶ 4(a)(i) provided that Complainant can establish common law rights in each mark through a sufficient showing of secondary meaning in each mark. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Complainant began using the FPS CHEATS mark on
Complainant has been using the COMBAT ARMS HACK mark online
since 2008. Since that time, Complainant
has generated more than $2,000 per month from the website bearing the COMBAT
ARMS HACK mark. In addition, hundreds of
thousands of visitors have visited the website bearing this mark. In
light of Respondent’s failure to contest this Complaint, the Panel finds that
these facts are sufficient evidence of secondary meaning in the COMBAT ARMS
HACK mark. Therefore, the Panel finds
that Complainant has sufficiently established common law rights in the COMBAT
ARMS HACK mark under Policy ¶ 4(a)(i). See George Weston Bakeries Inc., supra; see also Artistic
Pursuit LLC, supra.
Respondent’s <fpscheats.com> and <fpscheats.org>
domain names both contain Complainant’s FPS CHEATS mark in its entirety,
delete the space within the mark, and add the generic top-level domain (“gTLD”)
“.com” or “.org.” The Panel finds that none
of these alterations to Complainant’s mark sufficiently distinguish these
disputed domain names from Complainant’s mark.
Accordingly, the Panel finds that the <fpscheats.com> and <fpscheats.org>
domain names are identical to Complainant’s FPS CHEATS mark under Policy
¶ 4(a)(i). See Diesel v. LMN, FA 804924 (Nat. Arb.
Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to
complainant’s mark because “simply eliminat[ing] the space between terms and
add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to
differentiate the disputed domain name from Complainant’s VIN DIESEL mark under
Policy ¶ 4(a)(i)”); see also Sea World,
Inc. v. JMXTRADE.com, FA 872052 (Nat. Arb. Forum
Respondent’s <fpscheatsblog.com> and <fps-cheats.org>
domain names contain Complainant’s FPS CHEATS mark in its entirety and
add either the gTLD “.com” or the “.org.”
In addition, the <fpscheatsblog.com> deletes the space within
the mark and adds the generic term “blog.”
The <fps-cheats.org> domain name replaces the space
within the mark with a hyphen. The Panel
finds that the <fpscheatsblog.com> and <fps-cheats.org>
domain names are confusingly similar to Complainant’s FPS CHEATS mark under
Policy ¶ 4(a)(i) because none of these alterations to Complainant’s mark
sufficiently distinguish the <fpscheatsblog.com> and <fps-cheats.org>
domain names from Complainant’s mark. See Oki
Data Ams., Inc. v.
Respondent’s <combatarmshacks.com>
domain name contains Complainant’s COMBAT ARMS HACK mark in its entirety,
deletes the spaces within the mark, adds the letter “s,” and adds the gTLD
“.com.” The Panel finds that the <combatarmshacks.com> domain name is confusingly
similar to Complainant’s COMBAT ARMS
HACK mark under Policy ¶ 4(a)(i) because the deletion of spaces, addition of a
letter, and the addition of a gTLD do not sufficiently distinguish the <combatarmshacks.com> domain name
from the COMBAT ARMS HACK mark. See Oki Data, supra; see also Nat’l Geographic Soc’y v.
Stoneybrook Invs., FA 96263 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii),
Complainant must make a prima facie
showing that Respondent lacks rights and legitimate interests in the disputed domain names. Upon Complainant making such a showing, the
burden then shifts to Respondent and Respondent must establish that it has
rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has
sufficiently made its prima facie
showing under Policy ¶ 4(a)(ii). The burden now shifts to Respondent, from
which no response was received. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum
Apr. 26, 2006) (finding the “complainant must first make a prima facie case
that [the] respondent lacks rights and legitimate interests in the disputed
domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the]
respondent to show it does have rights or legitimate interests.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct.
1, 2002) (“Because Complainant’s Submission constitutes a prima facie case
under the Policy, the burden effectively shifts to Respondent. Respondent’s
failure to respond means that Respondent has not presented any circumstances
that would promote its rights or legitimate interests in the subject domain
name under Policy ¶ 4(a)(ii).”). However, the Panel
will now examine the record to determine if Respondent has rights or legitimate
interests under Policy ¶ 4(c).
The WHOIS information for all of the disputed domain names
lists “kirk Dusty” as the registrant, which
indicates that Respondent is not commonly known by any of the disputed domain
names. Respondent has not presented any
evidence to suggest that he is known by any of the domain names in this case. Therefore, the Panel finds that Respondent is
not commonly known by any of the disputed domain names under Policy ¶
4(c)(ii). See Tercent
Inc. v. Lee Yi, FA 139720 (Nat. Arb.
Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information
implies that Respondent is ‘commonly known by’ the disputed domain name” as one
factor in determining that Policy ¶ 4(c)(ii) does not
apply); see also 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).
All of the disputed
domain names resolve to the same website that offers video game information,
which is in direct competition with Complainant. The Panel finds that Respondent’s use of the
disputed domain names by selling a competing product is not a bona fide
offering of goods or services under Policy ¶ 4(c)(i)
or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Wal-Mart Stores,
Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the
respondent’s use of domain names confusingly similar to the complainant’s
WAL-MART mark to divert Internet users seeking the complainant’s goods and
services to websites competing with the complainant did not constitute a bona
fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Coryn Group, Inc. v.
Media Insight, FA 198959 (Nat. Arb. Forum
Dec. 5, 2003) (finding that the respondent was not using the domain names for a
bona fide offering of goods or services nor a legitimate noncommercial
or fair use because the respondent used the names to divert Internet users to a
website that offered services that competed with those offered by the
complainant under its marks).
Furthermore, Respondent offered to sell the disputed domain names to Complainant for $1,000 to $10,000. The Panel finds the Respondent’s offer to sell the disputed domain names in excess of Respondent’s out-of-pocket registration costs is further evidence that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); cf. Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“An attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s offer to sell the disputed domain names to Complainant for $1,000 to $10,000, an amount in excess of Respondent’s out-of-pocket registration costs, constitutes bad faith registration and use under Policy ¶ 4(b)(i). See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)); see also Bank of Am. Corp. v. Northwest Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
The Panel finds that Respondent’s competing use of the
disputed domain names disrupts Complainant’s business. The Panel further finds that such a disruption
constitutes bad faith registration and use under Policy ¶ 4(b)(iii). 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 Spark Networks
Furthermore, Complainant asserts that Respondent hacked its
website in order to re-register the disputed domain names in Respondent’s
name. Complainant further asserts that
Respondent occasionally posted pictures of Complainant’s family with
disparaging comments on the resolving website.
The Panel finds that these actions by Respondent provide further
evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Ric Jo Swaningson v. thu lins, FA 1264365
(Nat. Arb. Forum July 1, 2009) (“The Panel finds that Respondent’s
illegal action of hacking Complainant’s registration account is evidence that
Respondent registered and is using the disputed domain name in bad faith
pursuant to Policy ¶ 4(a)(iii).”); see
also TM Acquisition Corp.
v. S.E.A. Domains, FA 156800 (Nat. Arb.
Forum June 12, 2003) (finding the respondent's use of the complainant's mark to
redirect Internet users to a website dedicated to criticizing the complainant
was evidence that the respondent’s domain names were registered and used in bad
faith).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fpscheats.com>, <fps-cheats.org>, <fpscheats.org>, <fpscheatsblog.com>, and <combatarmshacks.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 4, 2009
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