Tetris Holding, LLC v. ID Prof BV a/k/a S. Blom
Claim Number: FA0606000732840
Complainant is Tetris Holding, LLC (“Complainant”), represented by Jeanne Hamburg, of Norris, McLaughlin & Marcus, P.A., 875 Third Avenue, New York, NY 10022. Respondent is ID Prof BV a/k/a S. Blom (“Respondent”), Churchillstraat 75, Barneveld, Gelderland 3772KV NL.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <tetris.info> and <crazytetris.com>, registered with Tucows 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.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 15, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 19, 2006.
On June 15, 2006, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <tetris.info> and <crazytetris.com> domain names are registered with Tucows Inc. and that Respondent is the current registrant of the names. Tucows Inc. has verified that Respondent is bound by the Tucows Inc. 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 June 26, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 17, 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@tetris.info and postmaster@crazytetris.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 20, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.), as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <tetris.info> and <crazytetris.com> domain names are confusingly similar to Complainant’s TETRIS mark.
2. Respondent does not have any rights or legitimate interests in the <tetris.info> and <crazytetris.com> domain names.
3. Respondent registered and used the <tetris.info> and <crazytetris.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Tetris
Holding, LLC, is the owner of the Tetris video game. Complainant has numerous licensees who sell its Tetris game in
several formats worldwide. Complainant
has used its TETRIS mark since 1989, and holds trademark registrations in over
50 countries for the TETRIS mark, including with the United States Patent and
Trademark Office (“USPTO”) (Reg. No. 1,657,499 issued September 17, 1991).
Respondent and/or
its predecessors registered the <tetris.info> and <crazytetris.com>
domain names on September 21, 2001 and
October 8, 2002 respectively. The <tetris.info>
domain name resolves to a pop-up website that displays a game known
as “Crazy Tetris” as well as the host site for the game, located at the
<555games.com> domain name. The <crazytetris.com>
domain name resolves to a website that
displays the “Crazy Tetris” game. The
“Crazy Tetris” game is a unauthorized version of Complainant’s game that is
distributed under the TETRIS mark.
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."
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.”).
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 Panel finds that Complainant’s federal trademark
registration with the USPTO sufficiently establishes Complainant’s rights in
the TETRIS mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”); see also Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal
trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Respondent’s <tetris.info>
domain name is identical to Complainant’s TETRIS mark under Policy ¶
4(a)(i). The disputed domain name
contains Complainant’s entire mark with the addition of a generic top-level
domain name (“gTLD”) which fails to render the disputed domain name
sufficiently unique from Complainant’s mark under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name
such as “.net” or “.com” does not affect the domain name for the purpose of
determining whether it is identical or confusingly similar); see also
Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May
27, 2003) (“The addition of a top-level domain is irrelevant when establishing
whether or not a mark is identical or confusingly similar, because top-level
domains are a required element of every domain name.”).
The Panel finds that Respondent’s <crazytetris.com> domain name is confusingly similar to Complainant’s TETRIS mark as it combines Complainant’s mark with a generic term. In Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001), the panel found there was confusing similarity where the domain name in dispute contained the identical mark of the complainant combined with a generic word. See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). The Panel thus finds that the addition of a generic term to Complainant’s mark is not enough to negate the confusing similarity between the disputed domain name and Complainant’s TETRIS mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the <tetris.info> and <crazytetris.com> domain names. Complainant must first make a prima facie case in support of its allegations, and the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) ( “Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. 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.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Respondent’s WHOIS information does not suggest that
Respondent is commonly known by the disputed domain names. There is also no evidence in the record to
suggest that Respondent is or has ever been known by the disputed domain names. In
Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23,
2001), the panel found that the respondent did not have rights in a domain name
when the respondent was not known by the mark.
See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without
demonstrable evidence to support the assertion that a respondent is commonly
known by a domain name, the assertion must be rejected). Therefore, pursuant to Policy ¶ 4(c)(ii),
the Panel finds that Respondent is not commonly known by the disputed domain
names.
The evidence on record indicates that Respondent is using the disputed domain names to operate an online video game that is an unauthorized version of Complainant’s product. The Panel finds that such unauthorized use of Complainant’s mark to divert Internet users to Respondent’s websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website).
The Panel finds that Policy ¶ 4(a)(ii) has been
satisfied.
Respondent’s <tetris.info> and <crazytetris.com> domain names resolve to websites that contain an unauthorized version of the game Complainant distributes under its TETRIS mark. Based on this uncontested evidence, the Panel finds that Respondent is using the disputed domain names to disrupt Complainant’s business by offering its own version of Complainant’s game. Such use constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business).
The Panel further finds that Respondent is using
Complainant’s TETRIS mark in the disputed domain names for its own commercial
benefit. Additionally, the use of
Complainant’s mark in the <tetris.info> and <crazytetris.com>
domain names creates a likelihood of confusion as to the source and affiliation
of the disputed domain names to Complainant.
In Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003), the panel
found that as the respondent was using the disputed domain name in direct
competition with the complainant, and giving the impression of being affiliated
with or sponsored by the complainant, such a circumstance qualified as bad
faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629
(Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that
incorporates another's mark with the intent to deceive Internet users in regard
to the source or affiliation of the domain name is evidence of bad faith.”). The Panel accordingly finds that
Respondent’s use of the disputed domain names is evidence of bad faith
registration and use under Policy ¶ 4(b)(iv).
The Panel finds that Policy ¶
4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tetris.info> and <crazytetris.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: August 2, 2006
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