Twitch Interactive, Inc. v. he shan
Claim Number: FA1506001626563
Complainant is Twitch Interactive, Inc. (“Complainant”), represented by Kevin Costanza of Seed Intellectual Property Law Group PLLC, Washington, USA. Respondent is he shan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <twicth.tv>('the Domain Name') , registered with 1API GmbH.
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.
<<Dawn Osborne of Palmer Biggs Legal>> as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 29, 2015; the Forum received payment on June 29, 2015.
On July 1, 2015, 1API GmbH confirmed by e-mail to the Forum that the <twicth.tv> domain name is registered with 1API GmbH and that Respondent is the current registrant of the name. 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 July 1, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 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@twicth.tv. Also on July 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 July 29, 2015 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs Legal 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant's contentions can be summarised as follows:
The Complainant operates Twitch the world's leading live video platform and community for gamers.
The Twitch TV service was launched in July 2011. By end of one month in July 2011 the twitch.tv web site had over 8 million unique visitors per month. Today more than 60 million visitors gather on Twitch every month to watch and talk about video games. Through longstanding use the TWITCH and TWITCHTV marks have become well known.
Complainant has registered trade marks for TWITCH and TWITCH TV in various countries including the USA.
The Domain Name is virtually identical to the Complainant's registered trade marks TWITCH and TWITCH TV save for switching the 't' and 'c' in twitch.tv. Indeed it has been previously held that twicth.tv should be transferred to the holder of the TWITCH trade mark.
Respondent has not used the Domain Name in connection with a bona fide offering of goods and services. Respondent hosts a pay per click web site at the subject domain name and many of the links resolve further to links that lead to web sites providing goods/services competitive with Complainant's businesses. Respondent is not making a non-commercial fair use of the Domain Name and has never been known as 'Twitch' or 'Twitch.tv' or any variation thereof. Respondent is not affiliated with or connected or licensed in any way by the Complainant. Use for pay per click is not a bona fide offering of goods and services. As such the Respondent does not have a legitimate interest in the Domain Names.
At the time the Respondent registered the Domain Name the Complainant’s service already had millions of users and was well known. It is clear that the Respondent knew of the Complainant and was seeking to attract Internet users who mistype the Complainant’s URL. Previous panels have held that typo squatting constitutes bad faith for the purposes of the Policy.
Respondent was already ordered to transfer the Domain Name to the Complainant but failed to do so.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Twitch TV service was launched in July 2011. By the end of one month in July 2011 the twitch.tv web site had over 8 million unique visitors per month. Today more than 60 million visitors gather on Twitch every month to watch and talk about video games. The Complainant has registered trade marks for TWITCH and TWITCH TV in various countries including the USA. TWITCH was filed with the USPTO September 12, 2012 and registered January 15, 2013. TWITCH TV was filed with the USPTO June 15, 2011 and registered January 17, 2012.
The Domain Name was registered October 26, 2012. It has been used to point to third party pay per click links that compete with the Complainant.
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.”).
Identical or Confusingly Similar
The Complainant has registered trade marks for TWITCH and TWITCHTV in various countries including the USA. TWITCH was filed with the USPTO September 12, 2012 and registered January 15, 2013. TWITCHTV was filed with the USPTO June 15, 2011 and registered January 17, 2012). Its service was launched in 2011 and enjoyed almost immediate phenomenal success. It has, therefore, also owned relevant common law rights in the TWITCH and TWITCHTV marks since that time.
The Domain Name was registered in October 2012, sometime after the Complainant's business was already a commercial success under the TWITCHTV name and equates to a misspelling of the Complainant's TWITCH and TWITCHTV mark in the country code top level domain .tv.
The Panellist agrees with the Complainant that the Domain Name is confusingly similar to the Complainant's marks as it merely switches the t and c in the Complainant's marks. By registering in the .tv domain the Respondent has also effectively placed a period in between the TWITCH and TV elements of the Complainant's TWITCHTV mark. Past panels have found that a simple and common misspelling of the Complainant's mark and the addition of punctuation does not negate a finding of confusing similarity. See Intelius Inc. v Hyn, FA 703175 (Nat. Arb. Forum. July 5, 2006) (finding intellus.com confusingly similar to the complainant’s intelius mark because the domain name differed from the mark by one letter and was visually similar) Further, Mrs World Pageants Inc. v Crown Promotions, FA 94321 (Nat. Arb. Forum Apr 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and a mark).
Accordingly, the Panellist holds that the Domain Name is confusingly similar for the purposes of the Policy with a mark in which the Complainant has rights.
As such the Panellist holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Complainant maintains that the Respondent is not commonly known by the Domain Name, is not using it to offer bona fide goods and services and is not making a legitimate non-commercial or fair use of the name. The Complainant contends that the site is set up for commercial benefit using the latter's intellectual property rights to make a profit.
Prior panels have found that use of a confusingly similar domain name to re-route Internet users to a web page displaying unrelated third party links cannot consist of a bona fide offering or a legitimate non-commercial or fair use. See Constellation Wines US Inc v Tex Int'l Prop Assocs, FA 948436 (Nat. Arb. Forum May 8, 2007((finding that the respondent had no rights or legitimate interests under Policy 4 (c)(i) or 4(c)(iii)by using the disputed domain name to operate a web site featuring links to goods and services unrelated to the Complainant.
Additionally the Domain Name appears to be a typo squatted version of the Complainant's domain name chosen in the hope that a customer might mistakenly reach Respondent's web site by mistyping the Complainant’s URL. See Amazon.com, Inc. v JJ Domains, FA 514939 (Nat Arb. Forum Sept 2, 2005)(respondent lacks rights and legitimate interests in the www-amazon.com domain name because the addition of 'www-' constitutes typo squatting)
As such the Panellists find that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Complainant also alleges that the Respondent’s use of the site is commercial and he is using it to make profit from a web site displaying third party links in a confusing manner. As held above the Panel believes that the use in confusing in that visitors to the site might reasonably believe it is connected to or approved by the Complainant offering links to goods and services under a Domain Name which is a typo squatted version of the Complainant’s domain name. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site. (See Allianz of Am. v Bond, FA680624 (Nat. Arb Forum June 2, 2006)(finding bad faith registrations and use under Policy 4 (b) (iv) where the respondent was diverting Internet users searching for the complainant to its own web site and likely profiting).
Finally, typo squatting itself is evidence of relevant bad faith registration and use. See Diners Club int'l Ltd. v Domain Admin ****** It's all in the name ******, FA 156839 (Nat. Arb. Forum June 23, 2003) (registering a domain name which entirely incorporates a typosquatting version of the Complainant’s URL evidences not only actual knowledge of a trade mark holder's rights in that mark but an intent to ensnare Internet users attempting to reach Complainant's URL')
As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <twicth.tv> domain name be TRANSFERRED from Respondent to Complainant.
<<Dawn Osborne>>, Panelist
Dated: August 12, 2015
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