GameFly, Inc. v. Above.com Domain Privacy
Claim Number: FA1409001579346
Complainant is GameFly, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <gamafly.com>, <gamefluy.com>, <gameflyl.com>, <gameflyt.com>, <gameflyu.com>, <gamelfly.com>, <gameoly.com>, <gamsfly.com>, <ganmefly.com>, <gemefly.com>, and <hamefly.com>, registered with Above.Com Pty Ltd.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 11, 2014; the National Arbitration Forum received payment on September 11, 2014.
On September 15, 2014, Above.Com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <gamafly.com>, <gamefluy.com>, <gameflyl.com>, <gameflyt.com>, <gameflyu.com>, <gamelfly.com>, <gameoly.com>, <gamsfly.com>, <ganmefly.com>, <gemefly.com>, and <hamefly.com> domain names are registered with Above.Com Pty Ltd. and that Respondent is the current registrant of the names. Above.Com Pty Ltd. has verified that Respondent is bound by the Above.Com Pty Ltd. 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 15, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 6, 2014 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@gamafly.com, postmaster@gamefluy.com, postmaster@gameflyl.com, postmaster@gameflyt.com, postmaster@gameflyu.com, postmaster@gamelfly.com, postmaster@gameoly.com, postmaster@gamsfly.com, postmaster@ganmefly.com, postmaster@gemefly.com, and postmaster@hamefly.com. Also on September 15, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 9, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <gamafly.com>, <gamefluy.com>, <gameflyl.com>, <gameflyt.com>, <gameflyu.com>, <gamelfly.com>, <gameoly.com>, <gamsfly.com>, <ganmefly.com>, <gemefly.com>, and <hamefly.com>, domain names, the domain names at issue, are confusingly similar to Complainant’s GAMEFLY mark.
2. Respondent does not have any rights or legitimate interests in the domain names at issue.
3. Respondent registered and used the domain names at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant’s rights in the GAMEFLY mark are demonstrated by its valid trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,746,496 registered August 5, 2003). Complainant uses the GAMEFLY mark for online retail services in the field of video games. The disputed domain names are confusingly similar to the GAMEFLY mark as the names differ from the mark by a single added or substituted letter.
Respondent lacks rights in the disputed domain names. Respondent is not commonly known by the disputed domain names, as demonstrated by the WHOIS information. Further, Complainant has not given Respondent permission to use the mark in such a way. Respondent uses the majority of the domain names to redirect users to pages featuring third-party links, some of which compete with Complainant. Respondent uses the <gamafly.com> domain name to redirect to Complainant’s own website, which is done in violation the parties’ affiliate agreement. Such use does not fall within the parameters of Policy ¶¶ 4(c)(i) or (iii).
Respondent has engaged in bad faith. Respondent is using the majority of the disputed domain names to provide links to services and products in competition with Complainant, which disrupt Complainant’s own business, implicating Policy ¶ 4(b)(iii). Because Respondent generates revenue through these pay-per-click links, Respondent is in violation of Policy ¶ 4(b)(iv). Respondent is using the <gamafly.com> disputed domain names to redirect users to Complainant’s own site, which is in violation of the affiliate agreement governing the parties’ relationship. Such affiliation also demonstrates that Respondent was aware of Complainant’s rights in the mark at the time of registration. Respondent has engaged in typosquatting, which further evinces bad faith.
Respondent failed to submit a response. The earliest disputed domain name was registered was October 19, 2010.
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."
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.
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.”).
Complainant owns rights in the GAMEFLY mark via trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,746,496 registered August 5, 2003) and uses the GAMEFLY mark for online retail services in the field of video games. Valid USPTO registrations satisfy Policy ¶ 4(a)(i), regardless of whether the respondent resides in the United States. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Accordingly, the Panel finds that Complainant has rights in the GAMEFLY mark pursuant to Policy ¶ 4(a)(i) as demonstrated by valid USPTO registrations.
The disputed domain names are confusingly similar to the GAMEFLY mark as the names differ from the mark by a single added or substituted letter. For example, the <gamafly.com> domain name substitutes a letter “a” for the “e” in the GAME portion of the mark and <gamefluy.com> inserts the letter “u” between the “l” and “y” in FLY. Additionally, the domain names add the generic top-level domain (“gTLD”) “.com.” Previous panels have found confusing similarity in similar cases. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); Royal Bank of Scotland Grp. plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (“The Panel finds that merely by misspelling Complainants’ mark, Respondent has not sufficiently differentiated the <privelage.com> domain name from the PRIVILEGE mark under Policy ¶ 4(a)(i).”). Here, the gamafly.com>, <gamefluy.com>, <gameflyl.com>, <gameflyt.com>, <gameflyu.com>, <gamelfly.com>, <gameoly.com>, <gamsfly.com>, <ganmefly.com>, <gemefly.com>, and <hamefly.com> disputed domain names are confusingly similar to the GAMEFLY mark pursuant to Policy ¶ 4(a)(i) despite the inclusion of the gTLD and the substitution or addition of a single letter.
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. 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 UDRP ¶ 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 lacks rights in the disputed domain names. The WHOIS information indicates that Respondent is not commonly known by the disputed domain names. Further, Respondent has not granted permission to use the mark in such a way. Based on the available evidence, including the WHOIS listing “Above.com Domain Privacy” as registrant, the Panel determines that Complainant has made its prima facie showing as to Policy ¶ 4(c)(ii), which was not refuted by Respondent. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent has not used the disputed domain names for a bona fide offering or a legitimate use. Respondent uses the majority of the domain names to redirect users to pages featuring third-party links, some of which compete with Complainant. All but the <gamafly.com> domain name resolve to promote links to competitive gaming sites, including “Free Xbox 360,” “PC Games,” and “Computer Games.” The use of confusingly similar domain names to promote competing links does not fall within the protections of Policy ¶¶ 4(c)(i) and (iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).
Respondent uses the other <gamafly.com> domain names to redirect to Complainant’s own website, which is done in violation the parties’ affiliate agreement. Prior panels have held that no rights or legitimate interests exist where the disputed domain name resolves to the complainant’s own website in violation of the affiliate agreement. See Cricket Commc’ns, Inc. v. Oliver, FA 954005 (Nat. Arb. Forum May 29, 2007) (concluding that the respondent had no rights or legitimate interests in disputed domain names containing the complainant’s marks even though it was a part of the complainant’s affiliate program, as the affiliate agreement expressly stated that affiliates could not register domain names containing the CRICKET mark). Accordingly, Respondent does not have Policy ¶ 4(a)(ii) rights in the <gamafly.com> domain name.
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent is using the majority of the disputed domain names to provide links to services and products in competition with Complainant, which disrupt Complainant’s own business, implicating Policy ¶ 4(b)(iii). All but the <gamafly.com> domain name resolve to promote links related to gaming sites, including “Free Xbox 360,” “PC Games,” and “Computer Games.” Such links compete with Complainant in the gaming field, and therefore the Panel finds evidence of bad faith disruption pursuant to Policy ¶ 4(b)(iii). See Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
Because Respondent generates revenue through these pay-per-click links, Respondent is in violation of Policy ¶ 4(b)(iv). In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), where the panel wrote, “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).” Here, the Panel finds similar evidence of Respondent’s bad faith use and registration under Policy ¶ 4(b)(iv) as the domain names resolve to promote competing gaming providers.
Respondent is using the <gamafly.com> disputed domain names to redirect users to Complainant’s own site, which is in violation of the affiliate agreement governing the parties’ relationship. Prior panels have found bad faith as a result of an affiliate violation. For example, in Cricket Commc’ns, Inc. v. Oliver, FA 954005 (Nat. Arb. Forum May 29, 2007), the panel found bad faith registration and use where the respondent registered domain names containing the complainant’s mark after enrolling in the complainant’s affiliate program. Here, Respondent’s violation of the governing affiliate agreement is evidence of Policy ¶ 4(a)(iii) bad faith.
The parties’ affiliation also demonstrates Respondent was aware of Complainant’s rights in the mark at the time of registration. Further, several of the disputed domain names resolve to feature links to Complainant, with its mark correctly spelled. Respondent had actual knowledge of Complainant’s rights in the mark, and therefore the Panel finds this to be additional evidence of bad faith under Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith).
Lastly, Respondent has engaged in typosquatting, which further evinces bad faith. Prior panels have found bad faith where typosquatting has occurred. To illustrate, the panel in Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003), in considering the likeness of the <zonelarm.com> domain name to the ZONEALARM mark wrote, “Respondent’s registration and use of a domain name that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself, is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).” Here, the disputed domain names differ from Complainant’s mark by a single added or substituted letter. As such, the Panel finds that Respondent has attempted to capitalize on the typing errors of Internet users and therefore finds evidence of typosquatting bad faith pursuant to Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gamafly.com>, <gamefluy.com>, <gameflyl.com>, <gameflyt.com>, <gameflyu.com>, <gamelfly.com>, <gameoly.com>, <gamsfly.com>, <ganmefly.com>, <gemefly.com>, and <hamefly.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: October 14, 2014
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