My Gameroom LLC v. Domain Admin / Facebook, Inc.
Claim Number: FA2012001923613
Complainant is My Gameroom LLC (“Complainant”), represented by Tamara S. Pester of Tamara S. Pester, LLC, Colorado, USA. Respondent is Domain Admin / Facebook, Inc. (“Respondent”), California, USA, represented by David Taylor/Jane Seager of Hogan Lovells LLP, Paris, France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gameroom.com>, registered with RegistrarSEC 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 2, 2020; the Forum received payment on December 2, 2020.
On December 3, 2020, RegistrarSEC LLC confirmed by e-mail to the Forum that the <gameroom.com> domain name is registered with RegistrarSEC LLC and that Respondent is the current registrant of the name. RegistrarSEC LLC has verified that Respondent is bound by the RegistrarSEC LLC 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 December 10, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 30, 2020 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 email@example.com. Also, on December 10, 2020, 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 December 24, 2020.
On December 30, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant provides online gaming services and platforms for various users. Complainant has rights in the MY GAMEROOM marks through its registrations with the United States Patent and Trademark Office (“USPTO”), as well as its common law rights. (e.g. Reg. 5,599,648, registered Nov. 6, 2018; Reg. 5,610,251, registered Nov. 20, 2018). Respondent’s <gameroom.com> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety, removes the word “my”, and adds the “.com” generic top-level domain (“gTLD”) to the end of the mark.
Respondent lacks rights and legitimate interests in the <gameroom.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its MY GAMEROOM mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead attempts to divert internet users to the disputed domain name’s resolving website, where Respondent, hosts competing services.
Respondent registered and uses the <gameroom.com> domain name in bad faith. Respondent disrupts Complainant’s business for commercial gain by attempting to divert internet users to the disputed domain name’s resolving website, where Respondent offers competing services. Respondent registered the disputed domain name with bad faith actual knowledge of Complainant’s rights in the MY GAMEROOM mark. Respondent registered and uses the disputed domain name with opportunistic bad faith.
Respondent runs a series of tech, social media, and other platforms, including gaming. Respondent’s <gameroom.com> domain name is not identical to Complainant’s MY GAMEROOM mark. Complainant lacked common law rights in the MY GAMEROOM mark at the time of Respondent’s purchase and registration of the disputed domain name.
Respondent uses the <gameroom.com> domain name in connection with a bona fide offering of goods and services. Respondent made demonstrable preparations to use the disputed domain name in conjunction with a use that corresponds to its name. Complainant has failed to demonstrate that Respondent lacks rights and legitimate interests in the disputed domain name.
Respondent did not register and does not use the <gameroom.com> domain name in bad faith. Respondent’s registration of the disputed domain name predates Complainant’s claimed rights in the mark. Complainant has failed to demonstrate any evidence of bad faith on behalf of Complainant. Complainant has engaged in reverse domain name hijacking in filing this complaint.
Complainant is My Gameroom LLC (“Complainant”), of Las Vegas, NV, USA. Complainant is the owner of the domestic registrations for the marks MY GAMEROOM and MYGAMEROOM in connection with its provision of an on-line video gaming community for third parties. Complainant states that it has used its marks since at least as early as 2016 and registered both marks in 2018. Complainant’s contentions include a reference to common law rights however there is nothing in Complainant’s documentation that specifically expounds upon the basis for that reference. There is only one sentence in Complainant’s pleadings stating in pertinent part that in addition to its first use in September 2016, which is also reflected in its domestic registration as the date of first use in commerce, Complainant engaged in “…investing significant resources into promotional material and advertising, that resulted in media recognition.” No date is provided in reference to when common law rights may be applicable or otherwise instructive as to the basis and scope of the common law rights alluded to.
A Complainant may rely upon common law rights in a mark to satisfy Policy ¶ 4(a)(i). See Psyonix Inc. v. robert gray / notpsyonix, FA 1759780 (Forum Jan. 3, 2018) (“Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). Proof of common law rights requires evidence of acquired distinctiveness that indicates the mark in dispute has secondary meaning. See AOL LLC v. DiMarco, FA 1275978 (Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”). Secondary meaning generally requires evidence such as the length of the mark’s use, the number of sales under the mark, the nature and extent of advertising utilizing the mark, and proof of consumer association with the mark through surveys or media recognition. See Golden Title Loans, LLC dba 745Cash v. roylee, FA 1618801 (Forum June 23, 2015) (holding, “Relevant evidence of secondary meaning includes continuous and ongoing use of a mark, holding of a domain name identical to the mark, or using the mark in commerce before a disputed domain name is created.” Finding “Complainant has provided evidence of secondary meaning . . . displaying Complainant’s business registration with the state of Tennessee, showing use of the 745-CASH mark since July 2005 . . . showing the creation date as March 30, 2004 of Complainant’s own website <745cash.com>. Complainant also urges that its business phone number is 745-CASH.). The Panel here finds that Complainant has not provided any of the type of information noted above that can support a finding of any common law rights in its marks. Complainant’s date of first use and date of registration are uncontested by Respondent.
Complainant also references its registered marks as being part of “other variants” noted as “(“the GAMEROOM Marks”), however there is no evidence presented regarding Complainant’s common law or registered rights in the mark GAMEROOM or variations of Complainant’s two registered marks. The Panel finds that the Complainant has failed to show any rights to the sole descriptive word GAMEROOM.
Respondent is Domain Admin / Facebook, Inc. (“Respondent”), of Menlo Park, CA, USA. Respondent and its associated companies are the registrant of several thousand domain names covering a spectrum from registered trademarks to common dictionary terms. Respondent asserts that it carries out a rigorous defensive registration strategy prior to the launch of any new products or services involving a domain name. Respondent states that it launched “Facebook Gameroom” in November 2016 after securing several registrations of domain name variants related to the term such as <facebookgameroom.com>, <fbgameroom.net>, and <fbgameroom.org>. Respondent also states that it purchased the <gameroom.com> domain name in addition to the others and has since November 2016 consistently had that domain resolve to its clearly branded Facebook Gameroom web pages such as <https://www.facebook.com/gameroom/download/>.
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.
Complainant claims rights in the MY GAMEROOM mark through its registrations with the USPTO (e.g. Reg. 5,599,648, registered Nov. 6, 2018; Reg. 5,610,251, registered Nov. 20, 2018). Registration with the USPTO is generally sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”). Complainant notes that its USPTO registrations confirm its first use of the mark as early as September 2016. The Panel here finds Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant also claims common law rights in the MY GAMEROOM mark. Under Policy ¶ 4(a)(i), common law rights may demonstrate rights in a mark in lieu of registration with a trademark authority. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). Complainant argues that its common law rights in the MY GAMEROOM mark establish its rights in 2016. Respondent does not contest Complainant’s first use or subsequent registration dates. Complainant provides no dates prior to September 2016 to indicate any common law rights nor does Complainant provide any useful information on the scope or extent to which any common law rights were established from that date until registration in 2018.
Respondent acknowledges that there may be a confusing similarity between the <gameroom.com> domain name and Complainant’s MY GAMEROOM mark but argues that they are not identical. Under Policy ¶ 4(a)(i), where a mark is descriptive, small differences between a mark and a disputed domain name may be the omission of dominant elements that differentiate a disputed domain name that contains other parts of a mark. See Tire Discounters, Inc. v. TireDiscounter.com, FA 679485 (Forum June 14, 2006) (“Because the mark is merely descriptive, small differences matter. In the Internet context, consumers are aware that domain names for different websites are often quite similar and that small differences matter.”). Respondent argues that Complainant’s reference to its marks as “the GAMEROOM marks” is misleading and ignores that Complainant’s actual marks are “MY GAMEROOM”, an important pronoun that should be considered a dominant part of the mark and is left out of the disputed domain name. The Panel here finds that the disputed domain is not identical to Complainant’s registered marks under Policy ¶ 4(a)(i).
However, the disputed domain name incorporates most of Complainant’s MY GAMEROOM mark, removes the word “my”, and adds the “.com” gTLD to the end of the mark. Therefore, the Panel find the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes that 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). The Panel here finds that Complainant has NOT set forth the requisite prima facie case.
Complainant argues that Respondent does not use the <gameroom.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to resolve to a website that competes with Complainant’s business or services is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”). Complainant provides a screenshot of the disputed domain name’s resolving website, which resolves to the homepage of Respondent’s gaming website, which Complainant argues competes with its own business and services.
Respondent further contends that it has used the <gameroom.com> domain name in conjunction with a bona fide offering of goods or services. Under Policy ¶ 4(c)(i), where a Respondent has made demonstrable preparations to use a domain name, where a Respondent’s use corresponds with the terms of the domain name, and where a Complainant has failed to sufficiently allege a lack of rights and legitimate interests by a Respondent in a disputed domain name, past panels have found Respondents have rights and legitimate interests through evidence of a bona fide offering of goods or services. See SPS Commerce, Inc. v. Registration Private / Domains By Proxy, LLC, FA 1724583 (Forum May 24, 2017) (“Indeed, much of Respondent’s evidence goes beyond demonstrable preparation and establishes actual use of the Domain Name in connection with a bona fide offering of e-commerce services. In addition to the branding focus groups, marketing expenditure, and developing case studies and other digital content, Respondent actually offered e-commerce services via the Domain Name website… The Panel thus finds that Respondent has rights and legitimate interests in the Domain Name.”); see also Heart of Success, Inc. v. PRIVATE REGISTRANT / A HAPPY DREAMHOST CUSTOMER, FA 1689461 (Forum Oct. 10, 2016) (“The records of the case show that the domain name acquired by Respondent is descriptive of the services it has offered online since the domain name registration date… Therefore, the Panel agrees that the circumstances of the instant case indicate that Respondent has not attempted to take advantage of the trademark value of Complainant’s mark and has made a bona fide offering of services per Policy ¶ 4(c)(i).”).
Respondent states that prior to acquiring the disputed domain name, it had invested significant time and expense in developing its own extensive gaming platform and conducted proper due diligence in searching various trademark and domain name databases for any competing marks or websites. At the time of Respondent’s registration, Complainant had registered no marks bearing the GAMEROOM word. Respondent provides screenshots of its clearly developed gaming platform and in-depth support pages that the disputed domain name redirects to. Respondent notes that the definition of the descriptive words “game” and “room” correspond to a space to play games in, which is what Respondent uses the disputed domain name for. Finally, Respondent argues that Complainant has failed to provide any evidence of consumer confusion between Complainant’s website and Respondent’s, and thus, its argument that Respondent targeted Complainant to confuse or trick internet users into visiting Respondent’s website, which clearly denotes itself as a service of Respondent, complete with Respondent’s marks, is without merit.
The Panel finds that Complainant provides no evidence of significant use of its mark from September 2016 up to its registration date in 2018. Specifically, there is nothing provided to indicate anyone would be on notice of any kind regarding Complainant’s claimed rights in its marks in November 2016 when Respondent registered and began using the disputed domain name. Complainant did provide pictures of the use of its mark as part of a subdomain for a radio station and some promo shots of musicians in front of framing that included its mark but neither of these submissions indicate any type or scope of notice to the general public or any reason someone coming across the pictures would associate them with Complainant’s online gaming services to the extent they may have existed at that time.
The Panel finds that Respondent has rights and legitimate interests in the disputed domain name, as it uses it for a bona fide offering of goods or services under Policy ¶ 4(c)(i). Upon purchase and registration of the disputed domain Respondent had no notice of Complainant’s claimed right to the mark. Respondent’s research found the word gameroom, as a descriptive term, available for purchase at the time and Respondent has used the domain name, in connection with its own familiar trademarks and brands, as an address to its actual gameroom products and services since November 2016, prior to Complainant’s 2018 registration of its marks.
The Complainant has NOT proven this element.
The Panel concludes that Respondent has rights or legitimate interests in the <gameroom.com> domain name pursuant to Policy ¶ 4(a)(ii), therefore the Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Record Connect, Inc. v. Chung Kit Lam / La-Fame Corporation, FA 1693876 (Forum Nov. 3, 2016) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Sheet Labels, Inc. v. Harnett, Andy, FA 1701423 (Forum Jan. 4, 2017) (finding that because the respondent had rights and legitimate interests in the disputed domain name, its registration of the name was not in bad faith).
The Complainant has NOT proven this element.
Reverse Domain Name Hijacking
The Panel here concludes that Respondent’s request for Reverse Domain Name Hijacking is DENIED. The fact that a Complainant has failed to satisfy its burden under the Policy, does not necessarily render a finding of reverse domain name hijacking. See ECG European City Guide v. Woodell, FA 183897 (Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”); see also Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent).
The Panel finds there has been no bad faith proven by Respondent regarding Complainant’s claim in these proceedings. Complainant relied heavily upon the presumptions associated with its registered marks, certain related statutes, and cases not dispositive in these administrative proceedings, as well as presumably the best physical evidence it had in support of its contentions. While Complainant’s asserted conclusions did not necessarily follow from the UDRP cases relied upon that did not make them inappropriate arguments. Respondents assertions that Complainant knew or should have known that it could not succeed based upon Respondent’s correspondence with Complainant prior to filing this case and the defensive arguments set forth in the responsive pleadings are insufficient to support Respondent’s request. Ultimately successful advocacy by a Respondent does not automatically relate back to render a Complainant’s strategy and arguments in the proceedings as having been brought in bad faith.
As the Complainant has failed to establish all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be DENIED.
Accordingly, it is Ordered that the <gameroom.com> domain name REMAIN WITH Respondent.
Darryl C. Wilson, Panelist
Dated: January 14, 2021
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