DECISION

 

BoardGameGeek, LLC v. Norman Donovan

Claim Number: FA2308002056445

PARTIES

Complainant is BoardGameGeek, LLC (“Complainant”), represented by Bruce A. McDonald of SMITH, GAMBRELL & RUSSELL, LLP, District of Columbia, USA.  Respondent is Norman Donovan (“Respondent”), Virginia, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <boardgamegeekstore.shop>, registered with NameCheap, 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.

 

Alan L. Limbury, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on August 7, 2023. Forum received payment on August 8, 2023.

 

On August 7, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <boardgamegeekstore.shop> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name.  NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 August 8, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 28, 2023 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@boardgamegeekstore.shop.  Also on August 8, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On August 29, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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

Complainant is a Texas limited liability company engaged as an online forum for board gaming hobbyists and a game database that holds reviews, images and videos for over 125,600 different tabletop games. Complainant offers these services from its website at “www.boardgamegeekstore.com”.

 

Since 2000, Complainant has made continuous and exclusive use of its BOARD GAME GEEK service mark. By 2013, Complainant’s mark was famous in the field of board games based on annual website analytics of more than 570 million page views, 80 million visits, 24 million new visits and 56 million new visitors, numbers that have grown since then.

 

Complainant registered the BOARD GAME GEEK service mark in 2022 with the United States Patent and Trademark Office (“USPTO”). Respondent’s <boardgamegeekstore.shop> domain name is confusingly similar to Complainant’s mark.

 

Respondent has no right or legitimate interest in the <boardgamegeekstore.shop> domain name. Complainant has not authorized Respondent to use Complainant’s mark in any domain name or otherwise and there is no evidence that Respondent is commonly known by the name “Board Game Geek.”

 

The website to which Respondent’s <boardgamegeekstore.shop> domain name resolves is in direct competition with Complainant’s website at “www.boardgamegeekstore.com”. Respondent advertises itself as “Basel & Co.,” ostensibly located at 33 Tenmile, Virginia Beach, Virginia.  Complainant’s investigation reveals that there is no such entity, no such address, and that other websites associated with that ostensible address have been attributed to a “scam”. Respondent’s website is one of multiple cookie-cutter websites advertising goods and services, all with an identical template, all displaying the same fictitious name and false address.

 

Respondent’s bad faith is evidenced by his use of a fictitious name and

false address to conceal his actual name and address from the public on his cookie-cutter websites. Respondent’s business model includes the registration of multiple domain names incorporating trademarks with descriptive and generic terms including the top-level domain “.shop”. While some of Respondent’s domain names are comprised solely of generic or descriptive terms, enough of them incorporate trademarks to support an inference of bad faith for purposes of a prima facie showing.

 

Even if Complainant’s BOARD GAME GEEK trademark had not acquired distinctiveness in connection with board games as early as 2013, there is nothing descriptive or generic about “GEEK” in connection with board games. Therefore, it is impossible to find that Respondent’s incorporation of Complainant’s mark was inadvertent or in good faith. This would be true even if the indicia of fraud were not otherwise apparent in the record, as they are in the present case, by Respondent’s use of a fictitious name and non-existent business address on a large number of cookie-cutter websites incorporating and imitating trademarks, including Complainant’s trademark.

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has established all the elements entitling it to relief.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).

 

The Panel finds as follows with respect to the matters at issue in this proceeding.

 

Identical and/or Confusingly Similar

Complainant has shown that it has rights in the BOARD GAME GEEK service mark through registration with the USPTO (Reg. No. 6,842,365, registered on September 13, 2022, for “providing online electronic bulletin boards for transmission of messages among computer users concerning board games”, in International Class 38, claiming first use in commerce on January 20, 2000). The Panel finds Respondent’s <boardgamegeekstore.shop> domain name to be confusingly similar to Complainant’s mark, only differing by the addition of the word “store”, which does nothing to distinguish the domain name from the mark, and the inconsequential “.shop” generic top-level domain (“gTLD”), which may be ignored.

 

Complainant has established this element.

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.

 

(i)       before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

 

(ii)      Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or

 

(iii)     Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

 

The <boardgamegeekstore.shop> domain name was registered on May 2, 2023 several years after Complainant has shown that its BOARD GAME GEEK mark and “www.boardgamegeekstore.com” website had become well-known. It resolves to a website advertising goods at substantial discounts, including board games.

 

These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <boardgamegeekstore.shop> domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019). Respondent has made no attempt to do so.

 

The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.

 

Complainant has established this element.

 

Registration and Use in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:

(iv)     by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.

The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant’s well-known BOARD GAME GEEK mark and its “www.boardgamegeekstore.com” website when Respondent registered the <boardgamegeekstore.shop> domain name and that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark as to the source of Respondent’s website and of the goods or services promoted on that website. This demonstrates registration and use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).

 

Complainant has established this element.

 

DECISION

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

 

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

 

 

 

Alan L. Limbury, Panelist

Dated:  August 30, 2023

 

 

 

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