Niantic, Inc. v. Markiz Valeriy Vladimirovich / SpaceWeb client
Claim Number: FA1901001827282
PARTIES
Complainant is Niantic, Inc. (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, USA. Respondent is Markiz Valeriy Vladimirovich / SpaceWeb client (“Respondent”), Russia
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ingress-shop.net>, registered with OnlineNIC, 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.
James Bridgeman as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 28, 2019; the Forum received payment on January 28, 2019.
On January 30, 2019, OnlineNIC, Inc. confirmed by e-mail to the Forum that the <ingress-shop.net> domain name is registered with OnlineNIC, Inc. and that Respondent is the current registrant of the name. OnlineNIC, Inc. has verified that Respondent is bound by the OnlineNIC, 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 February 1, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 21, 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-shop.net. Also on February 1, 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.
A timely Response was received and determined to be complete on February 7, 2019.
On February 11, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman as Panelist.
Also on February 11 2019, Complainant filed Additional Submissions and on February 19, 2019, Respondent filed an Additional Submission that has been admitted and considered by the Panel.
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.
A. Complainant
Complainant submits that it is the owner of an online and downloadable mobile game called “INGRESS” which it has marketed since at least as early as 2012. Complainant submits that its INGRESS game was among the first augmented-reality video games and has been downloaded over 20 million times.
Complainant relies on its rights in the registered trademarks listed below and its rights at common law acquired through the widespread sales of goods and services offered under its INGRESS mark throughout the world since its first launch in 2012.
Complainant submits that the disputed domain name is confusingly similar to Complainant’s INGRESS mark, arguing that the disputed domain name wholly incorporates the INGRESS mark and adds the generic and descriptive term “shop”.
Complainant cites inter alia the decisions of previous panels that have found confusing similarity when a respondent merely adds a generic or descriptive term to a complainant's mark including PG&E Corp. v. Anderson, WIPO Case D2000-1264 (Nov. 22, 2000) (finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the complainant.
Complainant argues that the inclusion of “.net” gTLD does not diminish the confusing similarity with Complainant’s INGRESS mark. Complainant cites inter alia the decision in Abbott Labs. v. Whois Service c/o Belize Domain WHOIS Service, FA 1254682 (Forum May 14, 2009) (“addition of a gTLD is irrelevant in distinguishing a disputed domain name from a registered mark”).
Complainant submits that Respondent acquired the disputed domain name on January 16, 2016, whereas Complainant has used the INGRESS mark continuously in commerce at least as early as 2012. Complainant submits that therefore it trademark registrations and rights in its INGRESS mark predate Respondent’s acquisition of the disputed domain name. Under the UDRP, valid trademark registrations are sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i) and panels have continuously found that evidence of a registration with the USPTO is adequate to establish rights in a mark regardless of where a respondent resides. In this regard Complainant refers inter alia to the decision of the panel in Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Forum Mar. 5, 2007) (“The Panel finds that Complainant has established trademark rights in the CLEAR BLUE marks through introduction of the certificates for its U.S. registration for those trademarks”).
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain under Policy ¶ 4(a)(ii) name, arguing that Respondent has no license or authorization to use Complainant’s INGRESS mark and is not commonly known by the disputed domain name or any variant of Complainant’s INGRESS mark; that Respondent has not and is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate non-commercial or fair use but instead uses the disputed domain name to operate a commercial enterprise designed to disrupt Complainant’s business and take advantage of an implied and false affiliation with Complainant.
Complainant specifically alleges that the website to which the disputed domain name resolves offers items for sale that are meant to be used in Complainant’s INGRESS game. Complainant refers to screenshots of the website associated with the disputed domain name which are attached as an exhibit to the Complaint and argues that Respondent offers items for sale under the INGRESS mark that are designed to be used by players to cheat in Complainant’s game, such as “bots” and passcodes and is using them to play the official INGRESS game in a manner that violates Complainant’s Terms of Service. Further, Respondent also sells physical items, including hats, jackets and other items bearing the INGRESS mark and/or various designs from the INGRESS game.
Complainant submits that other panels have held that such use does not amount to bona fide offering of goods or services or a legitimate non-commercial or fair use under the Policy. Complainant asserts that a respondent’s attempt to pass itself off as complainant for commercial gain demonstrates a lack of rights and legitimate interests. Complainant cites inter alia Netflix, Inc. v. Irpan Panjul / 3corp.inc, FA 1741976 (Forum Aug. 22, 2017) (holding that respondent lacked rights and legitimate interests where it passed itself off as complainant by: (1) registering a domain that wholly incorporated complainant’s mark, (2) using the domain to operate a site that mimicked complainant’s site to sell complainant’s unauthorized material, and (3) not clarifying in any way that that there was no commercial connection with complainant).
Complainant submits that the disputed domain name was registered and Is being used in bad faith.
Complainant submits that its INGRESS mark is so well known that the only plausible inference that can be derived from Respondent’s registration of the disputed domain name (which wholly incorporates Complainant’s INGRESS mark) is that Respondent registered the domain to take advantage of and intentionally trade on the goodwill associated with Complainant’s INGRESS mark.
Complainant argues that Respondent’s prior knowledge of Complainant’s trademark indicates Respondent’s bad faith registration pursuant to Policy ¶ 4(a)(iii), citing Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration); and moreover, argues that a knowledge of Complainant’s trademark rights can be inferred from the notoriety of Complainant’s trademark. See Altria Group, Inc. & Altria Group Dist. Co. v. ZhangXin, FA 1729134 (Forum June 4, 2017).
Furthermore, the website associated with the disputed domain name is based on and specifically references Complainant’s INGRESS game. The totality of circumstances in this case demonstrates that Respondent had actual knowledge of Complainant’s rights in the INGRESS mark prior to registering the disputed domain name and, therefore, Respondent acted in bad faith when registering the disputed domain name.
Complainant submits that by offering services directly related to Complainant in violation of Complainant’s terms of service for commercial gain indicates bad faith use and registration under the Policy, citing inter alia Google Inc. v David Miller, FA 1067791 (Forum Oct. 24, 2007) (finding bad faith where respondent’s domain <youtubex.com> violated complainant’s terms of service and was meant to attract, for commercial gain, confused Internet users).
Complainant has submitted evidence that Respondent had also registered the domain name <ingress-items-buy.com> on the same day it registered the disputed domain name and argues that this pattern is further convincing evidence that Respondent has registered and used the disputed domain name in bad faith. In this regard Complainant refers to Bed Bath & Beyond Procurement Co. Inc. v. Ready Asset, FA 1527429 (Forum Dec. 4, 2013) (“Multiple domain name registrations involving a single trademark constitutes a bad faith pattern of registration and use pursuant to Policy ¶ 4(b)(ii).”); YAHOO! INC v. SYRYNX, INC., WIPO Case D2000-1675 (Jan. 30, 2001) (finding a bad faith pattern due to respondent's registration of two domain names incorporating the complainant's YAHOO! mark).
B. Respondent
Respondent denies that the disputed domain name is connected with Complainant’s trademark arguing that Complainant’s mark is connected only with mobile/pc games or apps or other software and branded clothes.
There are more than 50 different domain names registered that incorporate the word “INGRESS” and Respondent argues that Complainant has no rights to all these domains.
Respondent submits that the word “ingress” has different meanings in different contexts. It can mean “entrance” in English and Italian; in astrology, ingress is the arrival of the sun, moon, or a planet in a specified constellation or part of the sky; in electronics, ingress traffic is network traffic that originates from outside of the network's routers and proceeds toward a destination inside of the network.
Respondent submits that there is a large market in Complainant’s goods and services for the INGRESS game, for example on Amazon, AliExpress, and Alibaba, and argues that Complainant cannot own these marketplaces; that Complainant’s rights exist only in the market for its mobile app/software but has no rights otherwise to the word “INGRESS”.
Respondent denies that the website to which the disputed domain name resolves was ever used for commercial purposes and asserts that all content on the website was created by freelancers who created unique photos and pictures.
Respondent states that only now, which is four years after registration of the disputed domain name, Complainant has moved to bring this Complaint. Respondent argues that it is because Complainant has now launched the Ingress Prime game where they have launched their own shop with in-game items.
When Respondent launched his website two years ago, he did not anticipate that Complainant would be expanding its business to in-game items.
Respondent states that if Complainant needs the disputed domain name it ought to have tried to purchase it from him for a price that would consist of the costs of 5 years of registration, 5 years of a SSL certificate, the costs associated with his “scrapper” software, and the cost of all efforts that he has spent to promote the disputed domain name on search engines.
C. Complainant’s Additional Submissions
In Additional Submissions, Complainant notes that sometime between the time it submitted this Complaint and Respondent submitted its Response, Respondent significantly altered the website associated with the disputed domain name in order to lessen the appearance that the disputed domain name targets Complainant.
For instance, the disputed domain name now redirects to a website at an address that does not include Complainant’s INGRESS mark. Complainant has submitted evidence of these changes and submits that the changes themselves, and their timing, reveal that Respondent’s claims in its Response that the disputed domain name does not target Complainant are disingenuous.
Complainant submits that it is clear that Respondent made these changes in an attempt to mislead the panelist and obscure Respondent’s already-established bad faith.
Addressing Respondent’s claim in its Response that it registered the disputed domain name two years before Complainant launched an in-app purchase feature to its Ingress game, Complainant states that this would equate to approximately 2013 whereas the disputed domain name was not registered until January 16, 2016.
Complainant submits that Respondent’s actions are an attempt to manipulate its priority date and are therefore a further sign of bad faith registration and use of the disputed domain name.
Finally, Complainant argues that the Response contains an explicit offer to sell the disputed domain name to Complainant. Numerous panels have established that offers to sell a domain name to a complainant indicate that the domain name was registered and used in bad faith. See Lockheed Martin Corporation v. Grassroots Fitness Project, FA 1504539 (Forum July 15, 2013); Google Inc. v. Trademark Worx LLC, FA 1370035 (Forum Mar. 16, 2010).
D. Respondent’s Additional Submissions
In its Additional Submissions, Respondent re-asserts that the disputed domain name is used for “not for profit” purposes and the website to which the disputed domain name resolves carries an informational purpose. Respondent asserts that every Internet user has a right to access any information posted on websites. Respondent argues that his website to which the disputed domain name resolves is a database with such information including direct web links to manuals for the game.
Respondent repeats that Complainant wants to take the disputed domain name in order to launch its new shop with the release of its new Ingress Prime product.
He states that he registered disputed domain name in 2016 but also submits a copy of a certificate of registration of a company that includes the name “INGRESS shop” in Cyrillic script OOO ИНГРЕСШОП КОМПАНИЯ РСК dated 30 April 2014.
Finally, Respondent refers to provisions of the Civil Code of the Russian Federation and questions whether Complainant has rights in the Russian Federation. He asserts that domain names are not trademarks.
FINDINGS
Complainant has used the INGRESS continuously in commerce related to its online and downloadable mobile game called “INGRESS”, since at least as early as 2012 and owns the following U.S. trademark registrations for the INGRESS mark:
· US Trademark INGRESS, registration number 4377771 registered on July 30, 2013 for the following goods in international Class 9: Computer game software; downloadable computer game software for use on wireless devices; video game programs; interactive video game programs; downloadable electronic game programs and computer software platforms for social networking; and the following services in Class 41: Entertainment services, namely, providing online computer and electronic games; providing a web-based system and on-line portal for users to play online computer and electronic games; providing virtual environments in which users can interact through social games for recreational, leisure or entertainment purposes.
· US Trademark INGRESS, registration number 5336059, registered on November 14, 2017, for the following goods in Class 25: Clothing, namely, t-shirts, sweatshirts, hooded sweatshirts, jackets, jerseys, hats, gloves.
The disputed domain name was registered on January 16, 2016 and resolves to a website maintained by Respondent.
There is very little information available about Respondent. He admits that he is the registrant of the disputed domain name and maintains the website to which it resolves.
Respondent claims that the website to which it resolves has been established for non-commercial purposes and Complainant disputes this.
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.
Preliminary Issue: Concurrent Proceedings
In the Complaint, Complainant has certified that no other legal proceedings have been commenced or terminated in connection with or relating to the disputed domain name. UDRP Rule 3(b)(xi).
In the Additional Submissions, Respondent has stated that it has issued proceedings in relation to this dispute in his local administrative court in Russia. He provides a reference case number КВ№1673.П14/2019 but provides no further information or evidence that the proceedings were issued, that they were served or what reliefs are sought.
In appropriate circumstances, if there were bona fide proceedings in progress before a court properly seized thereof, in relation to a dispute identical to that which is the subject of the Complaint, then this Panel would certainly consider whether it would be appropriate to proceed with this Complaint. There is however, no evidence to prove that such proceedings are in being, and Complainant has averred that it has not been served with any such proceedings. In these circumstances, this Panel has decided to proceed to decide this Complaint.
Complainant has furnished evidence of its rights in the INGRESS mark acquired through its ownership of the abovementioned trademark registrations and extensive use of the mark in relation to its mobile app and game.
The disputed domain name consists of Complainant’s trademark in its entirely in combination with the descriptive word “shop”, a hyphen and the <.net> gTLD extension.
Complainant’s mark is the dominant element of the disputed domain name; the word “shop” is descriptive of the activity on the website to which the disputed domain name resolves; and in the circumstances of this case, both the hyphen and the generic <.net> gTLD extension elements may be ignored for the purpose of comparison with Complainant’s INGRESS mark.
Having compared both Complainant’s mark and the disputed domain name this Panel finds that the disputed domain name is confusingly similar to Complainant’s INGRESS trademark and so the first element of the test in Policy ¶ 4(a)(i) is satisfied.
Complainant has made out a prima facie case that Respondent has no rights or legitimate interest in the disputed domain name and in such circumstances the balance of production shifts to Respondent to prove such rights.
On the balance of probabilities, despite Respondent’s denial, the disputed domain name is being used for commercial purposes; the website to which the disputed domain name resolves is targeting and infringing Complainant’s rights; and the certificate of registration of the company name incorporating the work INGRESS does not provide any evidence of acquired rights or legitimate interests in the disputed domain name.
This Panel finds that Respondent has failed to discharge the burden of production and Complainant has therefore satisfied the second element of the test in Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
This Panel finds that the disputed domain name was registered in bad faith to target the business of Complainant. Respondent was aware of Complainant and its game when the disputed domain name was registered and the name was chosen because it would be associated with Complainant, its goodwill, name, trademark and game.
Despite Respondent’s denial, there is more than ample evidence to allow this Panel to find on the balance of probabilities that the disputed domain name is being used by Respondent for commercial purposes. On the balance of probabilities, Respondent’s arguments that this is an information only website are disingenuous.
Furthermore the extensive use of the phrase “INGRESS shop” on Respondent’s website to which the disputed domain name resolves creates the impression that the products on offer are produced by or associated with Complainant which they are not.
On the evidence adduced, this Panel finds that the disputed domain name was registered and is being used in order to take predatory advantage of Complainant’s name, trademark, goodwill and reputation.
In the circumstances, this Panel finds that the disputed domain name has been registered and is being used in bad faith and Complainant has therefore satisfied the third and final element of the test in Policy ¶ 4(a)(iii). Complainant is therefore entitled to succeed in this Complaint.
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-shop.net> domain name be TRANSFERRED to Complainant.
James Bridgeman SC, Panelist
Dated: February 25, 2019
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