Digital Interactive Systems Corporation v.
Christian W c/o KBIG 104
Claim Number: FA0605000708968
PARTIES
Complainant is Digital Interactive Systems Corporation, (“Complainant”), 444 W. Ocean Blvd., Suite 1070, Long Beach, CA 90802. Respondent is Christian W c/o KBIG 104 (“Respondent”), 1160 Encino Dr., San Marino, CA 91108.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mygames.com>,
registered with Bulkregister, Llc.
PANEL
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.
Richard Hill as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 18, 2006; the National Arbitration Forum received a hard
copy of the Complaint on May 18, 2006.
On May 22, 2006, Bulkregister, Llc. confirmed by e-mail to the National
Arbitration Forum that the <mygames.com>
domain name is registered with Bulkregister, Llc. and that the Respondent is
the current registrant of the name. Bulkregister,
Llc. has verified that Respondent is bound by the Bulkregister, Llc.
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute
Resolution Policy (the “Policy”).
On May 31, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of June 20, 2006 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts, and to postmaster@mygames.com by e-mail.
A timely Response was received and determined to be complete on June
19, 2006.
On June 21, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Richard Hill as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
According to
Complainant, the disputed domain name is identical and indistinguishable from
its MY GAMES trademark. Complainant has
been using the MY GAMES trademark for over one year in the company’s product,
marketing materials, press, etc.
Complainant alleges that Respondent is transacting no commerce on the
website. Respondent has transacted no other commerce using the disputed domain
name.
Further, according to the Complainant, Respondent registered the
disputed domain name under the pretense that he would be developing a gaming
website. Although Respondent has owned the domain for a number of years, there
is no commerce being transacted on the website, and his claim that development
is in progress is clearly a mere attempt to avoid being characterized as a
cyber squatter.
Complainant states that although Respondent claims that he is not
actively seeking to sell the domain, he states that he welcomes offers for its
purchase.
B. Respondent
According to Respondent, the disputed domain name, while textually
identical, is not “confusingly similar” to the Complainant’s trademark MY GAMES
because it is a common phrase.
The
Respondent’s ownership of the disputed domain name (which dates to October 3,
2000) predates the registration of the Complainant’s trademark (filed at the
United States Patent and Trademark Office on January 13, 2005) by over four
years.
Respondent alleges that its use of the disputed domain name is in
connection with a bona fide offering of service. The domain was
registered in October 2000. Since that time, the domain has been providing
email services (POP/SMTP/Distribution lists) to hundreds of users. These
services include E-mail accounts and global mailing lists amongst its members.
It is primarily in use amongst the professional radio broadcast industry to
share ideas and contacts for on-air games, contests and prizes.
According to Respondent, on approximately April 28, 2006, its Internet
servers were illegally accessed by a hacker. Several of the Respondent’s domain
names and E-mail addresses were hijacked and fake web sites were created by the
hacker in what appeared to be an attempt to sell fraudulently the domain names
to unwitting buyers. The disputed
domain name was one of these domain names hacked. The hijack was not limited to
domains owned by the Respondent; other customers on the same server were also
affected.
Respondent states that it removed these pages upon being notified of
their existence. As previously stated,
the disputed domain name is used for E-mail services relating to radio on-air
games, and does not currently have, and has never in the past had a web
presence. The Respondent has no desire
to sell, lease or transfer the disputed domain name.
FINDINGS
Respondent registered the disputed domain
name in October 2000.
Respondent has been using the disputed domain
name to provide E-mail services.
Complainant registered its mark MY GAMES in
January 2005 and does not claim any prior usage of that mark.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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.
It is obvious that the disputed domain name is
identical to the Complainant’s mark MY GAMES.
Respondent has provided sufficient evidence
to convince the Panel that he is using the disputed domain name to provide
E-mail services, and that this establishes rights in the disputed domain name
in accordance with ¶ 4(c)(i) of the Policy.
See, e.g., InfoSpace,
Inc. v. Lemieux, D2000-1476 (WIPO Jan. 18, 2001) (finding that the use of
the <sportsinfospace.com> domain name was a bona fide offering of
goods or services where the respondent registered the domain solely for the
purpose of offering season tickets to baseball games and restricted the use to
that extent); see also Modern Props, Inc. v. Wallis, FA 152458 (Nat.
Arb. Forum June 2, 2003) (finding that the respondent’s operation of a bona
fide business of online prop rentals for over two years was evidence that
the respondent had rights or legitimate interests in the disputed domain name).
Complainant alleges that Respondent offers to
sell the disputed domain name. Respondent
denies this allegation. Although the
point is moot in the context of the present case, the Panel recalls that
offering a domain name for sale is, absent other factors, a legitimate use of a
domain name. As the Panel stated in Manchester Airport PLC v. Club Club Limited, D2000-0638 (WIPO Aug 21, 2000):
It is not contested that respondent has attempted to sell the contested domain name to the respondent for an amount well in excess of the registration fees.
But selling a domain name is not per se prohibited by the ICANN Policy (nor is it illegal or even, in a capitalist system, ethically reprehensible). Selling of domain names is prohibited by the ICANN Policy only if the other elements of the ICANN Policy are also violated, namely trademark infringement and lack of legitimate interest.
The Panel holds that Respondent has rights in
the disputed domain name.
Since the Respondent registered the disputed domain name four years before the Complainant obtained its mark, and since the Complainant’s mark is composed of two common words, it seems obvious that there is no reason to believe that the Respondent acted in bad faith. Indeed, the case law on this point is clear. See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark); see also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where the respondent registered the domain name in question before application and commencement of use of the trademark by the complainant).
The Panel holds
that Respondent did not register or use the disputed domain name in bad faith.
DECISION
For the reasons given above, the Panel concludes that relief shall be DENIED.
The Complaint is dismissed.
Richard Hill, Panelist
Dated: July 3, 2006
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