Complainant is Bundesverband Interaktiv Unterhaltungssoftware e.V, of Berlin, Germany, represented by Bettinger Schneider Schramm Patent- und Rechtsanwälte, Germany.
Respondent is admin of Daegu, Republic of Korea, self-represented.
The disputed domain name <gamescom.com> is registered with Inames Co., Ltd. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2013. On November 13, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 27, 2013, the Registrar transmitted by email to the Center its verification response, confirming Respondent as the registrant and provided the contact details.
On November 27, 2013, the Center notified the Parties in both English and Korean that the language of the Registration Agreement in this case was Korean. On November 29, 2013 Complainant requested for English to be the language of the proceeding. On December 1, 2013, Respondent requested for Korean to be the language of the proceeding.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 4, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was December 24, 2013. The Response was filed with the Center on December 24, 2013, which was timely.
The Center appointed Ho-Hyun Nahm, Esq. as the sole panelist in this matter on February 19, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
Complainant is the German Trade Association of Interactive Entertainment Software (BIU), an interest group dedicated to serving the providers and producers of entertainment software in Germany. The association represents about 80 percent of the market for computer and video games in Germany and serves as a public resource for gaming initiatives. The association was established in 2005. Complainant awards a number of distinguished honors to successful gaining companies within the German “gamer” community. Complainant also organizes the “Gamescom” trade fair event.
Complainant owns trademark registrations for the GAMESCOM mark which include: German word mark No. 30362609 for the mark GAMESCOM, registered on April 26, 2004 in classes 28, 35, 37, 41, 42; German word mark no. 302010027674, GAMESCOM, registered on December 21, 2010 in classes 9, 16, 25, 26, 28, 35, 38, 39, 41, 43; and Community Trade Mark word mark No. 9879727, GAMESCOM, registered on November 7, 2011 in classes 16, 25, 26, 35, 39, 41, and 43.
The disputed domain name was registered on September 26, 2000. It has been transferred to different holders at least twice during its registration. Most recently, Respondent acquired the disputed domain name at some point between September 22 and October 9, 2013.
(i) The disputed domain name is confusingly similar to the registered trademark GAMESCOM in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name was registered and being used in bad faith by Respondent.
Complainant requests transfer of the disputed domain name to itself.
(i) The disputed domain name is a combined word comprising of “games” and “com” which is a common noun, a common name, and a generic word, and thus not subject to disputes. That is because such a name cannot be exploited.
(ii) Complainant has remained inactive for 14 years since 2000. Complainant did not feel the need of the disputed domain name. The reason why Complainant now files the Complaint is to take away the disputed domain name from Respondent, which is a typical type of a reverse domain name hijacking.
(iii) It appears that the trademark was filed for registration in 2004 while the registration date of the disputed domain name is September 26, 2000, and thus the disputed domain name is not subject to dispute. The registration date of the disputed domain name is September 26, 2000 which is earlier than the filing date of Complainant’s trademark registration by as long as 4 years.
(iv) Respondent is now in the process of preparing for a website adequate for the disputed domain name. Respondent is also in the process of preparing a linked banner at right bottom of the website resolved by the disputed domain name for the purpose of advertisement of G STAR (“http://www.gstar.or.kr”) which is a game festival in Korea. Exhibit 2 to Response.
(v) The name “gamescom” is not widely known around the world enough to be commonly recognized in the world.
(vi) Respondent did not disrupt the business of Complainant by using the <gamescom.com> domain name. The disputed domain name is a combined word comprising of “games” and “com” which is a common noun, a common name, and a generic word, and thus it is not subject to dispute.
(vii) The disputed domain name <gamescom.com> has no relevancy to Complainant’s business type. Respondent has never damaged Complainant’s business. The disputed domain name has never been used in bad faith.
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:
(i) the domain name registered by respondent is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The Registrar has informed the Center that the language of the Registration Agreement was Korean. On November 27, 2013, the Center notified the Parties in both English and Korean that the language of the Registration Agreement in this case was Korean. On November 29, 2013 Complainant requested for English to be the language of the proceeding. On December 4, 2013, Respondent requested for Korean to be the language of the proceeding.
On December 4, 2013, the Center notified the parties of its decision to i) accept the Complaint as filed in English, ii) accept a Response in either English or Korean; and iii) appoint a Panel familiar with both languages mentioned above if available.
Complainant alleges that since the filing of the Complaint, Respondent’s use of the disputed domain name has changed dramatically. The new content now displayed at the disputed domain name is offered in a mix of English and Korean, thus indicating that Respondent intends to target not only the Korean-speaking audience but also English-speaking customers. This further signals Respondent’s familiarity with the English language and its intent to conduct business in an English-speaking context. Annex 13 to Complaint. Complainant requests that the language of the proceeding be English because i) the change in Respondent’s website content makes clear its familiarity with the English language, ii) the new content signals Respondent’s intention to conduct business with English-speaking clientele, iii) English is a neutral language, in that it is not the language of either Complainant or Respondent’s addresses, and iv) it would be both procedurally and economically efficient to proceed in English, v) it is possible that Respondent is in some way connected to or in communication with the prior domain name holder, and thus if the Panel determines that is the case, there are two additional reasons supporting Complainant’s request for English-language procedure: firstly, the former domain name holder, 3v Networks, has been a respondent in a number of prior UDRP actions, and all but one of these disputes were conducted in English; secondly, it is quite clear that the individual(s) behind “3v Networks” are capable of understanding English-language communications.
On the other hand, Respondent requests that the language of proceeding be Korean on the ground that he/she was born in Korea and speaks Korean. Respondent cannot use English. It would be like proceeding without understanding the content of the case if the proceeding is conducted in English. According to the Registrar verification, the language used in the registration agreement is Korean, and thus the language of proceeding must be English.
The Panel agrees that Respondent appears capable of communicating in English and Complainant is not able to communicate in Korean. The Panel also notes that the Complaint was submitted in English and the Response was filed in Korean. As a result of reviewing the content of the Response, it appears that it was prepared on the basis of understanding the Complaint. Given the circumstances, if it were to submit all the documents in Korean, the administrative proceeding would be unduly delayed, and Complainant would have to incur substantial expenses for translation, and vice versa.
In consideration of all above circumstances and in the interest of fairness to both parties, pursuant to paragraph 11(a) of the Rules, the Panel determines that the language requirement has been satisfied through the use of Korean in the Notification of Complaint and Commencement of Administrative Proceeding, and determines that it is appropriate that this decision be rendered in English. (See Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679; and Inter-IKEA Systems B.V. v. SC Agis International Sport S.R.L., WIPO Case No. DRO2006-0001).
The Panel finds that Complainant has provided sufficient evidence showing that it is the owner of trademark registrations for the GAMESCOM mark which include: German word mark No. 30362609 for the mark GAMESCOM, registered on April 26, 2004 in classes 28, 35, 37, 41, 42; German word mark No. 302010027674, GAMESCOM, registered on December 21, 2010 in classes 9, 16, 25, 26, 28, 35, 38, 39, 41, 43; and CTM word mark no. 9879727, GAMESCOM, registered on November 7, 2011 in classes 16, 25, 26, 35, 39, 41, and 43. Annex 9 to Complaint.
The Panel finds that Complainant’s registration of the GAMESCOM mark in Germany and European Union sufficiently establishes its rights in the mark pursuant to Policy, paragraph 4(a)(i).
Respondent contends that the disputed domain name is a combined word comprising of “games” and “com” which is a common noun, a common name, and a generic word, and thus it is not subject to dispute. Respondent argues that it is because such a name cannot be exploited by a certain person. However, the Panel holds that Complainant’s mark is not a descriptive or generic term in its entirety, and thus it cannot accept Respondent’s allegations to deny Complainant’s rights in Complainant’s registered mark.
Respondent also asserts that Complainant’s mark was filed for registration in 2004 while the registration date of the disputed domain name is September 26, 2000, and thus the disputed domain name is not subject to dispute. The Panel holds that so long as Complainant’s mark has been registered, the predating of the registration of the disputed domain name does not impact in establishing Complainant’s rights in its mark although it leaves a question on whether it would fall under the circumstances of bad faith registration.
Complainant contends that the disputed domain name is identical with Complainant’s trademark GAMESCOM. It notes that the disputed domain name reproduces Complainant’s trademark in its entirety. The Panel finds that the disputed domain name is identical with Complainant’s mark especially in that it incorporates Complainant’s mark in its entirety. See Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne, WIPO Case No. D2010-0240 finding “the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to Complainant’s registered mark.”
The Panel also finds that the “.com” is descriptive suffix commonly used as a generic Top-Level Domain (“gTLD”), and thus it does not constitute a prominent portion in the disputed domain name in determining confusing similarity between the disputed domain name and Complainant’s mark. Therefore, the addition of the gTLD suffix “.com” in the disputed domain name does not have any impact on the avoidance of confusing similarity. See Research in Motion Limited v. Input Inc, Domain Manager, WIPO Case No. D2011-2197 finding “the use of the added descriptive word does not change the overall impression of the domain name.”
As such, the Panel concludes that the disputed domain name is confusingly similar to Complainant’s mark.
Complainant must first make a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names under the Policy, paragraph 4(a)(ii), and then the burden of production shifts to the Respondent to demonstrate it does have rights or legitimate interests. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
Complainant asserts that it has never granted any license or other permission to Respondent to use Complainant’s mark. It also contends that Respondent has no prior rights or legitimate interest in the disputed domain name. Complainant consequently submits that to the best of its knowledge, Respondent is not commonly known by the disputed domain name.
The Panel finds that Respondent has no connection or affiliation with Complainant or its marks and has not received any license or consent, express or implied, to use the GAMESCOM mark in the disputed domain name or in any other manner. The Panel further finds that on the available record, it has been established that Respondent has never been known by the disputed domain name.
Given the circumstances above, the Panel finds that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names. See Harry Winston, Inc. and Harry Winston, S.A. v. h, WIPO Case No. D2008-1266 (finding that respondent had not established rights or legitimate interests pursuant to the Policy, paragraph 4(c)(ii) in the <harrywinstondiamond.com> domain name where there was no evidence that the respondent was commonly known by the domain name); see also Alstom v. Yulei, WIPO Case No. D2007-0424 (finding that respondent had not established rights or legitimate interests in the domain name where there is no indication that respondent is commonly known by the <alstom-china.com> domain name and/or is using the domain name in connection with a bona fide offering of goods or services).
Respondent contends that the disputed domain name is a combined word comprising of “games” and “com” which is a common noun, a common name, and a generic word, and thus it is not subject to dispute.
Complainant rebuts that although the text of the disputed domain name contains a dictionary term and “com,” when compared together these words correspond exactly to Complainant’s registered trademark. It further contends that where a domain name is identical to the trademark of another, particularly where there is evidence to show that Respondent intentionally selected the domain name to trade on Complainant’s mark, there can be no defense on the basis of a “generic” claim. The Panel recalls its view that Complainant’s mark is not a descriptive or generic term in its entirety. As such, the Panel holds that Respondent failed to show rights or legitimates interests in the disputed domain name in this regard.
Respondent further contends that Respondent is now in the process of preparing for a website adequate for the disputed domain name, and it is also in the process of preparing a linked banner at right bottom of the website resolved by the disputed domain name for the purpose of advertisement of G STAR (“www.gstar.or.kr”), which is a game festival in Korea. Exhibit 2 to Response.
Complainant avers that the disputed domain name has been used only to display pay-per-click links related to the industry of Complainant, including gaming consoles and video game titles. It continues that Respondent’s website is thus used to earn pay-per-click revenue by misdirecting Internet users to third parties’ websites and thereby capitalizing on Complainant’s marks. Complainant argues that such use is neither a bona fide use of the disputed domain name pursuant to 4(c)(i) of the Policy nor a legitimate noncommercial or fair use pursuant to paragraph 4 (c)(iii) of the Policy. The Panel agrees that the content of the website resolved by the disputed domain name, or making preparation for its future use after filing of the Complaint, is insufficient to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services and that nor is such use a legitimate noncommercial or fair use.
Therefore, the Panel concludes that the second element of the Policy, paragraph 4 has been established.
Respondent contends that Complainant’s trademark was filed for registration in 2004 while the registration date of the disputed domain name is September 26, 2000, and thus the disputed domain name is not subject to dispute. It notes that the registration date of the disputed domain name is September 26, 2000, which predates Complainant’s trademark registration by as long as 4 years. It appears to the Panel that Respondent is trying to argue that it did not register the disputed domain name in bad faith because it did not have knowledge of Complainant’s mark at the time of the registration of the disputed domain name.
Complainant avers that Respondent acquired the disputed domain name shortly after the prior holder received a cease-and-desist letter from Complainant and that the acquisition of the disputed domain name by a new holder constitutes a new registration for the purposes of the Policy (particularly where, as here, there is evidence of bad faith use of the disputed domain name, an intention to delay or frustrate proceedings, and potential cyberflight). It further contends that it has been established by prior UDRP panels that even a nominal change in registrant, particularly where such action was undertaken to frustrate a complainant, avoid liability or delay proceedings, is to be treated as a new registration for purposes of the Policy.
The Panel agrees that the acquisition of the disputed domain name by a new holder constitutes a new registration for the purposes of the Policy. See ehotel AG v. Network Technologies Polska Jasinski Lutoborski Sp.J., WIPO Case No. D2009-0785 (finding where a domain name is transferred from one entity to another entity then this can be treated as a fresh “registration” for the purposes of the Policy, and in such a case bad faith can be assessed at the date of that transfer rather than as at the date of initial registration.) See also Mark Blanchette, d/b/a Wormtown Trading Co. v. Domain Discreet Privacy Service / wormtown trading co, Gabrielle-Marie Fugere, WIPO Case No. D2012-1434 (finding “citing PAA Laboratories GmbH v. Printing Arts America, WIPO Case No. D2004-0338, the Sporto panel recognized that while the original registration was likely made in good faith, “[t]he benefit of an original good faith registration should not be perpetual to the point where it can cloak successors in title and successors in ‘possession’ long after the original registration would have expired”). The Panel notes that it has also long been recorded as a “consensus view” at paragraph 3.7 of the “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”.
The Panel further notes that Complainant’s mark has strong reputation for computer and video games. The circumstances that have led the Panel to recognize the reputation of Complainant’s mark include: i) Complainant represents about 80% of the market for computer and video games in Germany, and serves as a public resource for gaming initiatives, ii) Complainant awards a number of distinguished honors to successful gaining companies within the German “gamer” community, and iii) Complainant also organizes the Gamescom trade fair event, which is Europe’s largest fair for interactive games and entertainment. Moreover, at the recently-concluded 2013 Gamescom event, i) over 340,000 attendees participated, ii) over 635 exhibitors from 40 countries were in attendance, and in total roughly 400 entirely new products were introduced to the public for the first time, and iii) individual attendees arrived from 88 different countries, and roughly 6,000 journalists from 61 countries were present.
As such, the Panel finds that it is likely that Respondent was well aware of Complainant’s rights at the time it acquired the disputed domain name at some point between September 22 and October 9, 2013. The Panel also agrees that it is inconceivable that Respondent registered the disputed domain name without knowledge of Complainant’s rights.
Complainant contends that the disputed domain name directs Internet users to a parking website that provides links to third-party websites. It further contends that by using the website for sponsored links, Respondent is clearly attempting to divert traffic intended for Complainant’s authorized websites to its own for the purpose of earning click-through revenues from Internet users searching for Complainant’s official website. The Panel agrees that the use and exploitation of trademarks to obtain click-through revenue from the diversion of Internet users has in many decisions been found to be indicative of bad faith under paragraph 4(b)(iv) of the Policy. See Gowrings Mobility Group Limited v. Cyber Domain Services Pvt.Ltd. / PrivacyProtect.org, WIPO Case No. D2010-0706 and L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623.
Therefore, the Panel concludes that Respondent has registered and is using the disputed domain name in bad faith, in accordance with paragraph 4(b)(iv) of the Policy.
As Complainant has satisfied the three Policy elements, the Panel finds that Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306 (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., NAF Case No. FA 190461(finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <gamescom.com> be transferred to Complainant.
Ho-Hyun Nahm, Esq.
Sole Panelist
Date: February 24, 2014