Grand Idea Studio, Inc. v. Direct Privacy / Domain Name Proxy Service, Inc Privacy ID# 10473198
Claim Number: FA1511001647053
Complainant is Grand Idea Studio, Inc. (“Complainant”), represented by Joe Grand, Oregon, United States. Respondent is Direct Privacy / Domain Name Proxy Service, Inc Privacy ID# 10473198 (“Respondent”), Louisiana, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pixelspast.com>, registered with DNC Holdings, 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 Forum electronically on November 15, 2015; the Forum received payment on November 15, 2015.
On November 17, 2015, DNC Holdings, Inc. confirmed by e-mail to the Forum that the <pixelspast.com> domain name is registered with DNC Holdings, Inc. and that Respondent is the current registrant of the name. DNC Holdings, Inc. has verified that Respondent is bound by the DNC Holdings, Inc. 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 November 23, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 14, 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@pixelspast.com. Also on November 23, 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 December 23, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant uses the PIXELS PAST mark in connection with its video game and video game accessory designs and online sales. Complainant owns common law rights in the mark that predate Respondent’s registration of the disputed domain name.
2. The <pixelspast.com> domain name is confusingly similar to Complainant’s mark as it fully incorporates the PIXELS PAST mark, eliminates the spacing between the words of Complainant’s mark, and adds the generic top-level domain (“gTLD”) “.com.”
3. Respondent has no rights or legitimate interests in the <pixelspast.com> domain name. First, Respondent is not commonly known by the domain name or any variant of Complainant’s mark. Second, Respondent is not licensed or authorized to use Complainant’s mark.
4. Finally, Respondent is not making a bona fide offering of goods or services through the <pixelspast.com> domain name or a legitimate noncommercial or fair use. Rather, Respondent’s domain name resolves to a website with links to other adult-oriented websites.
5. Respondent has registered and is using the <pixelspast.com> domain name in bad faith. Complainant accidentally allowed the domain name to lapse, and Respondent registered it just two days after the 30-day grace period provided by the domain registrar expired. Complainant registered the <pixelspast.com> domain name on May 21, 2002, and that it lapsed on May 21, 2011. The domain name was acquired by Respondent on June 23, 2011.
6. As of November 2015, Respondent’s domain name resolved to a more generic layout, but still included pornographic links along the side navigation bar.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the PIXELS PAST mark. Respondent’s domain name is confusingly similar to Complainant’s mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <pixelspast.com> domain name, and that Respondent registered and uses the domain name 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.”).
Complainant uses the PIXELS PAST mark in connection with its video game and video game accessory designs and online sales. The record reflects that Complainant used the mark as early as October 1, 2002. Based on Complainant’s unrefuted evidence, its extensive historical and continued use of the mark has established secondary meaning in the mark and therefore common law rights in the PIXELS PAST mark exist for the purposes of this domain name dispute. See AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (finding that the manner and amount of advertising done to promote a mark may suggest secondary meaning).
Complainant argues that the <pixelspast.com> domain name is confusingly similar to Complainant’s mark as it fully incorporates the PIXELS PAST mark, eliminates the spacing between the words of Complainant’s mark, and adds the gTLD “.com.” The elimination of spacing between the words of a complainant’s mark and the affixation of a gTLD do not adequately distinguish a disputed domain name from a complainant’s mark pursuant to Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under 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 name. 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 <pixelspast.com> domain name. Complainant has established that Respondent is not commonly known by the <pixelspast.com> domain name or any variant of Complainant’s mark. Further, Respondent has no license or authorization to use Complainant’s mark. The WHOIS information merely lists “Direct Privacy / Domain Name Proxy Service, Inc Privacy ID# 10473198” as registrant. Thus, the Panel finds that Respondent is not commonly known by the <pixelspast.com> domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. As of the filing of the Complaint, Respondent’s domain name resolved to a website with the heading “Pixels Past Game Development with text describing Game Design, Understanding Game Design, What Makes Game Design Vital?”, etc. The site also contained links to various adult websites. These references do not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of the <targetstore.net> domain name to redirect Internet users to an adult-oriented website did not equate to a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii)). Accordingly, the Panel finds Respondent is not using the <pixelspast.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant has provided evidence that the resolving website from Respondent’s domain name includes links to pornographic websites. This has been found to amount to bad faith registration and use under Policy ¶ 4(b)(iv). See Google Inc. v. Bassano, FA 232958 (Nat. Arb. Forum Mar. 8, 2004) (holding that the respondent’s use of the <googlesex.info> domain name to intentionally attract Internet users to a website featuring adult-oriented content constituted bad faith registration and use under Policy ¶ 4(b)(iv)).
Complainant argues that Respondent’s acquisition of the <pixelspast.com> domain name just two days after Complainant’s 30-day grace period provided by the domain registrar expired is evidence of opportunistic bad faith under Policy ¶ 4(a)(iii). The timing of a respondent’s acquisition of a domain name has been found to indicate opportunistic registration. See 3M Co. v. Jeong, FA 505494 (Nat. Arb. Forum Aug. 11, 2005) (“Respondent’s registration of the disputed domain name the same day that Complainant issued the press release regarding the acquisition constitutes opportunistic bad faith.”). Therefore, the Panel finds that Respondent registered the disputed domain name in bad faith per 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 <pixelspast.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 4, 2016
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