Twitch Interactive, Inc. v. Oleg Vakulov / Private Person
Claim Number: FA1802001772203
Complainant is Twitch Interactive, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Oleg Vakulov / Private Person (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <twitchgo.org>, registered with Registrar of Domain Names REG.RU LLC; and <twitchgo.pro> and <twitchplay.pro>, registered with Tucows Domains Inc.
The undersigned certifies that they have 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 February 15, 2018; the Forum received payment on February 15, 2018.
On February 19, 2018, Registrar of Domain Names REG.RU LLC and Tucows Domains Inc. confirmed by e-mail to the Forum that the <twitchgo.org>, <twitchgo.pro>, and <twitchplay.pro> domain names are registered with Registrar of Domain Names REG.RU LLC or Tucows Domains Inc. and that Respondent is the current registrant of the names. Registrar of Domain Names REG.RU LLC and Tucows Domains Inc. have verified that Respondent is bound by the respective Registrar of Domain Names REG.RU LLC and Tucows Domains Inc. registration agreements 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 February 19, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 12, 2018 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@twitchgo.org, postmaster@twitchgo.pro, postmaster@twitchplay.pro. Also on February 19, 2018, 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 March 14, 2018, 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, Twitch Interactive, Inc., operates the world’s leading social video platform and community for gamers. See Compl. Ex. B. In connection with this business, Complainant uses the TWITCH and TWITCHTV marks to offer and market its services. Complainant has rights in the TWITCH (e.g. Reg. No. 4,275,948, registered Jan. 15, 2013) and TWITCHTV (e.g. Reg. No. 4,087,877, registered Jan. 17, 2012) marks based upon its registration of the marks with the United States Patent and Trademark Office (“USPTO”). See Compl. Ex. E. Respondent’s <twitchgo.org>, <twitchgo.pro>, and <twitchplay.pro> domain names are confusingly similar to Complainant’s TWITCH mark, as each domain name incorporates the mark in its entirety, adding only the generic or descriptive terms “go” or “play,” and either the “.org” or “.pro” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <twitchgo.org>, <twitchgo.pro>, and <twitchplay.pro> domain names. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the TWITCH mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the domain names resolve to webpages calculated and likely to be mistaken for Complainant’s official TWITCH website, and are likely used to distribute malware. See Compl. Exs. F and G. Further, the <twitchplay.pro> domain name is not being actively used. See Compl. Ex. H.
Respondent registered and is using the <twitchgo.org>, <twitchgo.pro>, and <twitchplay.pro> domain names in bad faith. Respondent’s use of the <twitchgo.org> and <twitchgo.pro> domain names amount to attempts to pass off as Complainant in order to distribute malware are indicative of bad faith registration and use. Additionally, Respondent failed to make an active use of the <twitchplay.pro> domain name. Finally, Respondent clearly had actual knowledge of Complainant and its rights in the TWITCH mark at the time it registered and subsequently used the domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that operates the world’s leading social video platform and community for gamers.
2. Complainant has established its trademark rights in the TWITCH (e.g. Reg. No. 4,275,948, registered Jan. 15, 2013) and TWITCHTV (e.g. Reg. No. 4,087,877, registered Jan. 17, 2012) marks based upon its registration of the marks with the United States Patent and Trademark Office (“USPTO”).
3. Respondent registered the <twitchgo.org> domain name on January 26, 2018; the <twitchgo.pro> domain name on January 25, 2018; and the <twitchplay.pro> domain name on November 19, 2017.
4. Respondent has caused the twitchgo.org> and <twitchgo.pro> domain names to resolve to webpages calculated and likely to be mistaken for Complainant’s official TWITCH website, and are likely used to distribute malware. Further, the <twitchplay.pro> domain name is not being actively used.
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(f), 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 (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.”).
Preliminary Issue: Language of Proceeding
The Panel notes that the Registration Agreement relating to the domain names is written in Russian, thereby making the language of the proceedings to be Russian.
However, Complainant has alleged that because Respondent is conversant and proficient in English, the proceeding should be conducted in English. Complainant has alleged that because Respondent is conversant and proficient in English, the proceeding should be conducted in English. The Panel has the discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001 (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Complainant contends English is appropriate because (a) the at-issue domain names incorporate the English words “go” and “play”; (b) the domain names target the traditionally English language TLD’s “.org” and “.pro”; and (c) the domain names all resolve to pages that are fully in English. See Compl. Exs. A, F, and H. Therefore, Complainant, argues, Respondent has the ability to understand and communicate in English, such that conducting the proceedings in English will not prejudice Respondent.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering all of the circumstance of the present case, the Panel decides that the proceeding should be in English.
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant claims rights in the TWITCH mark based upon registration of the mark with the USPTO (e.g. Reg. No. 4,275,948, registered Jan. 15, 2013). See Compl. Ex. E. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel therefore holds that Complainant’s registration of the TWITCH mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s TWITCH mark. Complainant argues Respondent’s <twitchgo.org>, <twitchgo.pro>, and <twitchplay.pro> domain names are confusingly similar to the TWITCH mark, as each name contains the mark in its entirety, and adds the descriptive term “go” or “play”; and either the “.org” or “.pro” gTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Complainant further claims the added term “play” increases possible confusion, as it is directly associated with Complainant’s gaming-focused business. The Panel therefore determines Respondent’s domain names are confusingly similar to the TWITCH mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
Rights or Legitimate Interests
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
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 TWITCH mark and to
use it in its domain names, adding only the descriptive term “go” or “play”;
(b) Respondent registered the <twitchgo.org> domain name on January 26, 2018; the <twitchgo.pro> domain name on January 25, 2018; and the <twitchplay.pro> domain name on November 19, 2017;
(c) Respondent has caused the domain names to resolve to webpages calculated and likely to be mistaken for Complainant’s official TWITCH website, and are likely used to distribute malware. Further, the <twitchplay.pro> domain name is not being actively used
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <twitchgo.org>, <twitchgo.pro>, or <twitchplay.pro> domain names, as Respondent is not commonly known by any of the disputed domain names, nor has Complainant authorized Respondent to use the TWITCH mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record identifies the registrant of the at-issue domain name as “Oleg Vakulov / Private Person,” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by any of the at-issue domain names;
Complainant further argues Respondent’s lack of rights or legitimate interests in the <twitchgo.org> and <twitchgo.pro> domain names is demonstrated by its failure to use the names to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends instead that Respondent uses the names in an attempt to pass off as Complainant and distribute malware. Such use of a domain name is not indicative of rights or legitimate interests in the name per Policy ¶¶ 4(c)(i) or (iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”); see also Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017) (“Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii).”). Specifically, Complainant contends that the webpages resolving from the two domain names prominently display modified and unmodified TWITCH logos alongside purported video games. See Compl. Ex. F. Complainant further argues that the “Adobe Flash Player” download required to watch videos on Respondent’s website comprises malware. See Compl. Ex. G (Target URL for the “Adobe Flash Player” download, directing to bit.ly and drive.google.com, rather than adobe.com; and unsafe site warning for <twitchgo.org). The Panel agrees Respondent’s use of the <twitchgo.org> and <twitchgo.pro> domain names is not indicative of rights or legitimate interests in the names per Policy ¶¶ 4(c)(i) or (iii);
(f) Complainant also submits Respondent’s inactive holding of the <twitchplay.pro> domain name indicates it does not have rights or legitimate interests in the name. Inactive holding of a domain name does not demonstrate rights or legitimate interests in the name per Policy ¶¶ 4(c)(i) or (iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also Nutri/System IPHC, Inc. v. Usama Ayub, FA1725806 (Forum June 5, 2017) (holding that “Respondent does not use the <nutrisystemturbo.us> domain for a bona fide offering of goods or services because the domain name resolves to a website that currently is designated as ‘under construction.’”). Complainant contends Respondent’s domain name resolves to a landing page simply stating “Welcome! Site twitchplay.pro just created. Real content coming soon.” See Compl. Ex. H. The Panel therefore finds Respondent does not have rights or legitimate interests in the domain name per Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, 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 claims Respondent’s use of the <twitchgo.org> and <twitchgo.pro> domain names to pass off as Complainant in order to distribute malware demonstrates that Respondent registered and used the domain names in bad faith. Use of a domain name to create a false impression of affiliation with a complainant in order to distribute malicious software is behavior indicative of bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”); Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Forum June 9, 2015) (“In addition, Respondent’s undenied use of the websites resolving from the contested domain names to distribute malware and other malicious downloads further illustrates its bad faith in the registration and use of those domain names.”). The Panel recalls Complainant’s claims that the two domain names resolve to website which display Complainant’s mark and logo, and offer what appear to be downloads of malicious software. See Compl. Exs. F and G. The Panel therefore finds Respondent registered and used the domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Secondly, Complainant submits that Respondent’s failure to use the <twitchplay.pro> domain name is evidence of its bad faith. Inactive holding of a domain name can be evidence of bad faith under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The Panel recalls Complainant’s contention that the domain name does not resolve to an active website. See Compl. Ex. H. Complainant further argues that given Respondent’s use of the <twitchgo.org> and <twitchgo.pro> domain names indicates Respondent is using or intends to use the <twitchplay.pro> domain name to pass off as Complainant and/or distribute malware. The Panel therefore finds Respondent’s inactive holding of the <twitchplay.pro> domain name to be evidence of its bad faith per Policy ¶ 4(a)(iii).
Thirdly, Complainant contends that in light of the fame and notoriety of Complainant's TWITCH and TWITCHTV marks, it is inconceivable that Respondent could have registered the <twitchgo.org>, <twitchgo.pro>, and <twitchplay.pro> domain names without actual knowledge of Complainant's rights in the mark. The Panel here notes that any arguments of bad faith based on constructive notice are likely not to be successful, because prior UDRP decisions generally decline to find bad faith as a result of constructive knowledge. 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."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant further submits that Respondent’s use of two of the domain names to display TWITCH logos indicates it had actual knowledge of Complainant’s rights. The Panel agrees and finds Respondent had actual knowledge of Complainant’s rights in the mark and thus registered the domain names in bad faith.
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 TWITCH mark and in view of the conduct that Respondent engaged in when using them, Respondent registered and used the 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 <twitchgo.org>, <twitchgo.pro>, and <twitchplay.pro> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: March 15, 2018
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