Cie Digital Labs, LLC v. Josh Hughes
Claim Number: FA1009001348394
Complainant is Cie Digital Labs, LLC ("Complainant"), represented by Anne F. Bradley of Christie, Parker & Hale LLP, California, USA. Respondent is Josh Hughes ("Respondent"), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cartown-cheats.com>, <freecartownpoints.com>, and <freecartownpoints.info>, registered with GoDaddy.com, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 23, 2010; the National Arbitration Forum received payment on September 23, 2010.
On September 24, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <cartown-cheats.com>, <freecartownpoints.com>, and <freecartownpoints.info> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 28, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 18, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@cartown-cheats.com, postmaster@freecartownpoints.com, and postmaster@freecartownpoints.info. Also on September 28, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 390, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <cartown-cheats.com>, <freecartownpoints.com>, and <freecartownpoints.info> domain names are confusingly similar to Complainant’s CAR TOWN mark.
2. Respondent does not have any rights or legitimate interests in the <cartown-cheats.com>, <freecartownpoints.com>, and <freecartownpoints.info> domain names.
3. Respondent registered and used the <cartown-cheats.com>, <freecartownpoints.com>, and <freecartownpoints.info> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Cie Digital Labs, LLC, and its predecessors in interest, launched a new online social game called CAR TOWN on July 21, 2010. Complainant’s game is played within the third-party social networking website, Facebook. Complainant has over four million active users throughout the United States.
Respondent, Josh Hughes, registered the <cartown-cheats.com>, <freecartownpoints.com>, and <freecartownpoints.info> domain names no earlier than August 4, 2010. The disputed domain names resolve to websites that contain Complainant’s CAR TOWN mark, images of Complainant’s CAR TOWN game, and hyperlinks to Complainant’s competitors.
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.
Complainant has applied for two trademark registration with the United States Patent and Trademark Office (“USPTO”) for its CAR TOWN mark (e.g., Serial No. 77,958,867 filed March 15, 2010). The Panel finds governmental trademark registration is not necessary to establish rights under Policy ¶ 4(a)(i). Previous panels have determined that a federal registration is not required so long as the Complainant can establish common law rights through proof of sufficient secondary meaning associated with the mark. See 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); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant’s applications for trademark registration with the USPTO were filed on March 15, 2010 for its CAR TOWN mark. Complainant launched its CAR TOWN game on July 21, 2010. Complainant provides third-party newspaper and magazine articles that discuss Complainant’s CAR TOWN game. The Panel finds that Complainant has established common law rights in its CAR TOWN mark for the purposes of Policy ¶ 4(a)(i). See Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)); see also BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify the complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services).
Complainant’s <cartown-cheats.com>, <freecartownpoints.com>, and <freecartownpoints.info> domain names are confusingly similar to Complainant’s CAR TOWN mark. The disputed domain names contain Complainant’s CAR TOWN mark after removing the space separating the terms of the mark. All of the disputed domain names add generic terms to Complainant’s mark, such as “cheats,” “free,” and “points.” All of the disputed domain names also add the generic top-level domain (“gTLD”) “.com” or “.info.” The <cartown-cheats.com> domain name also adds a hyphen. The Panel finds these alterations to Complainant’s mark do not sufficiently distinguish the disputed domain names from Complainant’s mark. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Therefore, the Panel concludes that Respondent’s disputed domain names are confusingly similar to Complainant’s CAR TOWN mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <cartown-cheats.com>, <freecartownpoints.com>, and <freecartownpoints.info> domain names. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain names. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”). Nevertheless, the Panel will examine the record to determine whether Respondent has established rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the disputed domain names. Complainant alleges that Respondent is not licensed to use the CAR TOWN mark and that Respondent does not have any legal relationship with Complainant that would entitle Respondent to use Complainant’s mark. The WHOIS information identifies the registrant of the disputed domain names as “Josh Hughes,” which the Panel determines is not similar to the <cartown-cheats.com>, <freecartownpoints.com>, and <freecartownpoints.info> domain names. Based on the evidence in the record, the Panel concludes that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See 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); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Complainant claims that Respondent’s disputed domain names resolve to websites that feature Complainant’s CAR TOWN mark, images of Complainant’s CAR TOWN game, and hyperlinks to Complainant’s competitors. The Panel finds that Respondent’s use of domain names that are confusingly similar to the CAR TOWN mark to redirect Internet users to Complainant’s competitors is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent 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 also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with a complainant, does not constitute 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)).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <cartown-cheats.com>, <freecartownpoints.com>, and <freecartownpoints.info> domain names, which is confusingly similar to Complainant’s CAR TOWN mark, to redirect Internet users interested in Complainant to websites featuring hyperlinks to Complainant’s competitors. The Panel finds such use constitutes disruption of Complainant’s business and is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
The Panel infers Respondent receives click-through fees and thus profits from its use of the disputed domain names. The <cartown-cheats.com>, <freecartownpoints.com>, and <freecartownpoints.info> domain names are confusingly similar to Complainant’s CAR TOWN mark and Internet users may become confused as to Complainant’s affiliation with Respondent’s resulting website. Respondent enhances this confusion by utilizing Complainant’s CAR TOWN mark and images of Complainant’s CAR TOWN game extensively on the resolving websites. Therefore, the Panel finds Respondent’s attempt to profit from the likelihood of confusion created by its use of the confusingly similar disputed domain names constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
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 <cartown-cheats.com>, <freecartownpoints.com>, and <freecartownpoints.info> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: October 29, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page