Twitch Interactive, Inc. v. Jason Hardwick
Claim Number: FA1501001601323
Complainant is Twitch Interactive, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, United States. Respondent is Jason Hardwick (“Respondent”), Florida, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <twitchtv.net>, registered with Fabulous.com Pty Ltd.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 22, 2015; the National Arbitration Forum received payment on January 22, 2015.
On January 22, 2015, Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <twitchtv.net> domain name is registered with Fabulous.com Pty Ltd and that 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 26, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 17, 2015 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@twitchtv.net. Also on January 26, 2015, 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 February 23, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
Twitch Interactive, Inc. (hereinafter, “Twitch” or “Complainant”) operates Twitch, the world’s leading live video platform and community for gamers.
Twitch officially launched the Twitch service in June 2011 at the Electronic Entertainment Videogame Trade Show. By the end of July 2011, just a month after its public launch, the <twitch.tv> website had over 8 million unique visitors per month. By December 2011, the service was attracting more than 12 million unique visitors per month. See also Justin.tv, Inc. v. heshan, FA1112001418422 (Nat. Arb. Forum Jan. 16, 2012) (finding that TWITCHTV had acquired secondary meaning in 2011). By February 2014, <twitch.tv> was ranked the 4th largest website in the U.S. in terms of peak internet traffic, fortifying the TWITCH brand as an entertainment industry leader and the epicenter of social video for gamers. Today, more than 60 million visitors gather on Twitch every month to watch and talk about video games with more than 1.1 million broadcasters. Overall, <twitch.tv> is the 95th most viewed website in the United States, the 189th most viewed website globally, and the No. 1 most viewed website in the Games category, according to the public statistics offered by Internet site ranking company Alexa Internet, Inc.[1] Twitch is frequently mentioned in mainstream press and publications, such as the New York Times, the Wall Street Journal, CNET, PC Magazine, etc. Thus, through longstanding use, promotion and substantial commercial success, the TWITCH and TWITCHTV marks have become well-known and famous.
Twitch’s TWITCH and TWITCHTV trademarks are registered in various countries, including the United States (United States Reg. No.’s 4230874, 4230878 and 4275948). “If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights”; “[t]he location of the trademark … and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Ed. See also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA0703000932344 (Nat. Arb. Forum Apr. 23, 2007) (“it is sufficient that the complainant can demonstrate a mark in some jurisdiction”).
Twitch uses the following logo in connection with its TWITCH and TWITCHTV business (the “Twitch Logo”):
<image removed>
ICANN Rule 3(b)(viii).
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)(ix).
A. CONFUSINGLY SIMILAR DOMAIN NAME (ICANN Rule 3(b)(ix)(1) and ICANN Policy ¶4(a)(i)):
The disputed domain name is confusingly similar to the Complainant’s registered marks.
The disputed domain name <twitchtv.net> is identical to Complainant’s registered TWITCHTV trademark but for addition of a gTLD suffix. This is a “textbook example of an identical domain name under Policy ¶4(a)(i).” 1STDIBS.COM, INC. v. Rossi, FA1306001506048 (Nat Arb. Forum Jul 24, 2013) (finding <1stdibs.net> clearly confusingly similar to mark “1STDIBS”). See also Abbott Labs v. Whois Svc., FA0903001254682 (Nat. Arb. Forum May 14, 2009) (“the addition of a gTLD is irrelevant in distinguishing a disputed domain name from a registered mark”).
Further, the disputed domain name contains Complainant’s well-known TWITCH trademark in its entirety, merely adding the generic term “TV” which relates directly to Complainant’s television-like platform and video content delivery services. This is not sufficient to avoid a finding of confusing similarity. See Hewlett-Packard Dev. Co. L.P. v. Surya Tech., FA0708001059665 (Nat. Arb. Forum Oct. 2, 2007)(finding <hpsoftware.com> confusingly similar to HP and noting that “addition of a term that relates to the business in which Complainant engages and the addition of the gTLD are not sufficient to differentiate a domain name from a known mark”); and Caterpillar Inc. v. personal, D2010-2190 (WIPO Feb 8, 2011)(adding the name of a product the Complainant markets to Complainant’s mark is “likely to compound the likelihood of confusion”)(emphasis added). See also
World Wrestling Entertainment, Inc. v. Roamsoft Technologies, FA1407001569608 (Nat. Arb. Forum Aug. 20, 2014) (finding <wwetelevision.com> confusingly similar to WWE); World Wrestling Entertainment, Inc. v. zahid, FA1307001510265 (Nat. Arb. Forum Aug. 29, 2013) (finding wwe-tv.com confusingly similar to WWE and noting “addition of the letters ‘tv’ does not sufficiently distinguish the disputed domain name from Complainant’s mark”).
In fact, the domain name <twitchtv.net> was chosen by Respondent precisely because it is confusingly similar to and easily mistaken for Complainant’s TWITCHTV trademark and Complainant’s <twitch.tv> URL.
Under these circumstances, Paragraph 4(a)(i) of the UDRP, requiring that the domain name at issue be "identical or confusingly similar to a trademark or service mark in which the complainant has rights," is clearly satisfied.
B. NO RIGHTS OR LEGITIMATE INTERESTS IN DOMAIN NAME (ICANN Rule 3(b)(ix)(2) and ICANN Policy ¶4(a)(ii):
Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services; Respondent is not making a noncommercial fair use of the disputed domain names; and Respondent has never been known as or referred to as “TWITCH” or “TWITCHTV” or any variation thereof. As a result, Respondent does not have a legitimate interest in the disputed domain name, as legitimate interests are defined in Paragraphs 4(c)(i)-(iii) of the UDRP.
WHOIS identifies Respondent as Jason Hardwick. Respondent is not commonly known by Complainant’s TWITCH or TWITCHTV trademarks. Respondent is not affiliated with Complainant in any way. Respondent is not licensed by Complainant to use Complainant’s TWITCH or TWITCHTV marks. Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods or services. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (finding no rights or legitimate interests where there was nothing in the record to indicate that Respondent was commonly known by the domain name); and Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶4(c)(ii) does not apply).
The landing page for <twitchtv.net> prominently displays Complainant’s TWITCH and TWITCHTV trademarks and the Twitch Logo. The landing page is calculated and likely to appear to be Complainant’s genuine site, but with an overlaid warning message that beckons users install a “TwitchTV – Player Plugin.” Clicking on the installation link initiates a software download from <p1g62sidr.com>, a web site that has no connection to Complainant. Respondent’s web site generates various malware/malicious site warnings.
Respondent’s use of Complainant’s TWITCH and TWITCHTV registered marks, along with Complainant’s Twitch Logo and a facsimile of Complainant’s web site, is calculated and likely to lead visitors to believe that Respondent’s site originates with or is endorsed by Complainant. This constitutes passing off and is not a legitimate use. See Microsoft Corp. v. lijiuliang, FA0912001300266 (Nat. Arb. Forum Feb. 11, 2010) (“Respondent’s attempt to pass itself off as Complainant by imitating Complainant’s official website … 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)”); Mulberry Co. (Design) Ltd. v. Chen, D2010-1718 (WIPO Nov. 26, 2010)(“[The] disputed domain names are being used by the Respondent for websites which falsely appear to be affiliated, connected or associated with the Complainant. In this Panel’s view, such use and purpose of the disputed domain names without the authorization of the trade mark owner shows that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names or a bona fide offering of goods and services.”); and Microsoft Corp. v. Lafont, FA1009001349611 (Nat. Arb. Forum Nov. 9, 2010)(finding that the Respondent’s use of Complainant’s MSN mark and logo showed a lack of rights and legitimate interests according to Policy 4(a)(ii)).
Furthermore, using a domain that is confusingly similar to Complainant’s famous TWITCH and TWITCHTV trademarks to deliver malware or adware is not a legitimate use. See Google Inc. v. Petrovich, FA 1339345 (Nat. Arb. Forum Sep 23, 2010) (“Respondent’s failure to make an active use of the disputed domain names except for the purpose of downloading malicious computer software is not a use in connection with a bona fide offering of goods and services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii)”); Dell v. tawnya grilth c/o dellpc.us, FA 1400620 (Nat. Arb. Forum Sept. 1, 2011) (finding that use of the disputed domain name to offer downloads of software that contain malware is not a bona fide offering of goods or services under Policy ¶4(c)(ii) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶4(c)(iv)); and Grappone TS, Inc. v. Zhu, FA 1424557 (Nat. Arb. Forum, Feb. 29, 2012) (finding that use of a disputed domain name to host a website that contains viruses is not a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶4(c)(iii)).
Furthermore, Respondent’s use of a domain name that is confusingly similar to Complainant’s TWITCH and TWITCHTV trademarks to attract consumers to unrelated downloads or offers is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶4(c)(iii). See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum, Jan. 7, 2002) (finding no bona fide offering of goods or services where Respondent used Complainant’s mark without authorization to attract Internet users to its website); and Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (no rights or legitimate interest found where respondent did not apply for permission or license from complainant to use mark, nor was respondent commonly known by the mark).
For the above reasons, the Respondent has no rights or legitimate interests in the disputed domain name.
C. REGISTRATION AND USE IN BAD FAITH (ICANN Rule 3(b)(ix)(3) and ICANN Policy 4(a)(iii)):
Respondent registered the disputed domain name in bad faith.
At the time that Respondent registered the disputed domain name, Complainant’s Twitch service already had millions of users and was well-known. Moreover, Respondent’s landing page displays Complainant’s Twitch Logo and purports to be Complainant’s home page. Accordingly it is clear that Respondent registered the disputed domain name with knowledge of Complainant’s rights and intended to attract Internet users who mistype Complainant’s URL. Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights is evidence of bad faith registration and use with regard to Policy ¶4(a)(iii). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002)(finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); and Skype v. Caruso, FA1202001431445 (Nat. Arb. Forum May 4, 2012)(“Respondent’s actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name further evidences Respondent’s bad faith under Policy ¶4(a)(iii)”).
Furthermore, by incorporating Complainant’s famous trademark into the disputed domain, and using Complainant’s trademarks and logo at the corresponding web site, Respondent creates the false impression of a site that originates with or is sponsored by Complainant. “This is precisely the sort of conduct that falls under Policy ¶4(b)(iv) and thus evidences Respondent’s bad faith registration and use of the disputed domain names.” MetroPCS, Inc. v. Robertson, FA0609000809749 (Nat. Arb. Forum Nov. 13, 2006)(finding bad faith where the respondent’s web site offered high speed internet services while giving the false impression of being affiliated with the complainant). See also Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant); World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“the use of the logo on the web site to which wwfauction.com is redirected supports the conclusion that wwfauction.com is likely to confuse, and thus is being used in bad faith”); MidFirst Bank v. Smith, FA0907001274302 (Nat. Arb. Forum August 31, 2009)(use of the disputed domain name to pass oneself off as the Complainant constitutes bad faith registration and use of the domain name pursuant to Policy ¶4(b)(iv)); Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that respondent’s use of the disputed domain name misrepresent itself as a complainant supported a finding of bad faith); and Microsoft Corp. v. Pennisi, FA0908001280894 (Nat. Arb. Forum Sep. 29, 2009)(finding bad faith due in part to Respondent’s “repeated use of Complainant’s logo”).
Furthermore, Respondent registered the disputed domain two days after Complainant’s launch announcement for TwitchTV which received widespread mainstream news coverage. This reflects opportunistic bad faith. See Microsoft Corp. v. Bellamy Charles, FA 1448349 (Nat. Arb. Forum, July 23, 2012) (finding that Respondent’s registration of the disputed domain names on the same day of Complainant’s product announcement was bad faith registration and use under Policy ¶4(a)(iii); Microsoft Corp. v. Lee, FA 1426106 (Nat Arb. Forum March 6, 2012)(“It is also significant that Respondent registered the <halo4beta.net> domain name on June 15, 2011, only days after Complainant had publicly announced that it would be releasing HALO 4. This strongly suggests that Respondent’s registration and use of the domain name has been done in bad faith within the contemplation of Policy ¶4(a)(iii)”); Sun v. Color Vivo, FA 1282898 (Nat. Arb. Forum October 21, 2009)(finding that registration of <javastore.com> a little over a month after the complainant’s announcement of a similarly named service was evidence of “opportunistic bad faith under Policy ¶4(a)(iii)”); Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that a respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”); Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006)(“If there had been any doubt as to bad faith, the fact that registration was on the same day the news leaked about the merger, which was put in evidence, is a compelling indication of bad faith that respondent has to refute and which he has failed to do. The panel finds a negative inference from this.”); and Samsung Electronics Co., Ltd. v. Albery Estates, LLC, FA 1350673 (Nat. Arb. Forum Nov. 14, 2010)(finding bad faith where the disputed domain was registered following a leak, but before the product launch or issuance of any registrations).
Moreover, Respondent’s distribution of malware using the disputed domain is further evidence of bad faith use and registration under the Policy. See Google Inc. v. Petrovich, FA 1339345 (Nat. Arb. Forum Sept. 23, 2010) (finding bad faith registration and use of a contested domain name under Policy ¶4(b)(iv) where the domain name resolved to a website that distributed malware); Microsoft Corp. v. ABK et al., FA1211001473573 (Nat. Arb. Forum Jan 21, 2013)(“Respondent is also disrupting Complainant’s business by causing the public to associate Complainant’s [sic] with Respondent’s malware warnings, potentially malicious download links, and survey/offer schemes that contain no privacy policies and lack reliable contact information”); Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (use of the disputed domain name for fraudulent purposes constituted bad faith); and Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use where it fraudulently attempted to acquire the personal and financial information of Internet users through the use of a domain name confusingly similar to a competing mark).
Furthermore, by using Complainant’s TWITCH and TWITCHTV marks to promote Respondent’s downloads, Respondent has attempted to commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s trademark, and this conduct of diversion shows bad faith registration and use pursuant to Policy ¶4(b)(iv). See V Secret Catalogue, Inc. v. Bryant Little, FA 301728 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶4(b)(iv)”). See also Microsoft Corp. v. Lafont, FA1009001349611 (Nov. 9, 2009) (“intentional appropriation of Complainant’s mark to mislead Internet users and subsequently profit from them reveals bad faith registration and use under Policy ¶4(b)(iv)”); G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶4(b)(iv) where the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); and Crocs, Inc. v. Chustz, FA0706001002536 (Nat. Arb. Forum July 24, 2007) (finding bad faith where Respondent’s use of Complainant’s mark in its domain was “capitalizing on the illusion of direct affiliation with Complainant’s business and goodwill”)
Based on the foregoing, Respondent registered the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 uses the TWITCH and TWITCHTV marks in connection with its television-like platform and video content delivery service. Complainant registered the TWITCH and TWITCHTV marks with the United States Patent & Trademark Office (“USPTO”). Registrations with a governmental trademark authority are normally sufficient to demonstrate a complainant’s rights to a mark for purposes of Policy ¶4(a)(i). There is no reason to deviate from the normal practice in this case. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶4(a)(i)). Complainant has adequately proven it rights to the TWITCH and TWITCHTV marks.
Complainant claims the <twitchtv.net> domain name was chosen by Respondent because it is confusingly similar and easily mistaken for Complainant’s TWITCHTV trademark. It simply adds the “.net” gTLD to Complainant’s TWITCHTV mark. Adding a gTLD (or ccTLD) to a trademark does not adequately distinguish the resulting domain name from the trademark under Policy ¶4(a)(i). See Nike, Inc. v. Coleman, D2000-1120 (WIPO Nov. 6, 2000) (finding that the domain name <nike.net> is identical to the complainant’s famous NIKE mark). Therefore, the <twitchtv.net> domain name is confusingly similar to the TWITCHTV mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent has no rights or legitimate interests in the <twitchtv.net> domain name. Respondent is not commonly known by the <twitchtv.net> domain name. Respondent is not affiliated with Complainant in any way. Respondent is not licensed to use Complainant’s TWITCH or TWITCHTV marks. Absent any evidence to the contrary from Respondent, there is no evidence in the record to support a finding Respondent is commonly known by the disputed domain name pursuant to Policy ¶4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
Complainant claims Respondent is not making a bona fide offering of goods or services through the <twitchtv.net> domain name, nor a legitimate noncommercial or fair use. The <twitchtv.net> domain prominently displays Complainant’s TWITCH and TWITCHTV trademarks and the Twitch logo. The web site impersonates Complainant’s web site (at least to the casual observer). The web site directs visitors to install a “TwitchTV – Player Plugin.” Clicking on the link initiates a software download that generates various malware/malicious site warnings. Using the <twitchtv.net> domain name to surreptitiously install malware does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶4(c)(i) or Policy ¶4(c)(iii). See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Nat. Arb. Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)”).
Complainant claims using its Twitch logo and the TWITCH and TWITCHTV marks constitutes passing off. This Panel agrees under the circumstances of this case. See Microsoft Corp. v. li jiuliang, FA1300266 (Nat. Arb. Forum Feb. 11, 2010) (“Respondent’s attempt to pass itself off as Complainant by imitating Complainant’s official website . . . 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)”). Respondent’s attempt to pass itself off as Complainant to induce Internet users to download malicious software does not constitute a bona fide offering of goods or services under Policy ¶4(c)(i), or a legitimate noncommercial or fair use per Policy ¶4(c)(iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Respondent has created the false impression through the disputed domain name and website that Complainant is affiliated with the resolving content. Notably, Respondent has even copied Complainant’s Twitch logo and marks. As Respondent likely generates revenue from the misdirected traffic (even if only by getting more computers to download Respondent’s malware), this constitutes bad faith registration and use pursuant to Policy ¶4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”).
Respondent’s distribution of malware using the <twitchtv.net> domain name is evidence of bad faith use and registration under the Policy ¶4(a)(iii). See Google, Inc. v. Petrovich, FA 1339345 (Nat. Arb. Forum September 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith).
Complainant claims Respondent had actual knowledge of the TWITCH and TWITCHTV marks because Respondent incorporated the TWITCHTV mark and the Twitch logo into the <twitchtv.net> domain name and is evidence of bad faith under Policy ¶4(a)(iii). No other explanation seems possible. Respondent attempts to pass itself off as Complainant. Respondent uses Complainant’s marks and logo without explanation or remorse. Respondent’s web site bears at least a superficial similarity to Complainant’s site. All of this constitutes sufficient evidence to find bad faith registration and use pursuant to Policy ¶4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").
Respondent registered the <twitchtv.net> domain name two days after Complainant’s launch announcement for TwitchTV (which received widespread news coverage). This constitutes opportunistic bad faith. See Microsoft Corp. v. Bellamy Charles, FA 1448349 (Nat. Arb. Forum, July 23, 2012) (finding that Respondent’s registration of the disputed domain names on the same day of Complainant’s product announcement was bad faith registration and use under Policy ¶4(a)(iii)).
Finally, Respondent registered the disputed domain name using a WHOIS privacy service. This Panel has repeatedly held this raises the rebuttable presumption of bad faith in the commercial context. Respondent has done nothing to rebut this presumption or to suggest the context is other than commercial. Therefore, the Panel finds the disputed domain name was registered and used in bad faith under the penumbra of Policy ¶4(b).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <twitchtv.net> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, February 25, 2015
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