DECISION

 

GameChangerSF, Inc. v. tian xing

Claim Number: FA2310002066426

 

PARTIES

Complainant is GameChangerSF, Inc. ("Complainant"), represented by Neil Peluchette of Taft Stettinius & Hollister LLP, Indiana, USA. Respondent is tian xing ("Respondent"), Illinois, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <gamechangersfpro.com>, <gamechangerssfpro.com>, <gamechangersfapp.com>, and <gamechangerssfapp.com> ('the Domain Names'), registered with Gname.Com Pte. Ltd.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Dawn Osborne as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on October 16, 2023; Forum received payment on October 16, 2023.

 

On October 18, 2023, Gname.Com Pte. Ltd. confirmed by e-mail to Forum that the <gamechangersfpro.com>, <gamechangerssfpro.com>, <gamechangersfapp.com>, and <gamechangerssfapp.com> Domain Names are registered with Gname.Com Pte. Ltd. and that Respondent is the current registrant of the names. Gname.Com Pte. Ltd. has verified that Respondent is bound by the Gname.Com Pte. 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 October 25, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 14, 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@gamechangersfpro.com, postmaster@gamechangerssfpro.com, postmaster@gamechangersfapp.com, and postmaster@gamechangerssfapp.com. Also on October 25, 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 November 15, 2023 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dawn Osborne 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 Names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.       Complainant

The Complainant's contentions can be summarised as follows:

 

The Complainant is the owner of common law rights in the mark GAMECHANGER SF used in the USA for digital marketing services with first use in commerce evidenced as 2013. It owns <gamechangersf.com>.

 

The Domain Names registered in 2023 are confusingly similar to the Complainant's trade mark continuing it in its entirety and adding only extra letters which do not prevent such confusing similarity.

 

The Respondent does not have any rights or legitimate interests in the Domain Names, is not commonly known by them and is not authorised by the Complainant.

 

None of the Domain Names have been connected to active web sites. The <gamechangersfpro.com> domain has been used for a phishing scam impersonating the Complainant, using its domain name address and logo which is not a bona fide offering of goods or services or a legitimate non commercial or fair use. It is registration and use in bad faith in actual knowledge of the Complainant. Multiple registrations of Domain Names containing the Complainant's mark is also bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Complainant is the owner of common law rights in the mark GAMECHANGER SF used in the USA for digital marketing services with first use in commerce evidenced since 2013. It owns <gamechangersf.com>.

 

The Domain Names were registered in 2023 and do not point to active web sites. The <gamechangersfpro.com> domain has been used for a phishing scam impersonating the Complainant, using its domain name address and logo. The Respondent has registered multiple Domain Names containing the Complainant's mark.

 

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").

 

Identical and/or Confusingly Similar

The Domain Names consists of Complainant's mark GAMECHANGER SF (in which the Complanant owns common law right having used it in the USA for digital marketing services since at least 2013), additional letters including the generic terms 'pro' or 'app', and the gTLD.com.

 

The Panel agrees that the addition of random letters does not distinguish any of the Domain Names from the Complainant's trade mark pursuant to the Policy. See Twitch Interactive Inc. v Antonio Teggi, FA 1626528 (Forum Aug 3, 2015) (where an additional 'c' was added).

 

Adding the generic terms 'app' or 'pro' to the Complainant's mark does not prevent confusing similarity between the Domain Names and the Complainant's GAMECHANGER SF mark which is still clearly recognisable in the Domain Names. See Abbott Laboratories v Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of generic terms particularly terms pertaining to complainant's business, do not adequately distinguish a disputed domain name from complainant's mark under Policy 4(a)(i)).

 

The gTLD .com is a necessary component of a domain name. It forms a functional role in the Domain Names and does not serve to distinguish the Domain Names from the Complainant's mark. See Red Hat Inc v Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).

 

Accordingly, the Panel holds that the Domain Names are confusingly similar for the purposes of the Policy with GAMECHANGER SF, a mark in which the Complainant has rights.

 

As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.

 

Rights or Legitimate Interests

The Complainant has not authorised the use of its mark. There is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Names or any of them. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).

 

The <gamechangersfpro.com> domain has been used in a fraudulent phishing scheme impersonating the Complainant, referring to the Complainant and using its domain name address and the Complainant's logo. This is deceptive and confusing. As such it cannot amount to the bona fide offering of goods and services or a legitimate non commercial or fair use. (See DaVita Inc. v Cynthia Rochelo FA 1738034 (Forum July 20, 2017) finding that 'Passing off in furtherance of a fraudulent scheme is not considered a bona fide offering of goods or services or legitimate non commercial or fair use'). 

 

None of the Domain Names point to active sites. See Hewlett-Packard Co. v Shemesh, FA 434145 (Forum Apr. 20, 2005) (where the panel found inactive use is not a bona fide offering of goods or services pursuant to Policy 4(c)(i)).

 

The Respondent has not answered this Complaint or rebutted the prima facie case evidenced by the Complainant as set out herein.

 

As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

Impersonating a complainant by use of a domain name containing the complainant's mark, here <gamechangersfpro.com>, in a fraudulent phishing scheme is disruptive and evinces bad faith registration and use. See Microsoft Corporation v Terrence Green/ Whois Agent/Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding that respondent's use of the disputed domain name to send fraudulent e mails constituted bad faith registration and use pursuant to Policy 4(b)(iii)). Reference to the Complainant and the use of its domain name address and logo as part of the phishing scheme shows the Respondent had actual knowledge of the Complainant, its rights, business and services.

 

None of the Domain Names point to active web sites. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from or exploit the trade mark of another. Passive holding of domain names containing an established third party mark is often held to be bad faith registration and use. See Telstra Corporation Limited v Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). There is also a very good likelihood that the Respondent may use the remaining Domain Names for phishing.

 

The Respondent has also registered several domain names containing the Complainant's mark showing a pattern of bad faith activity. See Twentieth Century Fox Film Corporation v. oranges arecool XD / orangesarecool.com, FA 1558045 (Forum July 10, 2014) (finding that the respondent's registration of multiple domain names in the instant proceeding was evidence of bad faith registration and use of the domain names under Policy ¶ 4(b)(ii)).

 

As such, the Panelist believes that the Complainant has made out its case that the Domain Names were registered and used in bad faith and has satisfied the third limb of the Policy under 4(b)(ii) and (iii).

 

DECISION

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

 

Accordingly, it is Ordered that the <gamechangersfpro.com>, <gamechangerssfpro.com>, <gamechangersfapp.com>, and <gamechangerssfapp.com> Domain Names be TRANSFERRED from Respondent to Complainant.

 

 

 

Dawn Osborne, Panelist

Dated: November 15, 2023