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DECISION

 

Tetris Holding, LLC v. Alexandre Rodrigues d/b/a Tetris Technology Servicos de Informatica LTDA

Claim Number: FA0705000989702

 

PARTIES

Complainant is Tetris Holding, LLC, Wilmington, DE (“Complainant”) represented by Keith D. McDonald, of Norris, McLaughlin & Marcus, P.A.  Respondent is Alexandre Rodrigues d/b/a Tetris Technology Servicos de Informatica LTDA, Santos, Sao Paulo (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <tetris.us>, registered with Go Daddy Software, Inc.

 

PANEL

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.

 

Judge Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 17, 2007; the Forum received a hard copy of the Complaint on May 21, 2007.

 

On May 18, 2007, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the <tetris.us> 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 the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On May 24, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 13, 2007 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

 

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

 

On June 20, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Ralph Yachnin as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the 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 name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

 

1.      Respondent’s <tetris.us> domain name is identical to Complainant’s TETRIS mark.

 

2.      Respondent does not have any rights or legitimate interests in the <tetris.us> domain name.

 

3.      Respondent registered and used the <tetris.us> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Tetris Holding, LLC, holds several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the TETRIS mark (e.g., Reg. No. 1,657,499 issued September 17, 1991 and Reg. No. 2,362,238 issued June 27, 2000).  Complainant has used the TETRIS mark in connection with the distribution and sale of its puzzle video game.  Complainant has sold its puzzle game under the TETRIS mark to consumers around the world through its licensees, including mobile phones, iPods, PDAs, electronic handheld games, and video consoles for televisions.  Complainant has registered the <tetris.com> domain name, which it uses in connection with the sale of its puzzle video game under the TETRIS mark.

 

Respondent registered the <tetris.us> domain name on June 23, 2002.  Respondent is using the disputed domain name to redirect Internet users to Respondent’s website containing advertisements and hyperlinks to third-party websites offering unauthorized copies of Complainant’s puzzle video game under the TETRIS mark.  Following a letter by Complainant to Respondent demanding it transfer the <tetris.us> domain name to Complainant, Respondent altered the <tetris.us> domain name, which now redirects Internet users to Complainant’s website, but it did not transfer the domain name to Complainant.

 

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(f), 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 or is being used in bad faith.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

Identical and/or Confusingly Similar

 

Complainant has established rights in the TETRIS mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO.  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.us> domain name is identical to Complainant’s TETRIS mark because it uses Complainant’s mark in its entirety and merely adds the country-code top-level domain (“ccTLD”) “.us” to the mark.  The Panel holds that the addition of a ccTLD does not distinguish the domain name and therefore the <tetris.us> domain name is identical to Complainant’s TETRIS mark under Policy ¶ 4(a)(i).  See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark); see also Mattel, Inc. v. Unknown, FA 490083 (Nat. Arb. Forum July 11, 2005) (“The domain name is identical to the trademark “Barbie”, as it uses the trademark in its entirety. The only difference is the addition of the country code “us” which for this purpose is insufficient to distinguish the domain name from the trademark.”)

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant contends that Respondent does not have rights or legitimate interests in the <tetris.us> domain name.  In the instant proceeding, Complainant’s submission establishes a prima facie case, which shifts the burden to Respondent to show that Respondent does have rights or legitimate interests in the <tetris.us> domain name.  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 UDRP ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).

 

The Panel may assume that Respondent does not have rights or legitimate interests here because Respondent failed to respond to the Complaint.  See Eroski, So. Coop. v. Getdomains Ishowflat Ltd., D2003-0209 (WIPO July 28, 2003) (“It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest on the domain name.”); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).  However, the Panel will consider all available evidence before determining whether Respondent has rights or legitimate interests under Policy ¶ 4(c).

 

While Complainant has established rights in the TETRIS mark, Respondent has failed to provide any evidence which demonstrates that it holds a service mark or trademark in the <tetris.us> domain name.  Therefore, the Panel finds that Complainant has satisfied Policy ¶ 4(c)(i).  See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). 

 

Respondent is using the <tetris.us> domain name to redirect Internet users to Respondent’s website displaying links and advertisements to third-party websites, which offer unauthorized copies of Complainant’s game under the TETRIS mark.  Respondent’s use of the <tetris.us> domain name to redirect Internet users to third-party websites offering Complainant’s goods without Complainant’s permission is not a use in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(ii), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv).  See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use); see also Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under [UDRP] ¶ 4(c)(i) nor a legitimate noncommercial or fair use under [UDRP] ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user).

 

Finally, Respondent has offered no evidence and there is no evidence present in the record to indicate that Respondent is commonly known by the <tetris.us> domain name.  Respondent’s WHOIS information identified Respondent as “Alexandre Rodrigues d/b/a Tetris Technology Servicos de Informatica LTDA.”  While Respondent’s WHOIS information includes the TETRIS mark, Respondent offers no evidence showing that it is commonly known by the <tetris.us> domain name beyond the registration of the disputed domain name.  Therefore, the Panel finds that Respondent has failed to establish rights in the <tetris.us> domain name under Policy ¶ 4(c)(iii).  See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to [UDRP] ¶ 4(c)(ii).”)

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

 

Registration and Use in Bad Faith

 

Respondent has registered and is using the disputed domain name to redirect Internet users to Respondent’s website displaying advertisements and links offering Complainant’s puzzle game under the TETRIS mark without Complainant’s authorization.  The Panel finds that Respondent’s use of the <tetris.us> domain name constitutes disruption, which is evidence of bad faith registration and use under Policy ¶ 4(b)(iii).  See EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under [UDRP] ¶ 4(b)(iii).”).

 

Respondent is using the <tetris.us> domain name, which is identical to Complainant’s TETRIS mark under the Policy, to redirect Internet users to Respondent’s website for the assumed profit of Respondent.  Since Respondent’s disputed domain name is identical, Internet users may become confused as to Complainant’s affiliation with the <tetris.us> domain name.  Presumably, Respondent is profiting from this confusion through click-through fees.  Therefore, the Panel finds that Respondent’s use of the disputed domain name to redirect Internet users to Respondent’s website for the profit of Respondent is evidence of bad faith registration and use under Policy ¶ 4(b)(iv).  See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to [UDRP] ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Complainant having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <tetris.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Ralph Yachnin, Panelist

                                                                                                                                    Justice, Supreme Court, NY (Ret.)

Dated: June 29, 2007

 

 

 

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