The Complainant is Web Entertainment Limited of Nevada, United States of America (“USA”), represented by Randazza Legal Group, USA.
The Respondent is Steaven Nguyen, Online Solution of Bangkok, Thailand.
The disputed domain name, <lovey8.com> (the “Domain Name”), is registered with Name.com LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2015. On February 2, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 2, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 9, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 16, 2015.
The Center verified that the Complaint together with the amended 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 18, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 10, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 11, 2015.
The Center appointed Tony Willoughby as the sole panelist in this matter on March 18, 2015. 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 the Rules, paragraph 7.
The Complainant is engaged in the provision online of video games, virtual reality games, and other entertainment services. These services are provided through its website connected to its <y8.com> domain name, which its predecessor-in-interest acquired in November, 2006. The Complainant is a leader in its field.
The unchallenged evidence of the Complainant is that the Complainant commenced use of its Y8 trade mark and its website connected to its <y8.com> domain name in or around December 2006.
The Complainant has the following registrations for its Y8 (word) and Y8/Y8.COM (figurative) trade marks:
(a) CTM Registration No. 009412255 registered August 25, 2011 (filed September 30, 2010) for the Y8 word mark in classes 35 and 41 for inter alia online advertising and electronic game services.
(b) CTM Registration No. 009649609 registered July 25, 2011 (filed March 31, 2011) for the Y8/Y8.COM figurative mark in classes 35 and 41 for inter alia online advertising and electronic game services.
(c) United States Trade Mark Registration No. 4,130,792 registered April 24, 2012 (filed April 11, 2011) Y8/Y8.COM for inter alia various entertainment services, including the provision of online video games and virtual reality games.
(d) United States Trade Mark Registration No. 4,130,791 registered April 24, 2012 (filed April 11, 2011) Y8 for inter alia various entertainment services, including the provision of online video games and virtual reality games.
The United States Trade Mark Registrations feature first use claims of December 5, 2006.
The Domain Name was first registered on September 27, 2008.
On January 27, 2013 the Domain Name was connected to a website offering online video and virtual reality games services. The website featured a scrolling banner reading “We are collecting best games from “www.y8.com” (Y8.com is a large directory of free flash games) every day.” The website also featured advertising links. The format of the website at the date of the Complaint was substantially identical.
The Complainant contends that the Domain Name is confusingly similar to the Complainant’s Y8 and Y8/Y8.COM trade marks, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The 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.
As will be seen in section 6D below, the Complaint featured certain assertions, which the Panel felt unable to accept at face value in the absence of any Response from the Respondent, a particular issue being the date upon which the Respondent acquired the Domain Name. If the Panel had accepted the Complainant’s contention in this respect, the case could have been decided, relying solely upon the Complainant’s registered rights. The Panel conducted investigations using the DomainTools facility, the very same facility used by the Complainant to support its contention, and came to a different conclusion.
Ordinarily, where panels feel the need to make their own investigations, the results are put to the parties for further submissions (see paragraph 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)). The Panel elected not to do so in this case, because the result was of no disadvantage to the Respondent and, ultimately, of no disadvantage to the Complainant.
The Domain Name can be read in one of three ways: (i) “lovey” + “8” + “.com” or (ii) “love” + “y8” + “.com” or (iii) “love” + “y8.com”.
The Panel is satisfied that whichever way the Domain Name is read it is confusingly similar to both of the Complainant’s Y8 (word) and Y8/Y8.COM (figurative) registered trade marks. For completeness it should be added that the most prominent elements of the Complainant’s figurative trade mark are “Y8” and “Y8. COM”.
The Complainant also claims unregistered trade mark rights in respect of its Y8 and Y8/Y8.COM marks, but for the purposes of this element of the Policy, the registered rights suffice. The claim to unregistered rights is dealt with in section 6D below.
While the Complainant is required to prove all three elements of the Policy, paragraph 4(a)(ii) of the Policy requires a complainant to prove a negative, which in many cases is likely to be a near impossible task. The matter is dealt with in paragraph 2.1 of the WIPO Overview 2.0 as follows:
“Consensus view: While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP (…). If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
The evidence in this case all stems from the Complainant, the Respondent having filed no Response. The Complainant’s evidence clearly demonstrates that the Respondent has used the Domain Name to refer to the Complainant’s online games services provided through the Complainant’s website connected to its <y8.com> website. As mentioned in section 4 above, on January 27, 2013 the Respondent’s website featured a scrolling banner reading “We are collecting best games from www.y8.com (Y8.com is a large directory of free flash games) every day”.
The Complainant’s evidence does not elucidate the extent to which, if at all, the Respondent is offering games services which do not emanate from the Complainant’s <y8.com> website. Frequently, throughout the Complaint the Complainant asserts that the Respondent is competing with the Complainant, but nowhere does the Complainant state that the Respondent is not sourcing its games from the Complainant’s website as the banner suggests. Accordingly, for the purposes of this decision the Panel will assume that all the games services provided by the Respondent can fairly be described as having been collected from the Complainant’s website.
This leads to the question posed at paragraph 2.3 of WIPO Overview 2.0, namely “Can a reseller/distributor of trade marked goods or services have rights or legitimate interests in a domain name which contains such trade mark?” The answer provided is as follows:
“Consensus view: Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder. The respondent must also not try to “corner the market” in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark.
However: Some panels take the position (while subscribing to the consensus view) that it will generally be very difficult for a respondent to establish rights or legitimate interests where that respondent has no relevant trade mark rights and without the authority of the complainant has used a domain name identical to the complainant’s trademark (i.e., <trademark.tld>).”
The Complainant has produced evidence to show that the Respondent is not merely providing games services under and by reference to his website connected to the Domain Name, but is also featuring totally unrelated advertising links such as residential real estate service links, through which the Respondent is likely to be deriving advertising revenue. In other words the Respondent appears to that extent to be trading unfairly on the back of the Complainant’s trade marks to generate advertising revenue.
Moreover, the January 2013 screenshot of the Respondent’s home page does not accurately and prominently disclose the Respondent’s relationship with the Complainant. It is headed “Love Y8 games” and contains no identification of who is responsible for the site. If one descends to the small print at the foot of the page, one finds a copyright notice in favour of “Love Y8” and below that a series of references to “y8” and “y8.com” games. The Panel finds it very likely that visitors to the site will believe it to be a website of or authorized by the Complainant.
The Panel finds that the Complainant has made out a prima facie case under this element of the Policy, calling for an answer from the Respondent.
In the absence of an answer from the Respondent the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Panel is satisfied that in trading on the back of the Complainant’s trade marks to generate advertising revenue (see section 6C above) and connecting to the Domain Name a website which does not make it clear that the website is not a website of or authorized by the Complainant, the Respondent has been using the Domain Name in bad faith.
However, for the Complainant to succeed under this element of the Policy the Complainant must prove not only that the Respondent has been using the Domain Name in bad faith, but also that he registered the Domain Name in bad faith. This latter aspect (registration in bad faith) the Complainant can establish by showing that at the time the Respondent registered the Domain Name he was aware of the existence of the Complainant’s trade mark rights and intended to use the Domain Name for the purpose for which it has been used, a use which the Panel has already found to be a bad faith use.
This gives rise to two fundamental questions, namely: (i) When did the Respondent acquire the Domain Name? (ii) Were the Complainant’s trade mark rights in existence as at that date?
Prior to the filing of the Amended Complaint, the Domain Name was held in the name of Whois Agent, Whois Privacy Protection Services Inc. of Kirkland, Washington State, USA. It was only on receipt by the Center of the Registrar’s response to the Center’s request for Registrar Verification that the Respondent was identified as the underlying registrant. In that response the Registrar stated that it could not confirm when the Respondent acquired the Domain Name.
The Domain Name was first registered on September 27, 2008. However the Complainant contends that the Respondent acquired the Domain Name in or around December, 2012/January, 2013 and produces Whois Records from DomainTools which it says supports that contention. In the absence of any explanation from the Complainant as to why this should be so and there being no Response from the Respondent, the Panel has investigated the matter further.
The DomainTools Whois Record for the Domain Name for January 20, 2013, the date by which the Complainant contends that the Respondent had acquired the Domain Name, shows the registrant to be Whois Privacy Protection Services Inc. of Bellevue Washington State, USA.
The DomainTools Whois Record for the Domain Name for December 16, 2012, the date at which the Complainant contends that a prior registrant held the Domain Name, shows the registrant at that date to be Protected Domain Services of Denver, Colorado, USA. Further investigation by the Panel at DomainTools, the agency used by the Complainant for its Whois annexes, shows that this registrant, Protected Domain Services of Denver, had held the registration throughout since the Domain Name was first registered in September 2008.
One factor that remained precisely the same throughout the life of the Domain Name from September 2008 through to January 2015 was the email address for the Registrant, Administrative, Technical and Billing contacts.
From this, the Panel concludes that the change of registrant details, which took place between December 2012 and January 2013, was not a change of underlying registrant, merely a change of name/postal address of the Respondent’s privacy service. At all events, for the purposes of this decision, the Panel is not satisfied that the Respondent acquired the Domain Name as late as December 2012/January, 2013. The Panel believes it to be probable that the Respondent has been the underlying registrant throughout i.e. from September 2008.
To verify the point further the Panel checked out the DomainTools screenshots for the Domain Name, which date back to July 2009 and are all substantially the same as that in use at the time of the Complaint.
The point is of some significance because the Complainant’s registered trade mark rights did not come into existence until 2010.
The Complainant asserts more than once in the Complaint that the Complainant has “common law rights accrued in, at latest, 2006”. The claim strikes the Panel as being surprisingly optimistic given that the Complainant gives December 5, 2006 as the date of first use of its trade marks.
What needs to be shown for the Complainant to successfully assert common law or unregistered trade mark rights? The answer is to be found in paragraph 1.7 of the Overview 2.0, which commences:
“The Complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition.”
What evidence has the Complainant put before the Panel to support its claim to the existence of common law rights in 2006? The short answer is “nothing”. The only evidence that the Complainant has produced pre-dating the end of December 2006 is a screenshot taken from the Internet Archive WaybackMachine featuring what it claims to be its first use of its trade marks on its website connected to its <y8.com> domain name. That evidence establishes that the Complainant’s first use of its trade marks was on December 5, 2006, but there is nothing to establish sales, nature and extent of advertising, consumer surveys or media recognition over the next 26 days. The Panel is not persuaded that the Complainant’s claim that its “common law rights accrued in, at latest, 2006” is made out.
However, for present purposes the Complainant only needs to establish the existence of such rights prior to the Respondent’s registration of the Domain Name on September 27, 2008. As the Overview 2.0 points out in paragraph 3.1 (in answer to the question: can bad faith be found if the disputed domain name was registered before the trademark was registered or before unregistered trademark rights were acquired?):
“Consensus view: Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date (…), when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right.”
What evidence has the Complainant put before the Panel to show that its name had become a distinctive identifier associated with its goods or services as at September 27, 2008? Again, the answer is “nothing” beyond a bare assertion that the Complainant’s trade marks and website had been in continuous use since December 2006. The only potentially relevant evidence post-dates 2008, i.e. an Alexa Internet ranking covering the current position and a previous WIPO decision in which the Complainant’s common law rights in its trade marks were found to be well-established by 2010.
On the basis of the above, the Panel could readily have come to the conclusion that the Complainant had failed to establish that its trade mark rights pre-dated registration of the Domain Name.
However, the fact of the matter is that the trade marks Y8 and Y8/Y8.COM are highly distinctive marks. They have no generic or descriptive meaning. Why would the Respondent have wanted to adopt a domain name featuring those marks?
In section 6B above the Panel postulates three ways in which the Domain Name can be read. However, in light of the way in which the Domain Name has been used, it seems clear to the Panel that it has always been intended to be read as “love” + “y8.com”. Prior to the filing of the Complaint the Respondent’s website was headed with the legend “Love Y8 games” and the scrolling banner indicated that the Respondent was collecting games from the Complainant’s website.
The Panel is satisfied that the Respondent selected the Domain Name with the Complainant’s trade marks and website in mind, because he wished to feature the Complainant’s games on his website. It is inconceivable, in the view of the Panel, that the Respondent would have gone down that path if the Complainant had not by September 2008 gained a substantial reputation and goodwill in respect of its trade marks.
On that basis the Panel finds that as at the date of registration of the Domain Name the Complainant possessed unregistered trade mark rights in respect of its Y8 and Y8/Y8.com trade marks and that the Respondent registered the Domain Name to take commercial advantage of the Complainant’s trade marks, connecting the Domain Name to a website, which, as the Panel has found, will be likely to be thought by Internet users to be a website of or authorized by the Complainant.
In the result the Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) 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 Domain Name, <lovey8.com>, be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Date: March 25, 2015