DoubleJump Publishing, Inc. v.
Guerilla-Studios
Claim Number: FA0610000811632
PARTIES
Complainant is DoubleJump Publishing, Inc. (“Complainant”). Respondent is Guerilla-Studios (“Respondent”), represented by Denny T. Phillips1630 Barbadoes Avenue, Pittsburgh, PA 15226.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thehardcoregamer.com>,
registered with Blue Razor Domains, Inc.
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.
Paul Michael DeCicco, Sandra J. Franklin, and Richard Hill as
Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on October 2, 2006; the National Arbitration Forum received a
hard copy of the Complaint on October 3, 2006.
On October 4, 2006, Blue Razor Domains, Inc. confirmed by e-mail to the
National Arbitration Forum that the <thehardcoregamer.com>
domain name is registered with Blue Razor Domains, Inc. and that the Respondent
is the current registrant of the name. Blue
Razor Domains, Inc. has verified that Respondent is bound by the Blue Razor
Domains, 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 October 6, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of October 26, 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@thehardcoregamer.com by e-mail.
A timely Response was received and determined to be complete on October
26, 2006.
Complainant’s additional submission was received and determined to be
complete on October 31, 2006.
Respondent’s timely Response to Complainant’s additional submission was
received and determined to be complete on November 6, 2006.
On November 8, 2006, pursuant to Respondent’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Paul Michael DeCicco, Sandra J. Franklin,
and Richard Hill as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
According to Complainant, it owns the registered trademark
"Hardcore Gamer" which has been used in commerce since January 28,
2004 as the name of an internationally distributed video game magazine
published by Complainant with a circulation of over 350,000 copies.
The contested domain name is identical or
confusingly similar to Complainant’s trademark.
Respondent is not commonly known by the <thehardcoregamer.com>
domain name. According to the WHOIS
information for the <thehardcoregamer.com> domain name, Respondent
is "Guerilla-Studios." Furthermore, Respondent is not a licensee of
Complainant, or an authorized user of Complainant's Hardcore Gamer mark.
Respondent's <thehardcoregamer.com> domain name resolves
to a website featuring video game reviews and other articles in which
Complainant's Hardcore Gamer mark is used without permission. Respondent is using the disputed domain name
to promote their own video game reviews which have no affiliation with
Complainant in any way. Respondent is
also diverting Internet users seeking information on Complainant to a website
offering services wholly unrelated to Complainant. Such diversionary use of the disputed domain name does not
constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or
fair use of the domain name pursuant to Policy ¶ 4(c)(iii).
According to Complainant, Respondent registered and is using the
disputed domain name in bad faith, because Respondent either failed to
perform a basic trademark search to see if the term Hardcore Gamer was already
trademarked or performed a trademark search and willfully choose to infringe
upon the rights of Complainant by using the mark without permission of
Complainant.
Further, according to Complainant, Respondent registered and is using
the disputed domain name in bad faith, because Respondent is using the <thehardcoregamer.com>
domain name to operate a website featuring video game reviews unrelated to
Complainant's business or Complainant's products. Respondent is taking advantage of the likelihood of confusion
between Respondent's <thehardcoregamer.com> domain name and
Complainant's Hardcore Gamer mark. Such
use constitutes bad faith registration and use under Policy ¶ 4(b)(iv).
B. Respondent
According to Respondent, its domain has been in existence and operating
as a private video game website for six years prior to the first publication of
Complainant’s magazine. From 1999 to
2004, it was operated by a third party with no relation to Complainant or to
Respondent. The disputed domain name
was acquired by Respondent in October 2004.
The Respondent has rights and legitimate interest to the domain in
question, as Respondent has continuously spent thousands of dollars and
countless hours of time for two years in marketing support, search engine
optimization, brand building, and content development for the domain in
question. Respondent has been commonly
known by the domain name since taking possession of the site in 2004, both
within the professional gaming industry and within the gamer community.
Respondent is making a legitimate, noncommercial use of the domain name
without any intent to mislead users for commercial gain or to tarnish the
trademark of Complainant.
Respondent did not register the domain in bad faith, as the intent at
registration was to continue to operate the site as a private, video game
enthusiast website, as it has been operating since 1999. Respondent has continuously used the
disputed domain name in accordance with its originally stated purpose: a
private video game enthusiast website.
Respondent has further demonstrated the intent to continue operating the
site by renewing the domain registration of the site until 2015. In addition, the domain was registered to
the Respondent one year prior to any public launch of Complainant’s
publication.
In January of 2005, Complainant, who is the Publisher of Hardcore
Gamer Magazine, began publicly unveiling plans of the publication’s launch
through various online video gaming enthusiast message boards. In February of 2005, the magazine was
officially unveiled to the video game industry via an online media release,
which also included sample content.
Respondent makes every good faith effort to ensure that there is no
likelihood of confusion between Complainant’s publication or trademark and
Respondent’s website. The following
text currently appears within the legal disclaimer on its site: “The Hardcore
Gamer is no way affiliated with Hardcore Gamer Magazine or Double Jump Books.”
The domain name in question is registered to Guerilla-Studios, and more
specifically, the Respondent, as the primary contact. “Guerilla-Studios” is the “doing business as” (d/b/a) name for a
private, freelance web design and advertising agency owned by Respondent.
The disputed domain name is the property of The Hardcore Gamer, Inc. a
private company owned and operated by Respondent. The Hardcore Gamer, Inc. was incorporated legally by the
Respondent within the state of Pennsylvania in June 2006. The Hardcore Gamer, Inc. currently employs a
total of seven employees, covering a number of roles and responsibilities for
the web site.
Respondent does not accept advertising revenue for the web site at the
disputed domain name.
The Respondent has placed print advertisements for its web site
appearing in the April 2006 in the Moon/Coraopolis Record (newspaper in the
Pittsburgh area). Further, it was
present at the 2006 E3 convention in Los Angeles, in which 500 candy bags with the
logo and tagline, 30 t-shirts, and over 1,000 business cards were distributed
to gamers and industry representatives.
The phrase “hardcore gamer” is commonly used by game developers,
publishers and video game magazines and websites throughout the industry. Several additional websites are currently
operating under a form of the name “hardcore gamer”.
C. Additional Submissions
In its Additional Submission, Complainant responds to various
allegations made by Respondent concerning its trademark. Since the Panel did not consider that those
allegations were relevant, they are not summarized above, and Complainant’s
response with respect to those matters is also not summarized here.
Complainant states that Respondent submitted evidence showing that they formed "The Hardcore Gamer, Inc.", a for-profit Pennsylvania corporation, on June 23, 2006, two days after Respondent received notice of trademark infringement from Complainant.
Complainant believes that, based on
the available evidence, Respondent back-ordered the disputed domain name
sometime in September 2004, then waited for the domain name and associated web
site to be abandoned, and registered the domain for their own use.
Regarding the question of whether
or not the dispute domain name is being used for commercial purposes,
Complainant makes the following allegations:
1. Respondent, commonly known as Guerilla-Studios, appears to be a for-profit advertising agency.
2. A common service offered by advertising agencies is viral marketing (also known as guerrilla marketing). Viral marketing is a stealth marketing technique where marketers and advertising agencies masquerade as fans and enthusiasts via online blogs and seemingly amateur web sites to create buzz for products.
3. Karen Phillips, an agent of Respondent, is also senior account executive at a famous Pittsburgh adverting agency. Karen Phillips made public comments on Respondent's web site in which she talks about the dollar value of viral buzz from web sites and blogs.
4. Respondent appears to be using <thehardcoregamer.com> and Complainant's trademark for commercial gain by using them as an advertisement for Respondent's professional services as an advertising agency.
5. Respondent states in their Response that they are spending money on marketing support, search engine optimization, brand building, and content development for the disputed domain. Complainant believes brand building is a commercial activity.
7. Respondent appears to be using their web site and Complainant's "Hardcore Gamer" mark to advertise video games for sale.
8. Respondent appears to be using their web site and Complainant's "Hardcore Gamer" mark to advertise commercial web sites (like <cheapassgamer.com>) that offer goods and services that directly compete with Complainant's goods and services.
9. Respondent appears to have spent money on print advertising, using Complainant's "Hardcore Gamer" mark to direct visitors to <thehardcoregamer.com>.
10. Respondent appears to have attended or sent agents to attend a private, commercial, video game industry trade show (called E3) where they wore, sold or otherwise distributed or displayed t-shirts and other promotional items featuring Complainant's "Hardcore Gamer" mark. E3 is only open to professionals from the video game industry and professional journalists. The E3 trade show has never been open to private enthusiast video game web site operators. Respondent would not have been able to gain entrance into E3 by representing them-self as a private enthusiast video game web site operator. Respondent would have had to represent their web site as a professional (i.e., for profit) journalistic video game web site, to get into E3.
11. Karen Phillips made public comments on Respondent's web site which Complainant believes describe how they represented themselves as professional journalists to gain entry into E3.
12. Karen Phillips made public comments on the site stating that "the owners of this site" had "hired a staff of writers to support the site".
13. Respondent refers to their web site staff as employees (of their for-profit corporation).
Complainant believes that
Respondent has intentionally created a likelihood of confusion with
Complainant's mark as to the source, sponsorship, affiliation, or endorsement
of Respondent's web site. A real
example of this likelihood of confusion is when Complainant's endorsement for
the video game entitled "Dead Rising" (a video game that Respondent
also endorsed on their web site) appeared in a television commercial which
aired on most major television networks in October 2006, including FX, TNT,
ESPN (during Monday Night Football), Fox (during Bones The Show), MTV, Spike TV
and many others, and was attributed as coming from "Hardcore Gamer".
If any of the millions of viewers of that commercial use the internet to search
for "Hardcore Gamer" to find the source of the endorsement, they will
be directed to Respondent's web site because of Respondent's intentional
optimization of internet search engines to direct people looking for
Complainant's products and services to Respondent's web site.
In its Additional Submission, Respondent revisits various issues
related to the Complainant’s trademark.
As noted above, the Panel considers that those issues are not relevant
for the present proceeding and so Respondent’s allegations are not summarized
here.
Respondent began the incorporation process of The Hardcore Gamer, Inc.
in February of 2006 through the registration of a Federal Tax ID/EIN. When
Respondent was threatened with legal action by Complainant in June of 2006,
they were advised by a corporate consultant to continue on the path of
incorporation (initiated in February of 2006) in order to protect themselves
and separate any personal assets (including their personal home) from matters
regarding the disputed domain name.
Respondent is currently operating the disputed domain name as an
independent video game enthusiast blog, devoid of any corporate advertising or
sponsorships. The website and
corresponding business, The Hardcore Gamer, Inc. currently operate as a
part-time business for Mr. and Mrs. Phillips, for which they receive no
monetary compensation. Any and all staff members of <thehardcoregamer.com>
operate under a voluntary basis, and do not receive monetary compensation for
their contributions.
Despite the lack of a current revenue stream, Respondent continues to
operate the disputed domain name under the business name, The Hardcore Gamer,
Inc. In addition, Respondent treats the
disputed domain name with the same levels of respect and professionalism as a
full-time business by developing its brand and consumer loyalty, by employing
the highest quality of professional-level writers and staff members, by
referring to themselves and treating themselves as a business with corporate
stationary, business cards, etc. and by striving to be an un-biased and
independent voice in what has become a very corporate-run industry. It is this desire to be a catalyst for
change in the industry that continues to drive the disputed domain name despite
its lack of revenue or monetary compensation at this time.
Respondent is ranked among the top gamers in the world and has been a
member of the gaming community for over 20 years. Any implication that Respondent is “masquerading as a fan” for
the purposes of viral marketing is unfounded and libelous.
Although Karen Phillips is the acting Owner/COO of The Hardcore Gamer,
Inc, Mrs. Phillips was not personally named in this case, and any personal
attacks directed at Mrs. Phillips should be deemed irrelevant to this
case. Mrs. Phillips’ full time position
at an advertising agency is wholly unrelated in any way to the dispute domain
name. Mrs. Phillips was hired by the
agency in August of 2005, ten months after the launch of the disputed
web site. Neither Mr. Phillips nor Guerilla-Studios
has ever been hired by the agency in any capacity related to viral
marketing. The agency was not aware of
the web site at the disputed domain name prior to hiring Mrs. Phillips. Any inferences or implications from the
Complainant that disputed domain name is in some way a guerilla marketing
tactic, viral marketing tactic, joint venture between the advertising agency
and Guerilla-Studios, or “staged” in
any way is unsubstantiated, unfounded and libelous.
Respondent currently receives no monetary compensation from operating
the site. There are no revenue streams
related to the site, as Respondent does not currently accept advertising or
sell any goods or products on the site.
Respondent is operating the site as a fan of gaming and the gaming
community and out of a need to provide quality video game journalism in an
industry often overrun by larger corporations.
Respondent has never sold any item (including video games) on <thehardcoregamer.com>. It is common practice with video game blogs and
video game news websites, to recommend inexpensive video game “deals” to
readers. Although Respondent discusses
popular game “deals” on the blog and forum portions of the site, Respondent
does not have any affiliate relationships with game manufacturers or developers
in any manner to receive any compensation (monetary or otherwise) from the
recommendations offered to users. In
short, Respondent does not benefit in any way if the games that are recommended
on the site are purchased. Complainant
fails to provide any evidence in the contrary and such an accusation is
completely unfounded.
Complainant alleges that Respondent would not have been permitted to
attend the E3 convention in Los Angles by representing themselves as private
enthusiast web site operator. In
actuality, Respondent’s E3 application stated as follows:
“My husband and I are the owners and operators of The Hardcore Gamer, a
web-based video gaming site featuring breaking news, reviews, feature articles,
downloadable wallpapers and more for the hardcore video game enthusiast.”
Respondent attended E3 to gather information for future stories and
network among industry professionals to make more people aware of <thehardcoregamer.com>. All materials distributed at E3 by
Respondent (including business cards and t-shirts) were distributed free of
charge. Obviously Complainant’s point
in this matter is irrelevant, as clearly, Respondent was forthcoming in their
application to E3 and was nonetheless accepted into E3 as members of the gaming
industry, thus negating Complainant’s argument.
Respondent has made a 100% clear and unwavering assertion that they are
a non-commercial, unbiased and independent website, devoid of any corporate
influence or advertising-based bias.
The fact that the site also employs professional-level journalists is
irrelevant to the commercial v non-commercial nature of the site.
Complainant claims that the Respondent is intentionally attempting to
attract users through search engine optimization. As stated in Respondent’s original response, search engine
optimization (SEO) is a practice that has become standard when designing and
maintaining a website. To directly
respond to Complainant’s example, <thehardcoregamer.com> first
began covering the game Dead Rising in May of 2006, following E3 and added
in-depth information on the game in August of 2006. This helped raise Respondent’s SEO for Dead
Rising coverage. At this time, Dead
Rising was a very popular and talked about game within the gaming community. Nearly every video game site was covering
the game in some manner. Complainant
claims that Respondent added SEO on Dead Rising after the TV spot began
running in October of 2006 featuring an endorsement of the game from Hardcore
Gamer Magazine. The facts enclosed
prove that Complainant’s accusation in this matter is an unsubstantiated point
that is simply not true.
At the time Respondent purchased the disputed domain name in October of
2004, Respondent had no knowledge of Complainant.
As the phrase “hardcore gamer” is generic and widely used within the
video game industry to describe a type of avid video game player, and
Respondent’s website contains content, downloads and news relevant to the avid
hardcore gaming community, Respondent feels that they have demonstrated
legitimate rights to the domain in question, as they are providing a legitimate
offering of goods or services to the gaming community.
Complainant’s attempt to use the ICANN Uniform Domain Name Dispute
Resolution Policy to bully Respondent into turning over their domain is a clear
indication of reverse domain hijacking.
FINDINGS
Complainant has applied for registration in
the word mark at-issue. Complainant does not have a registered trademark as the
mark has not been issued and Complainant’s Statement of Use was rejected.
The disputed domain name was first registered
in 1999 by a third party unrelated to either the Respondent or the
Complainant. The site was, at times,
not used. Subsequently, it was used as
private video game website.
The Complainant started using the term
“Hardcore Gamer” in January 2004.
The Respondent acquired the disputed domain
name in October 2004.
The web site at the disputed domain name
presents reviews of video games and is designed for video game enthusiasts,
commonly known as “hardcore gamers”.
The web site at the disputed domain name
contains a disclaimer to the effect that it is not associated with the
Complainant. This disclaimer does not
appear on the home page, it appears on a “legal” page that can be accessed from
a drop-down menu on the main page. That
is, the disclaimer is not immediately visible to the user.
The Complainant started publishing a magazine
devoted to reviews of games in February 2005.
In June 2006, two days after Respondent
received notice of trademark infringement from the Complainant, the Respondent incorporated a company called
“The Hardcore Gamer, Inc.” and that company now owns the disputed domain
name. The company employees a total of
seven employees, unpaid volunteers. The
Respondent had taken the first steps towards incorporation of its company in
February 2006.
The Respondent has considerable knowledge of
the video game industry and is an expert game player.
The Respondent does not accept advertising revenue for the web site at
the disputed domain name nor does it sell products or services at that web
site.
The Respondent has placed print advertisements for its web site and
promoted it at a major video gaming industry event in 2006.
The phrase “hardcore gamer” is commonly used by game developers,
publishers and video game magazines and websites throughout the industry. Several additional websites are currently
operating under a form of the name “hardcore gamer”.
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.
There is a dispute between the parties concerning the validity of
Complainant’s mark and whether or not, absent an approved registration, it
would constitute a common law trademark.
In fact, the parties seem to be involved in a trademark dispute with
issues, which might be better addressed in the courts.
Further, for the reasons mentioned below, it
is not necessary for this Panel to determine whether or not Complainant has
rights in the mark “Hardcore Gamer”.
As Respondent correctly points out, the term
“hardcore gamer” is a descriptive term for people who are enthusiastic game
players. Indeed, someone has already
used the domain name <thehardcoregamer.com>, dating back to
1999. Thus, it is perfectly possible to
envisage Respondent’s legitimate use for the disputed domain name.
Respondent alleges that it is making a
non-commercial use of the disputed domain name.
Complainant alleges that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on its web site.
Respondent denies this allegation and the Complainant has failed to provide convincing evidence to prove its allegations. See Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that absent a showing of any facts by the complainant that establish the respondent lacks rights or legitimate interests in the disputed domain name, the panel may decline to transfer the disputed domain name); See also Lockheed Martin Corp. v. Etheridge, D2000-0906 (WIPO Sept. 24, 2000) (finding that the respondent has rights in the <missionsuccess.net> domain name where she was using the domain name in connection with a noncommercial purpose); see also Baja Marine Corp. v. Wheeler Techs., Inc., FA 96954 (Nat. Arb. Forum May 17, 2001) (finding that the respondent has rights and legitimate interests in the domain name where the respondent made a non-commercial use of the <bajaboats.com> domain name and received no funds from users of the site connected to the domain name).
The Panel holds
that Complainant has failed to satisfy its burden of proving that the
Respondent has no rights or legitimate interests in the disputed domain name.
Since Complainant has not proven that
Respondent has no rights or legitimate interests, it has also failed to prove
that Respondent registered and is using the disputed domain name in bad faith.
Complainant alleges that Respondent acted in
bad faith because it either did not perform trademark search, or performed one
and willfully ignored its results.
However, Complainant does not provide any evidence to prove that
Respondent performed a trademark search, and failure to perform such a search
should not be considered to be bad faith behavior under the Policy.
Indeed, the closest equivalent to a legislative history for the Policy can be found in the 30 April 1999 Final Report of the WIPO Internet Domain Name Process, which formed the basis for the ICANN Policy (available online at: http://www.wipo.int/amc/en/processes/process1/report/finalreport.html ). This report states at paragraph 103:
The WIPO Interim Report recommended that the performance of a prior search for potentially conflicting trademarks should not be a condition for obtaining a domain name registration. Almost unanimously, commentators agreed with this recommendation, whether searches were to be required to be carried out by the registration authorities or by the domain name applicants themselves. Particularly in an international context, the requirement of searches prior to the registration of a domain name was generally considered to be unrealistic and conducive to unnecessary delays in the registration process.
Again, Respondent provides credible evidence that it thought it was legitimately purchasing the descriptive domain name <thehardcoregamer.com> from a previous legitimate user.
Paragraph 1 of the Rules defines Reverse Domain Name Hijacking:
Reverse Domain Name Hijacking means using the Policy in bad faith to
attempt to deprive a registered domain-name holder of a domain name.
Respondent invokes this provision when it requests
the Panel to find that Complainant is using the Policy in a bad faith attempt
to deprive a registered domain name holder of a domain name.
The general conditions for a finding of bad faith on the part of Complainant are well stated in Smart Design LLC v. Carolyn Hughes, D2000-0993 (WIPO, October 18, 2000):
Clearly, the launching of an unjustifiable Complaint with malice aforethought qualifies, as would the pursuit of a Complaint after the Complainant knew it to be insupportable.
These conditions are confirmed in Goldline Int’l, Inc. v. Gold Line, D2000-1151 (WIPO, January 4, 2001) and Sydney Opera House Trust v. Trilynx Pty. Ltd., D2000-1224 (WIPO, October 31, 2000) (where the condition is stated as “the respondent must show knowledge on the part of the complainant of the respondent’s right or legitimate interest in the disputed domain name and evidence of harassment or similar conduct by the complainant in the face of such knowledge”), which in turn cites Plan Express Inc. v. Plan Express, D2000-0565 (WIPO, July 17, 2000).
There is nothing in the record to indicate malice on the part of the Complainant and nothing to indicate that the Complainant knew that its case was insupportable. The Complainant has failed to provide sufficient evidence to convince the Panel that its allegations are true, but this is not the same as knowing that its case was insupportable.
Therefore, the Panel holds that the Complainant has not attempted Reverse Domain Name Hijacking.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be DENIED.
The panel finds that the Complainant did not
engage in Reverse Domain Name Hijacking.
Richard Hill, Presiding Panelist
Paul Michael DeCicco and Sandra J. Franklin,
Panelists
Dated: November 22, 2008
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