GameStop, Inc. v. Pham Dinh Nhut
Claim Number: FA1309001518564
Complainant is GameStop, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Pham Dinh Nhut (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <fgamestop.com>, <gamastop.com>, <gameatop.com>, <gamedtop.com>, <gamesbop.com>, <gamesrop.com>, <gamestiop.com>, <gamestoo.com>, <gamestopc.com>, <gamestopm.com>, <gamestopo.com>, <gamestopp.com>, <gamestopr.com>, <gamesttop.com>, <gameswtop.com>, <gammestop.com>, <gfamestop.com>, <ghamestop.com>, <gramestop.com>, <hamestop.com>, <samestop.com>, and <sgamestop.com>, registered with April Sea Information Technology Corporation.
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 9, 2013; the National Arbitration Forum received payment on September 9, 2013. The Complainant was submitted in both English and Vietnamese.
On September 10, 2013, April Sea Information Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <fgamestop.com>, <gamastop.com>, <gameatop.com>, <gamedtop.com>, <gamesbop.com>, <gamesrop.com>, <gamestiop.com>, <gamestoo.com>, <gamestopc.com>, <gamestopm.com>, <gamestopo.com>, <gamestopp.com>, <gamestopr.com>, <gamesttop.com>, <gameswtop.com>, <gammestop.com>, <gfamestop.com>, <ghamestop.com>, <gramestop.com>, <hamestop.com>, <samestop.com>, and <sgamestop.com> domain names are registered with April Sea Information Technology Corporation and that Respondent is the current registrant of the names. April Sea Information Technology Corporation has verified that Respondent is bound by the April Sea Information Technology Corporation 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 16, 2013, the Forum served the Vietnamese language Complaint and all Annexes, including a Vietnamese language Written Notice of the Complaint, setting a deadline of October 7, 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@fgamestop.com, postmaster@gamastop.com, postmaster@gameatop.com, postmaster@gamedtop.com, postmaster@gamesbop.com, postmaster@gamesrop.com, postmaster@gamestiop.com, postmaster@gamestoo.com, postmaster@gamestopc.com, postmaster@gamestopm.com, postmaster@gamestopo.com, postmaster@gamestopp.com, postmaster@gamestopr.com, postmaster@gamesttop.com, postmaster@gameswtop.com, postmaster@gammestop.com, postmaster@gfamestop.com, postmaster@ghamestop.com, postmaster@gramestop.com, postmaster@hamestop.com, postmaster@samestop.com, and postmaster@sgamestop.com. Also on September 16, 2013, the Vietnamese 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 October 10, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Vietnamese 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 names be transferred from Respondent to Complainant.
A. Complainant
i. Complainant owns the GAMESTOP mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No, 1,707,460, registered Aug. 11, 1992).
ii. Complainant uses the GAMESTOP mark for retail store services and online retail services in connection with video, computer, and electronic games, as well as related accessories and services.
iii. Complainant is the world’s largest video game retailer. Complainant has garnered widespread consumer recognition through considerable advertisement and promotion.
iv. Complainant utilizes the website <gamestop.com> to provide its products and services online.
v. The disputed domain names are confusingly similar to the GAMESTOP mark as the domain names differ only by a single character from the mark.
vi. Respondent has no rights or legitimate interests in the disputed domain names. Respondent has not been commonly known by the disputed domain names, nor has Complainant authorized Respondent’s use of the mark in any way.
vii. Respondent is not using the disputed domain names to provide a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Respondent is using the dispute domain names to redirect users to websites featuring generic links to third-party websites, some of which complete directly with Complainant’s business. Respondent presumably receives pay-per-click fees from the linked websites.
viii. Respondent is a recalcitrant, serial cybersquatter as demonstrated by previous UDRP decisions adverse to Respondent. Further, Respondent holds registrations on other domain names that appear to be straightforward examples of typosquatting, but are not presently in dispute.
ix. Respondent is using some of the disputed domain names to redirect users to a website featuring products or services in direct competition with Complainant, disrupting Complainant’s business.
x. Respondent uses the disputed domain names in connection with generating revenue as a “click through” website. Respondent takes advantage of Complainant’s well-known mark to achieve commercial gain.
xi. Respondent had knowledge of Complainant’s rights in the GAMESTOP mark as the resolving page displays the mark spelled correctly despite the misspelling of the mark in the domain name. This provides evidence of Respondent’s bad faith.
xii. Respondent’s typosquatting behavior is, in and of itself, further evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the GAMESTOP mark. Respondent’s domain names are confusingly similar to Complainant’s GAMESTOP mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <fgamestop.com>, <gamastop.com>, <gameatop.com>, <gamedtop.com>, <gamesbop.com>, <gamesrop.com>, <gamestiop.com>, <gamestoo.com>, <gamestopc.com>, <gamestopm.com>, <gamestopo.com>, <gamestopp.com>, <gamestopr.com>, <gamesttop.com>, <gameswtop.com>, <gammestop.com>, <gfamestop.com>, <ghamestop.com>, <gramestop.com>, <hamestop.com>, <samestop.com>, and <sgamestop.com> domain names, and that Respondent registered and uses the domain names in bad faith.
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 record reflects the following. Complainant owns the GAMESTOP mark through its trademark registration with the USPTO (e.g., Reg. No, 1,707,460, registered Aug. 11, 1992). Complainant uses the GAMESTOP mark for retail store services and online retail services in connection with video, computer, and electronic games, as well as related accessories and services.
USPTO registrations are sufficient to establish a complainant’s rights in the mark regardless of whether the complainant registered the mark in the country were the respondent resides or operates. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). The Panel finds that Complainant’s USPTO registrations are adequate to establish rights in the GAMESTOP mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that the disputed domain names are confusingly similar to the GAMESTOP mark as the domain names differ only by a single character from the mark. The disputed domain names either misspell the GAMESTOP mark by one letter, or insert one additional letter into the mark. The Panel finds that the disputed domain names are confusingly similarly to Complainant’s mark because the minor misspelling of a mark in a domain name serves to increase, rather than decrease, confusing similarity. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”). Further, the addition of gTLD is irrelevant to the confusing similarity 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.”). Accordingly, the Panel finds that the disputed domain names are confusingly similar to Complainant’s GAMESTOP mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names. In so arguing, Complainant asserts that Respondent has not been commonly known by the disputed domain names, nor has Complainant authorized Respondent’s use of the mark in any way. The Panel notes that the WHOIS information indicates that “Pham Dinh Nhut” is the registrant of all the disputed domain names at issue. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark. Similarly, the information in this record gives no indication that Respondent is commonly known by the disputed domain name or that Respondent had Complainant’s authorization to use the GAMESTOP mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant further argues that Respondent is not using the disputed domain names to provide a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Complainant asserts that Respondent is using the disputed domain names to redirect users to websites featuring generic links to third-party websites, some of which compete directly with Complainant’s business. Complainant includes screenshots of the landing pages for all twenty-two of the disputed domain names. Complainant also alleges that Respondent receives pay-per-click fees from the linked websites. As Complainant has provided the Panel with evidence that the websites resolving from the disputed domain names display links to websites that directly compete with Complainant’s business, the Panel finds Respondent’s use of the disputed domain names is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
See 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 finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent is a recalcitrant, serial cybersquatter. Complainant cites previous UDRP decisions adverse to Respondent. E.g., FCOA, LLC v. Pham Dinh Nhut, FA 1413706 (Nat. Arb. Forum Dec. 20, 2011); Taxhawk, Inc. v. Pham Dinh Nhut, FA 1508730 (Nat. Arb. Forum Sep. 3, 2013); Thrivent Fin. for Lutherans v. Pham Dinh Nhut, FA 1460791 (Nat. Arb. Forum Oct. 10, 2012). Evidence of bad faith exists where a respondent has a history of bad faith as demonstrated by past UDRP decisions. 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). Thus, the Panel finds evidence of bad faith under Policy ¶ 4(b)(ii).
Complainant argues that Respondent uses the disputed domain names to generate revenue as a “click through” website. Complainant contends that Respondent takes advantage of Complainant’s well-known mark for Respondent’s own commercial gain, which shows Respondent’s bad faith. The Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the resolving websites provide links to sites related to Complainant’s products and Respondent presumably benefits commercially from intentionally misleading Internet users via the domain names by receiving click-through fees. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant asserts that Respondent had actual knowledge of Complainant’s rights in the GAMESTOP mark given that the resolving pages display the mark spelled correctly despite the misspelling of the mark in the domain name. Complainant argues that such knowledge provides evidence of Respondent’s bad faith. The Panel notes that the properly spelled GAMESTOP mark appears on the pages resolving from <fgamestop.com>, <gamastop.com>, <gamestoo.com>, <gamestopc.com>, <gamestopo.com>, and <sgamestop.com>. The Panel infers that Respondent had actual knowledge of Complainant’s rights in the mark given the appearance of Complainant’s properly spelled mark on the resolving pages and finds this to be evidence of Respondent’s bad faith pursuant to 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").
Finally, Complainant argues that Respondent’s typosquatting behavior is, without more, evidence of bad faith. Panels have consistently held that typosquatting is meant to take advantage of typographical errors, and is thus motivated by bad faith. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The Panel finds evidence of bad faith under Policy ¶ 4(a)(iii).
The Panel finds 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 <fgamestop.com>, <gamastop.com>, <gameatop.com>, <gamedtop.com>, <gamesbop.com>, <gamesrop.com>, <gamestiop.com>, <gamestoo.com>, <gamestopc.com>, <gamestopm.com>, <gamestopo.com>, <gamestopp.com>, <gamestopr.com>, <gamesttop.com>, <gameswtop.com>, <gammestop.com>, <gfamestop.com>, <ghamestop.com>, <gramestop.com>, <hamestop.com>, <samestop.com>, and <sgamestop.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: October 16, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page