national arbitration forum

 

DECISION

 

Fuzhou Tianmeng Touzi c/o Zongjian Cai v. NiuZongYin c/o Niu Zongyin

Claim Number: FA0611000848215

 

PARTIES

Complainant is Fuzhou Tianmeng Touzi Zixun Co., Ltd (“Complainant”), represented by Yuan Xu, of KBEI INC., 273 Silver Lake Ct., Milpitas, CA 95035.  Respondent is NiuZongYin c/o Niu Zongyin (“Respondent”), No.105, Room 601, Ximen, Chongming, Shanghai, Shanghai 202150, CN.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <igg.com>, <virgoods.com>, <virgoods.net>, <51cdkey.com>, <ighot.com> and <lvlfast.com>, registered with Enom, 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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 20, 2006; the National Arbitration Forum received a hard copy of the Complaint on November 30, 2006.

 

On November 21, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <igg.com>, <virgoods.com>, <virgoods.net>, <51cdkey.com>, <ighot.com> and <lvlfast.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names.  Enom, Inc. has verified that Respondent is bound by the Enom, 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 December 1, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 21, 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@igg.com, postmaster@virgoods.com, postmaster@virgoods.net, postmaster@51cdkey.com, postmaster@ighot.com and postmaster@lvlfast.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On December 28, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <igg.com> domain name is confusingly similar to Complainant’s IGG mark, <virgoods.com> and <virgoods.net> are confusingly similar to the VIRGOODS mark, <51cdkey.com> is confusingly similar to the 51CDKEY mark, <ighot.com> is confusingly similar to Complainant’s IGHOT mark and <lvlfast.com> is confusingly similar to Complainant’s LVLFAST mark.

 

2.      Respondent does not have any rights or legitimate interests in the <igg.com>, <virgoods.com>, <virgoods.net>, <51cdkey.com>, <ighot.com> and <lvlfast.com> domain names.

 

3.      Respondent registered and used the <igg.com>, <virgoods.com>, <virgoods.net>, <51cdkey.com>, <ighot.com> and <lvlfast.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Fuzhou Tianmeng Touzi, provides Internet gaming services through various domain names.  Complainant’s products and services include free Massive Multiplayer Online Role-Playing Games (“MMORPG”) such as the popular Myth War and Voyage Century Online.  Complainant has been continuously using the IGG, VIRGOODS, IGHOT, 51CDKEY and LVLFAST marks since June 2005 in connection with its online gaming services.  Since June 2005, Complainant has spent approximately $140,000 on Google advertising alone promoting its marks.

 

Complainant is the previous registrant of each disputed domain name.  Respondent allegedly gained access to the registrar’s system in October 2006 and changed the registration information to reflect Respondent as the holder of the disputed domain name registrations.  Respondent continued to have the disputed domain names resolve to Complainant’s websites until November 21, 2006, at which point Respondent took down the websites.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant has not registered the marks at issue with any trademark authorities.  Nevertheless, the Panel holds that ownership of a valid trademark registration is not necessary for Complainant to demonstrate its rights in the marks under Policy ¶ 4(a)(i), if Complainant can establish common law rights in the marks.  See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”); see also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist).

 

Complainant submits evidence that it has been continuously using the IGG, VIRGOODS, IGHOT, 51CDKEY and LVLFAST marks since June 2005 in connection with online gaming services.  For purposes of satisfying Policy ¶ 4(a)(i), the Panel finds that the marks have acquired secondary meaning in association with Complainant’s business and as a result, Complainant has established common law rights in the IGG, VIRGOODS, IGHOT, 51CDKEY and LVLFAST marks.  See Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years); see also S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark).

 

Furthermore, Complainant claims that it previously held the disputed domain name registrations until Respondent allegedly “hijacked” them from Complainant in October 2006.  The Panel concludes that Complainant’s prior possession of the disputed domain name registrations provides further evidence of Complainant’s rights in the marks pursuant to Policy ¶ 4(a)(i).  See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (“[T]he fact that Complainant previously held registrations for the [disputed] domain names attests to the fact that it has rights in its marks.”); see also Suburban Ostomy Supply Co. v. Tremblay, FA 140639 (Nat. Arb. Forum Feb. 24, 2003) (“Complainant’s continuous use in commerce and its prior registration of the [disputed] domain name provide strong evidence that Complainant has rights in the SUBURBAN OSTAMY mark pursuant to Policy ¶ 4(a)(i).”).

 

Each of the disputed domain names incorporates one of Complainant’s marks in its entirety and merely adds a generic top-level domain (“gTLD”) such as “.com” or “.net.”  Because the mere addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis, the Panel finds the <igg.com>, <virgoods.com>, <virgoods.net>, <51cdkey.com>, <ighot.com> and <lvlfast.com> domain names to be identical to Complainant’s marks pursuant to Policy ¶ 4(a)(i).  See Reichert, Inc. v. Leonard, FA 672010 (Nat. Arb. Forum May 24, 2006) (“The disputed domain names are identical to Complainant’s mark, but for the addition of a generic top-level domain suffix (“.com” or “.net”).”); see also W. Union Holdings, Inc. v. Topiwala, D2005-0945 (WIPO Oct. 20, 2005) (finding <wuib.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name WUIB is part of the Internet address and does not add source-identifying significance).

 

The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent lacks rights and legitimate interests in the <igg.com>, <virgoods.com>, <virgoods.net>, <51cdkey.com>, <ighot.com> and <lvlfast.com> domain names.  Complainant must first make a prima facie case in support of its allegations, and then the burden shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Respondent’s failure to answer the Complaint raises a presumption that Respondent has no rights or legitimate interests in the <igg.com>, <virgoods.com>, <virgoods.net>, <51cdkey.com>, <ighot.com> and <lvlfast.com> domain names.  See CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the respondent’s failure to produce requested documentation supports a finding for the complainant); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond).  However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).

 

There is no indication in the record that Respondent is commonly known by any of the disputed domain names.  The WHOIS registration information lists “NiuZongYin c/o Niu Zongyin” as the registrant of each disputed domain name, and Complainant claims that it has not authorized or licensed Respondent to use its marks in the disputed domain names.  As a result, the Panel has determined that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See The Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).

 

Respondent has changed the registration information to reflect its ownership of the disputed domain names, and until recently was still redirecting Internet users to Complainant’s website.  Complainant no longer has any control over the content at the disputed domain name and Respondent has now taken down the website.  In Anbex Inc. v. WEB-Common Techs. Grp., FA 780236 (Nat. Arb. Forum Sept. 19, 2006), the panel concluded that the respondent could not establish rights or legitimate interests under either Policy ¶ 4(c)(i) or ¶ 4(c)(iii) where the respondent hijacked the complainant’s domain name and merely displayed the complainant’s website.  The panel found that the respondent was attempting to pass itself off as the complainant and offer the complainant’s products for sale.  Id.  In this case, Respondent has also attempted to pass itself off as Complainant by maintaining Complainant’s website at the disputed domain names but changing the registration information.  As a result, Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”).     

 

The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Although Respondent’s conduct does not fall within the parameters of bad faith registration and use under the factors listed in Policy ¶ 4(b), the Panel finds that, based on the totality of the circumstances, Respondent’s hijacking of the disputed domain names is indicative of bad faith registration and use under Policy ¶ 4(a)(iii).  See Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.”); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).

 

Complainant previously maintained a website at the disputed domain names to promote its online gaming services and Respondent gained access to the registrar’s system to register the disputed domain names for itself.  Respondent did not take down Complainant’s website until right before Complainant filed this Complaint and instead continued to redirect Internet users seeking Complainant to a website identical to the previous website at the disputed domain names.  Accordingly, the Panel finds that Respondent had actual knowledge of Complainant’s marks.  Respondent’s actions unmistakably provide evidence of bad faith registration and use under Policy ¶ 4(a)(iii).  See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration and had even contacted the complainant about entering into a business partnership); see also Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights). 

 

Moreover, in 8X Entm’t, Inc. v. EXC Int’l AG, D2005-1126 (WIPO Dec. 28, 2005), the respondent hijacked the complainant’s <8x.com> domain name but continued redirecting Internet users to the complainant’s website.  The panel held that the respondent’s acts constituted bad faith registration and use.  Id.  The panel in Alexey Mezenin v. Baselmans, FA 664060 (Nat. Arb. Forum May 8, 2006), also found bad faith registration and use where the respondent hijacked the complainant’s <musicsonglyrics.com> domain name.  The facts in this case are almost indistinguishable from these previous cases.  Therefore, the Panel finds that Respondent’s hijacking of Complainant’s disputed domain names was in bad faith pursuant to Policy ¶ 4(a)(iii). 

 

The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <igg.com>,  <virgoods.com>, <virgoods.net>, <51cdkey.com>, <ighot.com> and <lvlfast.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

John J. Upchurch, Esquire

Dated:  January 11, 2007