Niantic, Inc. v. Dmitry Bezrukov / VladimirShcherbinin
Claim Number: FA1901001827280
Complainant is Niantic, Inc. (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, USA. Respondent is Dmitry Bezrukov / VladimirShcherbinin (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ingress.news>, registered with NameCheap, Inc., and <ingress-store.net>, registered with Registrar of Domain Names REG.RU LLC.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 28, 2019; the Forum received payment on January 28, 2019.
On January 29, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <ingress.news> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. On January 30, 2019, Registrar of Domain Names REG.RU LLC confirmed by e-mail to the Forum that the <ingress-store.net> domain name is registered with Registrar of Domain Names REG.RU LLC and that Respondent is the current registrant of the name. Registrar of Domain Names REG.RU LLC and NameCheap, Inc. have verified that Respondent is bound by the respective registration agreements 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 February 5, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 25, 2019 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@ingress.news, postmaster@ingress-store.net. Also on February 5, 2019, 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 1, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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 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 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.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends and provides evidence that the domain names’ resolving webpages link to one another. Additionally, Complainant claims and provides evidence that the <ingress-store.net> links to a third domain name, <suffer.expert>, which has historically redirected to the <ingress.news> domain name.
The Panel finds that Complainant has sufficiently presented evidence demonstrating that the listed entities are jointly controlled.
PRELIMINARY ISSUE: SUPPORTED LANGUAGE REQUEST
The Panel notes that Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Russian language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. In making this determination, the Panel may weigh the relative time and expense in enforcing the Russian language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
In this case, Complainant argues that Respondent is fully capable of continuing this proceeding in English as evidenced by:
1) The Disputed Domains are based entirely on English terms, In particular, the <ingress-store.net> domain includes the English word “store”, and the Respondents chose the English-language top-level-domain “.news” for the <ingress.news> domain; and
2) The websites associated with the Disputed Domains are entirely in English and target English speakers.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
A. Complainant
Complainant, Niantic Inc., uses the INGRESS mark in connection with a popular online and downloadable mobile game. Complainant has rights in the INGRESS mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,377,771, registered July 30, 2013).
Respondent’s <ingress-store.net> and <ingress.news> domain names are confusingly similar to Complainant’s mark because Respondent includes the INGRESS mark in each domain name, adds the generic term “store” and a “.net” generic top-level domain (“gTLD”) to the <ingress-store.net> domain name, and adds a “.news” gTLD to the <ingress.news> domain name.
Respondent lacks rights and legitimate interests in the <ingress.news> and <ingress-store.net> domain names because Respondent is not commonly known by the disputed domain names and is not authorized or permitted to use Complainant’s mark in any fashion. Additionally, Respondent fails to use the disputed domain names in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain names to pass off as Complainant, using the <ingress.news> domain name to gain commercially from providing information acquired from Complainant’s game, and using the <ingress-store.net> domain name to sell items to be used in Complainant’s game. Further, these uses violate Complainant’s Terms of Service.
Respondent registered and uses the <ingress.news> and <ingress-store.net> domain names in bad faith. Respondent engages in a pattern of bad faith registration and use based on the two domain names at issue in the instant proceeding and two other domain names using the INGRESS mark that were registered under the same IP address. Further, Respondent uses the disputed domain names in an attempt to pass off as Complainant for commercial gain. Moreover, Respondent had actual knowledge of Complainant’s rights in the INGRESS mark prior to registering the disputed domain name.
B. Respondent
Respondent did not submit a response. The Panel notes that the <ingress-store.net> domain name was registered on December 14, 2017, and the <ingress.news> domain name was registered on April 12, 2018.
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(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 (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
has rights in the INGRESS mark based upon its registration of the mark with the
USPTO. Registration with the USPTO generally establishes a complainant’s rights
in a mark for purposes of Policy ¶ 4(a)(i). See Liberty Global Logistics,
LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a
mark with the USPTO sufficiently establishes the required rights in the mark
for purposes of the Policy.”). Here, Complainant provides printouts of its
USPTO registrations for the INGRESS mark (e.g., Reg. No. 4,377,771, registered
July 30, 2013). Therefore, the Panel concludes that Complainant has rights in
the INGRESS mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <ingress.news> and <ingress-store.net> domain names domain names are confusingly similar to Complainant’s mark because Respondent wholly incorporates the INGRESS mark in each domain name, adds a generic term to the <ingress-store.net> domain name, and adds a gTLD to each domain name. The Panel also notes that Respondent adds a hyphen to the <ingress-store.net> domain name. Such changes are typically insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”). Here, Respondent incorporates the INGRESS mark in its entirety in the domain name, adds a hyphen, the generic term “store,” and a “.net” gTLD to the <ingress-store.net> domain name, and adds a “.news” gTLD to the <ingress.news> domain name. Therefore, the Panel concludes that Respondent’s <ingress.news> and <ingress-store.net> domain names are confusingly similar to Complainant’s INGRESS mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent lacks rights and legitimate interests in the <ingress.news> and <ingress.news> domain names because Respondent is not authorized or permitted to use Complainant’s INGRESS mark and is not commonly known by the disputed domain names. Where a response is lacking, relevant WHOIS information may be used to identify the respondent per Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson 1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization from a complainant to use its marks may be further evidence that a respondent is not commonly known by a disputed domain name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). The Panel notes that the WHOIS of record identifies Respondent as “Dmitry Bezrukov / VladimirShcherbinin,” and no information in the record shows that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain name. Accordingly, the Panel concludes that Respondent lacks rights and legitimate interests in the <ingress.news> and <ingress.news> domain names under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to use the <ingress.news> and <ingress.news> domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the domain names to pass off as Complainant for commercial gain. Passing off does not constitute a bona fide offering or a legitimate use under Policy ¶¶ 4(c)(i) or (iii). See Netflix, Inc. v. Irpan Panjul / 3corp.inc, FA 1741976 (Forum Aug. 22, 2017) (“The usage of Complainant’s NETFLIX mark which has a significant reputation in relation to audio visual services for unauthorised audio visual material is not fair as the site does not make it clear that there is no commercial connection with Complainant and this amounts to passing off . . . As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name.”); see also Dream Horse Classifieds v. Mosley, FA 381256 (Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)). Here, Complainant claims that the <ingress.news> domain name resolves to a webpage that mimics Complainant’s color scheme and font, and uses information acquired from Complainant’s game and users. Further, Complainant claims that Respondent uses the <ingress-store.net> domain name to sell items to be used in Complainant’s game. Therefore, the Panel concludes that Respondent fails to use the <ingress.news> and <ingress-store.net> 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).
Next, Complainant asserts that Respondent fails to use the <ingress.news> and <ingress-store.net> domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the domain names to violate and facilitate others’ violation of Complainant’s Terms of Service. Use of a dispute domain name to violate a complainant’s Terms of Service may not constitute a bona fide offering or a legitimate use under Policy ¶¶ 4(c)(i) or (iii). See Twitter, Inc. v. Domain Admin / Privacy Protect, LLC (PrivacyProtect.org), FA 1753603 (Forum Nov. 13, 2017) (holding that respondent’s use of the domain <twitterjapanese.com> to offer fake Twitter followers, which violated Twitter’s Terms of Service, was neither a bona fide offering of goods or services nor a legitimate noncommercial fair use); see also Google Inc. v David Miller, FA1067791 (Forum Oct. 24, 2007) (finding that respondent’s use of the <youtubex.com> domain name in association with a website that enabled Internet users to download and save video clips from Google’s YouTube service, which violated Google’s YouTube Terms of Service, did not constitute either a bona fide offering of goods or services or a legitimate noncommercial or fair use). Here, Complainant claims that Respondent violates Complainant’s Terms of Service because Respondent uses the <ingress.news> domain name to host data scraped from Complainant’s servers and users, and uses the <ingress-store.net> domain name to sell items to be used in Complainant’s game. The Panel agrees that Complainant’s argument is supported by the cited precedent and cognizable under the Policy, and concludes that Respondent fails to use the <ingress.news> and <ingress-store.net> 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).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent engages in a pattern of bad faith registration and use based on the two allegedly infringing domain names in the instant case and Respondent’s alleged ownership of an additional domain name that incorporates Complainant’s INGRESS mark. The presence of multiple domain names at issue in a single case may establish a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). See Microsoft Corporation and Skype v. zhong biao zhang / Unknown company / zhong zhang, FA1538218 (Forum Feb. 20, 2014) (holding that the respondent’s registration of three domain names incorporating variants of the complainant’s SKYPE mark reflected a pattern of bad faith registration under Policy ¶ 4(b)(ii)). Here, Complainant cites the <ingress.news> and <ingress-store.net> domain names, claiming that they are owned by the same Respondent. Additionally, Complainant asserts that an additional domain name that is not part of the instant case, <ingress-guard.uk>, is owned by Respondent because it is registered under the same IP address and contains the same content as the <ingress.news> domain name. The Panel agrees that Respondent owns multiple domain names incorporating Complainant’s INGRESS marks and finds that Respondent registered and uses the <ingress.news> and <ingress-store.net> domain names in bad faith under Policy ¶ 4(b)(ii).
Next, Complainant asserts that Respondent registered and uses the <ingress.news> and <ingress-store.net> domain names in bad faith because Respondent uses the domains to pass off as Complainant for commercial gain. Passing off as a complainant for commercial gain may evince bad faith under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). As previously indicated, Complainant claims that the <ingress.news> domain name resolves to a webpage that mimics Complainant’s color scheme and font, and uses information acquired from Complainant’s game and users, and that the <ingress-store.net> domain name resolves to a webpage featuring listings for items to be used in Complainant’s game. The Panel therefore concludes that Respondent registered and uses the <ingress.news> and <ingress-store.net> domain names in bad faith under Policy ¶ 4(b)(iv).
Further, Complainant claims that Respondent had actual knowledge of Complainant’s rights in the INGRESS mark prior to registering the <ingress.news> and <ingress-store.net> domain names. Actual knowledge of complainant’s rights in a mark may support a finding of bad faith under Policy ¶ 4(a)(iii), and can be established through evidence of the respondent’s use of it. Here, Complainant claims that Respondent exhibits its knowledge of the Complainant’s rights in the INGRESS mark through references to Complainant’s Ingress game at the disputed domain names’ resolving webpages. The Panel therefore concludes that Respondent had actual knowledge of Complainant’s rights in the INGRESS mark prior to registering the <ingress.news> and <ingress-store.net> domain names, thereby supporting a finding of bad faith registration under Policy ¶ 4(a)(iii).
Complainant has therefore also satisfied 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 <ingress.news> and <ingress-store.net> domain names be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: March 15, 2019
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