Big Fish Games, Inc. v. Download Soft
Claim Number: FA0701000892752
Complainant is Big Fish Games, Inc. (“Complainant”), represented by Catherine
E. Maxson, of Davis Wright Temaine LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <bigfishgames.net>, registered with Go Daddy Software, Inc.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 18, 2007; the National Arbitration Forum received a hard copy of the Complaint on January 19, 2007.
On January 19, 2007, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <bigfishgames.net> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 January 19, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 8, 2007, 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@bigfishgames.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 15, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant has several pending trademark registrations with the United
States Patent and Trademark Office (“USPTO”) for the BIG FISH GAMES mark (i.e.
Serial No. 78/657197 and Serial No. 78/657195, both filed on June 23,
2005).
Additionally,
Complainant holds trademark registrations in
Complainant
has used the BIG FISH GAMES mark in connection with computer games and related
services since May 9, 2002.
In
the intervening period, Complainant has distributed more than 100 million games
to over twenty million customers.
Complainant
has registered the domain name <bigfishgames.com> in connection with its
marketing of computer game downloads and related services offering games
available for playing online.
Respondent registered the <bigfishgames.net> domain name on April 19, 2004.
Respondent uses the disputed domain name to redirect Internet users to its website, which offers goods and services similar to and in competition with those of Complainant.
Respondent’s website also offers some goods and services identical to those sold by Complainant under the BIG FISH GAMES mark.
Respondent’s <bigfishgames.net> domain name is substantively identical to Complainant’s BIG FISH GAMES mark.
Respondent does not have any rights to or legitimate interests in the <bigfishgames.net> domain name.
Respondent registered and uses the <bigfishgames.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is substantively identical to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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
ii. Respondent has no rights or legitimate interests in respect of the domain name;
and
iii. the domain name has been registered and is being used in bad faith.
It is not necessary for Complainant to hold a registered
trademark in order for it to acquire rights in its BIG FISH GAMES mark. Common law rights in a mark are sufficient to
satisfy Policy ¶ 4(a)(i). Additionally, Complainant holds registrations
in both
Respondent does not deny that Complainant has common law
rights in its BIG FISH GAMES mark through extensive and continuous use dating
from at least May 9, 2002, as well as by registration of the mark in both
Respondent also does not deny that its <bigfishgames.net> domain name is
identical to Complainant’s BIG FISH GAMES mark because the domain name uses
Complainant’s mark in its entirety and merely adds to it the generic top-level domain (“gTLD”)
“.net”. The addition of a gTLD is not a
distinguishing difference under Policy ¶ 4(a)(i). See Blue
Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr.
27, 2000) (holding that the domain name <robohelp.com> was identical to a
complainant’s registered ROBOHELP trademark, and that the addition of .com to
that mark did not create a distinguishing difference); see also Little Six, Inc. v. Domain For Sale, FA 96967
(Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net> was
identical to a complainant’s
The Panel thus finds Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have rights or legitimate interest in the <bigfishgames.net> domain name. Complainant must of course make out a prima facie case, at which point the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). We may, and we do, assume that Respondent has rights or legitimate interests in the disputed domain name because it has failed to respond to the Complaint. See 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).
See also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30,
2002) (“[B]ased on Respondent's failure to respond, it is presumed that
Respondent lacks all rights and legitimate interests in the disputed domain
name.”).
The Panel will nonetheless
evaluate the available evidence to determine whether there is any basis for
concluding that Respondent has rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(c).
We first note that Complainant alleges that Respondent is using the <bigfishgames.net> domain name to redirect Internet users to Respondent’s website selling Complainant’s goods and services as well as competing goods and services. Respondent’s use of the disputed domain name to sell Complainant’s goods and competing goods and services is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where a respondent used a complainant’s mark without authorization to attract Internet users to its website, which offered both that complainant’s products and those of the its competitors); see also Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the <pitneybowe.com> domain name where a respondent purported to resell original Pitney Bowes equipment on its website, as well as goods of competitors of that complainant).
Additionally, Respondent has offered no evidence suggesting
that Respondent is commonly known by the <bigfishgames.net>
domain name. Respondent’s WHOIS
information identifies the Respondent as “Download Soft”. Therefore, Respondent has failed to establish
rights or legitimate interests in the <bigfishgames.net>
domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb.
Forum Feb. 10, 2003) (concluding that the fact that “nothing in Respondent’s
WHOIS information implies that Respondent is ‘commonly known by’ the disputed
domain name” was a factor in determining that Policy ¶ 4(c)(ii)
did not apply); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003).
The Panel therefore finds Policy ¶ 4(a)(ii) has been satisfied.
On the record before us, there is no dispute that Respondent
is using the domain name <bigfishgames.net>
to redirect Internet users to Respondent’s website, which sells both
Complainant’s goods and services and competing goods and services. Because Respondent’s domain name is
substantively identical to Complainant’s BIG FISH GAMES mark, Internet users
could become confused as to Complainant’s possible affiliation with
Respondent’s website. Presumably, Respondent
profits from this confusion through the sale of goods and services. As a result, Respondent's use of the <bigfishgames.net> domain name
constitutes bad faith registration and use of the domain pursuant to Policy ¶
4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu,
FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that a respondent’s use of
the <saflock.com> domain name to offer goods competing with a
complainant’s business illustrated that respondent’s bad faith registration and
use of the domain name pursuant to Policy ¶ 4(b)(iv)); see also Fossil
Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that a
respondent acted in bad faith by registering the <fossilwatch.com> domain
name and using it to sell various watch brands where that respondent was not
authorized to sell a complainant’s goods).
To this we would add that it appears that Respondent
registered the contested domain name with at
least constructive knowledge of Complainant’s rights in the BIG FISH
GAMES trademark by virtue of Complainant’s prior
registrations of that mark in several jurisdictions. Registration of an identical or confusingly
similar domain name despite such constructive knowledge is, without more,
evidence of bad faith registration and use of the domain name pursuant to
Policy ¶ 4(a)(iii). See Digi
Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum
For these reasons, the Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <bigfishgames.net> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 1, 2007
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