Twitch Interactive, Inc. v. c/o WHOIStrustee.com Limited / Registrant of teitch.tv, twittch.tv, twitvh.tv
Claim Number: FA1503001611582
Complainant is Twitch Interactive, Inc. (“Complainant”), represented by Andrew VanArsdel of Seed Intellectual Property Law Group PLLC, Washington, USA. Respondent is c/o WHOIStrustee.com Limited / Registrant of teitch.tv, twittch.tv, twitvh.tv (“Respondent”), New Zealand.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <teitch.tv>, <twittch.tv> and <twitvh.tv>, registered with 1API GmbH.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 26, 2015; the Forum received payment on March 26, 2015.
On March 27, 2015, 1API GmbH confirmed by e-mail to the Forum that the <teitch.tv>, <twittch.tv> and <twitvh.tv> domain names are registered with 1API GmbH and that Respondent is the current registrant of the names. 1API GmbH has verified that Respondent is bound by the 1API GmbH 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 April 1, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 21, 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@teitch.tv, postmaster@twittch.tv, postmaster@twitvh.tv. Also on April 1, 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 Forum transmitted to the parties a Notification of Respondent Default.
On April 24, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
Complainant made the following contentions.
Complainant owns the TWITCHTV mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,087,877, registered Jan. 17, 2012). Complainant uses the TWITCHTV mark in connection with its live video platform and community for gamers. The <teitch.tv>, <twittch.tv> and <twitvh.tv> domain names are confusingly similar to Complainant’s TWITCHTV mark. The <teitch.tv> domain name misspells the TWITCHTV mark by changing the letter “w” to an “e,” and inserting a period between the two words in the registered mark. The <twittch.tv> domain name misspells the TWITCHTV mark by adding an extra “t” and inserting a period between the two words in the registered mark. The <twitvh.tv> domain name misspells the TWITCHTV mark by changing the letter “c” to a “v,” and inserting a period between the two words in the registered mark.
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, as Complainant has not authorized Respondent’s use of Complainant’s registered mark. Further, Respondent lacks rights or legitimate interests in the <teitch.tv>, <twittch.tv> and <twitvh.tv> domain names, as evidenced by Respondent’s failure to use the disputed domain names in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent’s disputed domain names feature competing hyperlinks on its resolving websites, diverting Internet users who are seeking Complainant’s website.
Respondent has engaged in bad faith registration and use of the <teitch.tv>, <twittch.tv> and <twitvh.tv> domain names. Respondent intentionally attracts, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant’s mark. Moreover, Respondent registered the disputed domain names with knowledge of Complainant’s rights in the TWITCHTV mark. Finally, Respondent has engaged in typosquatting, which is additional evidence of bad faith under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is engaged in the provision of a live video platform and community for gamers.
2. Complainant is the owner of the TWITCHTV mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,087,877, registered Jan. 17, 2012).
3. Respondent registered each of the disputed domain names on March 24, 2012. They feature competing hyperlinks on its resolving websites, diverting Internet users who are seeking Complainant’s website.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant asserts that it owns the TWITCHTV mark through its registration with the USPTO (e.g., Reg. No. 4,087,877, registered Jan. 17, 2012). Complainant states that it uses the TWITCHTV mark in connection with its live video platform and community for gamers. Prior panels have concluded that registration of a mark with a trademark authority is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i), even when Respondent does not reside in the country where the mark is registered. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Accordingly, even though Respondent reportedly resides in New Zealand, the Panel finds that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s TWITCHTV
trademark and to use it in its domain names, making only the minor spelling alterations referred to above and adding the period also referred to above;
(b) Respondent registered the disputed domain names on March 24, 2012 and has caused them to feature competing hyperlinks on their resolving websites, diverting Internet users who are seeking Complainant’s website;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant submits that Respondent is not commonly known by the disputed domain names, as Complainant has not authorized Respondent’s use of Complainant’s registered mark. Past panels have concluded that such contentions are sufficient to demonstrate that a respondent lacks rights to a disputed domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). The Panel finds that Respondent lacks rights to the disputed domain names under Policy ¶ 4(c)(ii)
(e) Further, Complainant argues that Respondent lacks rights or legitimate interests in the <teitch.tv>, <twittch.tv> and <twitvh.tv> domain names, as evidenced by Respondent’s failure to use the disputed domain names in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent’s disputed domain names feature competing hyperlinks on the resolving websites that redirect Internet users who are seeking Complainant’s website. The Panel notes that some of the featured hyperlinks include “Live Games Online” and “Watch Live Games Free Online.” See Compl., at Attached Ex. 6. Prior panels have found that a respondent’s use of competing hyperlinks is neither a bona fide offering of goods or services nor for a legitimate noncommercial or fair use. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). The Panel concludes that Respondent’s actions here are not a bona fide offering of goods or services under Policy ¶ 4(c)(i). The Panel further agrees that as Respondent here presumably attempts to profit through click-through fees, there can logically be no “noncommercial or fair use” pursuant to Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent intentionally attracts, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant’s mark. Complainant contends that Respondent presumably receives “click through” fees through the use of its disputed domain names. Prior panels have found that hyperlinks are typically associated with referral fees, and a respondent’s use is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). Thus, the Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iv).
Secondly, Complainant alleges that Respondent registered the disputed domain names with knowledge of Complainant’s rights in the TWITCHTV mark. Complainant contends that at the time of registration of the disputed domain names, Complainant’s service already had millions of users and was well-known. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame and popularity of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration”).
Thirdly, Complainant argues that Respondent has engaged in typosquatting, which is additional evidence of bad faith under Policy ¶ 4(a)(iii). Users here would merely need to mistype the TWITCHTV mark, either by adding an additional character or mistyping a single character, to be mistakenly directed to Respondent’s <teitch.tv>, <twittch.tv> and <twitvh.tv> websites rather than Complainant’s <twitch.tv> website. Past panels have found that respondents who take advantage of common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii). See Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”). The Panel accordingly finds that Respondent’s typosquatting conduct is additional evidence of bad faith pursuant to Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the TWITCHTV mark and in view of its conduct since the registration, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <teitch.tv>, <twittch.tv> and <twitvh.tv> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: May 2, 2015
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