Twitch Interactive, Inc. v. Christopher Bonk
Claim Number: FA1711001757185
Complainant is Twitch Interactive, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Christopher Bonk (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <twitchswag.com>, registered with Google 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.
James Bridgeman as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 3, 2017; the Forum received payment on November 3, 2017.
On November 6, 2017, Google Inc. confirmed by e-mail to the Forum that the <twitchswag.com> domain name is registered with Google Inc. and that Respondent is the current registrant of the name. Google Inc. has verified that Respondent is bound by the Google 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 7, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 27, 2017 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@twitchswag.com. Also on November 7, 2017, 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.
A timely Response was received and determined to be complete on November 10, 2017.
On November 14, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant submits that it operates an online social video platform and community for gamers which grew rapidly in popularity immediately on its launch in 2012. Its website at <http://www.twitch.tv> has grown to become the 16th most viewed site in the United States, the 44th 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. In addition to its online platform, Complainant has expanded its business to include the sale of merchandise, including clothing bearing the TWITCH logos with its distinctive purple color scheme, through authorized outlets including TwitchCon and Amazon.com.
Relying on its registered trademarks mentioned below, and its trademark rights at common law acquired by use of the TWITCH mark online and otherwise since its public launch in June 2012, Complainant submits that the disputed domain name <twitchswag.com> is confusingly similar to its TWITCH mark as it incorporates the registered TWITCH trademark in its entirety, adding only the term “swag” and the top level domain name <.com> extension.
“Swag” is slang for merchandise (such as clothing) distributed as part of the promotion of a product or company.
Complainant submits that it is well established that the addition of a generic term to Complainant’s mark, especially a term associated with merchandise distributed by Complainant at its conventions and elsewhere, is not sufficient to avoid confusion. In support of this assertion, Complainant cites inter alia the decision of the panel in American Express Co. v. MustNeed.com, FA0404000257901 (Forum June 7, 2004) (“The mere addition of a generic or descriptive word to a registered mark does not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i)”).
Complainant argues that Respondent has no rights or legitimate interest in the disputed domain name because Respondent has not used the disputed domain name in connection with any bona fide offering of goods or services; Respondent is not making a noncommercial fair use of the disputed domain name; and Respondent has never been legitimately known as, or referred to as TWITCH, TWITCHTV or any variation thereof. Furthermore Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services.
The landing page to which the disputed domain name resolves is a storefront that offers TWITCH branded clothing and that is saturated with Complainant’s TWITCH logos giving the impression that it is an official TWITCH retail store. Respondent makes no effort whatsoever to dispel this impression but instead he adopts Complainant’s purple color scheme and the copyright notice on his website states simply “Copyright 2017 Twitch Swag.” Respondent’s payment page also displays Complainant’s logo. Respondent’s Twitter feed is also saturated with Complainant’s logos, attempts to portray Respondent as an official source of Complainant’s merchandise, and makes no effort to distinguish Respondent from Complainant.
Complainant submits that Respondent’s adoption of Complainant’s name, color scheme and logos in this manner is calculated to and likely to confuse and mislead the public as to Respondent’s relationship with Complainant and constitutes passing off. Arguing that this is not a fair, nominative or otherwise legitimate use Complainant cites, inter alia, the decision in Microsoft Corp. v. lijiuliang, FA0912001300266 (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)”).
Moreover, Complainant submits that Respondent’s use of the disputed domain name which is confusingly similar to Complainant’s TWITCH trademark in order to promote competing merchandise stores is not a legitimate use.
Complainant submits that the disputed domain name was registered and is being used in bad faith, arguing that at the time the disputed domain name was registered, Complainant’s TWITCH and TWITCHTV trademarks had become famous. Since the disputed domain name contains the TWITCH trademark in its entirety, and the landing page expressly refers to Complainant and displays Complainant’s TWITCH logos, it is clear that Respondent registered the disputed domain name with knowledge of Complainant’s rights, and the intention of creating an association with Complainant and its products and services.
Complainant argues that the registration of a disputed domain name with actual knowledge of Complainant’s rights is evidence of bad faith registration and use with regard to Policy ¶ 4(a)(iii); citing inter alia the decision of the panel in 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”).
Complainant additionally submits that by incorporating its well-known TWITCH trademark into the disputed domain name, and by using the TWITCH mark, Complainant’s color scheme and Complainant’s logos to brand and promote its services, Respondent creates the false impression that its services are offered or 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 (Forum Nov. 13, 2006) (finding bad faith where the respondent’s web site gave the false impression of being affiliated with the complainant).
Furthermore, Complainant submits that Respondent is using a domain name confusingly similar to Complainant’s TWITCH trademark in order to mislead consumers and attract traffic to its retail clothing stores. As such, Respondent has attempted to commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s trademarks, and this conduct of diversion shows bad faith registration and use pursuant to Policy ¶ 4(b)(iv). Citing for example the decision in V Secret Catalogue, Inc. v. Bryant Little, FA 301728 (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)”).
Moreover, Complainant argues that Respondent is promoting competing merchandise stores using a domain name confusingly similar to Complainant’s TWITCH trademark and is thereby diverting and disrupting Complainant’s business. In support of this assertion Respondent cites a number of panel decisions including Instron Corp. v. Kaner, FA0608000768859 (Forum Sep. 21, 2006) (use of disputed domain name to operate a competing website constitutes bad faith according to Policy ¶ 4(b)(iii)).
Complainant also asks this Panel to note that Respondent registered the disputed domain name on October 11, 2017, just days ahead of TwitchCon, in order to capitalize on consumer interest in Complainant’s genuine retail outlets and submits that this also reflects opportunistic bad faith.
Complainant has provided evidence that it sent Respondent a demand letter on October 18, 2017. When Respondent failed to respond, Complainant filed a takedown notice with Shopify and Respondent’s site was taken down, only to be replaced with a new infringing store on Bonanza, abruptly switching service providers rather than responding to Complainant’s demand letter, which Complainant furthermore submits is evidence of bad faith.
Finally, Complainant argues that in the commercial context of this Complaint, Respondent’s use of a privacy shield for a commercial web site raises the rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut this presumption and that alone justifies a finding of bad faith. Citing Microsoft Corp. and Skype v. Contact Privacy Inc. Customer 0126766269, FA1303001491615 (Forum May 6, 2013)
B. Respondent
Respondent denies that the disputed domain name <twitchswag.com> is confusing with Complainant’s <twitch.tv> domain which is hosted at a different TLD, namely <.tv>
Additionally “swag” is not a reserved word and Complainant has never registered a domain name for anything related to SWAG.
Respondent submits that he clearly states on his website that he is a “huge supporter (“Streamer”) and fan of the Complainants websites. The merchandise resold was fairly acquired from supporters of TWITCH through relationships he established on Complainant’s website and by attending various Streamer conventions such as TwitchCon. He states that “[t]he “Swag” offered on Respondent’s website is sold at cost, no profit is made. The driving purpose behind the website was the lack of options for Twitch Streamers “Partners” to acquire legitimate (sic)”
Respondent asserts that all of the people who have bought merchandise from his website were extremely satisfied and Respondent took pride in interacting and improving other TWITCH streamers’ experiences.
Respondent denies that the disputed domain name <twitchswag.com> was registered with malicious intent, to confuse, redirect users, or make financial gain, nor has he attempted selling, squatting or transferring the disputed domain name to Complainant. He further denies that there is any confusion or misdirection occurring because Complainant has no comparable website and Respondent’s site is simply a redirection to a booth on Bonanza.com.
Respondent also denies that he made any attempts to hide or unfaithfully hide his identity and asserts that when registering the domain as he used his “real information.”
In conclusion Respondent submits that Complainant’s claim is merely a copy paste cookie cutter legal submission intended to bully and scare him into legal submission. Respondent states that he has no resources to hire experienced legal aid and is simply “a diehard Twitch fan who wants to connect with other Twitch streamers.”
Complainant operates an online social video platform and community for gamers and has used the TWITCH trademark in commerce in relation to its Internet based service since at least June 5, 2012 and is the owner of a portfolio of trademarks for the TWITCH and TWITCHTV trademarks including United States Registered Trademark TWITCH, registration number 4.275 948, registered on January 15, 2013 for goods and services in international classes 9, 38 and 45.
Since its launch, Complainant’s website has grown in popularity and is now one of the most popular and best known websites for gamers in the United States.
The disputed domain name was created on October 11, 2017 in the name of a privacy service and Respondent was disclosed to be the registrant in the course of this Administrative Proceeding.
Respondent, who claims to be a fan of Complainant’s website, has established an online store to which the disputed domain name resolves on which he sells merchandise bearing Complainant’s TWITCH trademark and logo.
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.
The disputed domain name consists of Complainant’s TWITCH trademark in its entirety in combination with the word “swag” which is a slang word for merchandise.
This Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark because the word “TWITCH” is the dominant element in the disputed domain name and the addition of the descriptive element “swag” does not serve to distinguish the disputed domain name in any way. The generic top level <.com> extension may be ignored for the purposes of comparison in the present Complaint, notwithstanding the contrary submissions of Respondent, because it does not reduce the confusingly similar character of the disputed domain name.
Complainant has therefore succeeded in the first element of the test in to Policy ¶ 4(a)(i).
Respondent claims no connection whatsoever with Complainant except for his interest in Complainant’s website and the users of Complainant’s services. Nor does he assert that he has ever been known by the name TWITCH or any similar name.
His denial that he is making any commercial gain from the goods and his suggestion that he has legitimately established a fan site is improbable, as the content of his website is focused on the sale of merchandise. It is implicit in his submissions that he registered the disputed domain name with Complainant in mind in order to sell merchandise relating to Complainant.
It is well established under the Policy that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interest in a disputed domain name, as Complainant has done in these present proceedings, the burden of production shifts to the respondent.
There is no evidence that Respondent is a reseller of Complainant’s legitimate products as he appears to assert. Even if he were a reseller of legitimate goods, to be “bona fide,” to be a defense under the Policy, the offering must meet several requirements, including the requirement that the web site or location to which the disputed domain name resolves must accurately disclose the registrant's relationship with the trademark owner. The website or location may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents. These principles have become well established and accepted by panelists since the decision in Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001-0903 in which the panel cited earlier decisions of Houghton Mifflin Co. v. Weatherman, Inc., WIPO Case No. D2001-0211 (WIPO April 25, 2001) (no bona fide offering where website's use of Complainant's logo, and lack of any disclaimer, suggested that website was the official Curious George website); R.T. Quaife Engineering v. Luton, WIPO Case No. D2000-1201 (WIPO Nov. 14, 2000) (no bona fide offering because domain name <quaifeusa.com> improperly suggested that the reflected site was the official U.S. website for Quaife, an English company; moreover, respondent's deceptive communications with inquiring consumers supported a finding of no legitimate interest); Easy Heat, Inc. v. Shelter Prods., WIPO Case No. D2001-0344 (WIPO June 14, 2001) (no bona fide use when respondent suggested that it was the manufacturer of complainant's products).
The presentation and content of Respondent’s website give the impression that it is associated with Complainant and no effort is made to avoid the creation of such impression.
In the circumstances this Panel finds that Respondent has no rights or legitimate interest in the disputed domain name and Complainant has succeeded in the second element of the test in to Policy ¶ 4(a)(ii).
Complainant has established a significant web-presence and reputation for its website and trademarks TWITCH and TWITCHTV since June 5, 2012 and has owned the United States Registered Trademark TWITCH, since January 15, 2013. The disputed domain name was not created until October 11, 2017.
Respondent acknowledges that the disputed domain name was registered with Complainant in mind with an intention of developing an online store selling merchandise related to Complainant’s business.
Having reviewed the Parties’ submissions and the evidence adduced, this Panel is satisfied on the balance of probabilities, Respondent registered and is using the disputed domain name to take predatory advantage of Complainant’s goodwill and reputation in order to attract Internet users to his website for commercial gain. He has intentionally chosen a domain name which is confusingly similar to Complainant’s TWITCH mark; he used the disputed domain name to resolve to an online retail shop front service provider Shopify and subsequently Bonanza offering goods such as “Original Twitch Hoodie”, “Twitch Hoodie- Developers Edition – Limited”, “Original Twitch Hoodie Purple”.
When he was served with a cease and desist letter and his online shop was taken down by Shopify when it was served with a take-down notice, he switched to the Bonanza shopfront rather than engaging with Complainant. This indicates a bad faith intention to continue to take predatory advantage of Complainant’s goodwill in order to sell his merchandise for commercial gain.
This Panel finds therefore that on the balance of probabilities, Respondent has registered and is using the disputed domain name to take predatory advantage of Complainant’s goodwill and reputation by intentionally attempting to attract, for commercial gain, Internet users to on-line locations, by creating a likelihood of confusion with the Complainant's TWITCH mark as to the source, sponsorship, affiliation, or endorsement of the products that Respondent is offering for sale.
Complainant has therefore also succeeded in the third and final element of the test in to Policy ¶ 4(a)(iii) and is entitled to the reliefs sought.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <twitchswag.com> domain name be TRANSFERRED from Respondent to Complainant.
_____________________________
James Bridgeman as Panelist
Dated: November 22, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page