The Complainant is Web Entertainment Limited ("WE") of Las Vegas, Nevada, United States of America, represented by Randazza Legal Group, United States of America.
The Respondent is Domain Registrant, ID Domain Privacy Network - iDDP.Net of San Francisco, California, United States of America / Mehmet Uzun, Uzun Technology of Istanbul, Turkey.
The disputed domain name <y8.fm> is registered with dotFM (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 17, 2015. On March 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 17, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 24, 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 March 30, 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 April 8, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 28, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 29, 2015.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on May 8, 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 in this proceeding is WEB ENTERTAINMENT LIMITED (hereinafter the Complainant or "WE").
Complainant owns and operates the domain <y8.com>, and has used this domain for several years in connection with the provision of online video games, virtual reality games, and other entertainment services to its users on the World Wide Web.
Complainant has the following trademark registrations for the Y8 mark:
(a) CTM Filing No. 009412255 (filed September, 30, 2010) for the Y8 word mark in Nice classes 35 and 41;
(b) CTM Filing No. 009649609 (filed March, 31, 2011) for the Y8 Y8.COM figurative mark in Nice classes 35 and 41;
(c) U.S. Reg. No. 4,130,792 (filed April 11, 2011) for the Y8 Y8.COM figurative mark in Nice class 41 -claimed first use in commerce December 5, 2006;
(d) U.S. Reg. No. 4,130,791, filed April 11, 2011 for the Y8 word mark in Nice class 41, claimed first use in commerce December 5, 2006;.
The Complainant also operates an official online store accessible at "www.y8.com" since December 5, 2006.
Complainant's trademark rights predate the registration of the disputed domain name.
The disputed domain name, <y8.fm>, was registered on December 6, 2010.
The disputed domain name is used to provide services of online video games and entertainment directly competitive with those offered by the Complainant.
The Complainant claims that the disputed domain name is confusingly similar to the Complainant's Y8 registered trademark; that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name; and that the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant's contentions.
In order for the Complainant to obtain a transfer of the disputed domain name, paragraphs 4(a) of the Policy require that the Complainant must demonstrate to the Panel that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
The Complainant has established rights in the Y8 trademark.
This Panel agrees with the Complainant's assertion that the addition of the generic Top-Level Domain (gTLD) ".fm" is irrelevant in the determination of the confusing similarity between the Complainant's trademark and the disputed domain name.
In fact, previous UDRP panels have found that gTLDs, including new gTLDs, should typically be disregarded for the purpose of establishing whether a disputed domain name is identical or confusingly similar to a trademark. Disregarding the gTLD, ".fm", the disputed domain name is identical to the Complainant's trademark.
Therefore, the Panel finds the disputed domain name to be confusingly similar to the trademark Y8 in which the Complainant has rights.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
This Panel finds that the Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent has no connection or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant's trademark. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services for the reasons described in section 6.C below. In addition, the Respondent does not appear to be commonly known by the name "Y8" or by a similar name. Moreover, the Respondent has not replied to the Complainant's contentions, alleging any rights or legitimate interests in the disputed domain name.
Finally, this Panel, noting that the disputed domain name has been used to provide services directly competitive with those offered by the Complainant, agrees with the Complainant and previous panel's finding in Banana Republic (Apparel) LLC v. Ronda Rollins, WIPO Case No. D2013-0241 affirming that: "Capitalizing on the fame of a trademark in order to sell goods or services that directly compete with the trademark owner is not a bona fide offering of goods or services or a legitimate noncommercial or fair use".
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
Alexa.com1 evidence shows that the Complainant is within the 1,500 most popular websites in the world which indicates that the Complainant is a very major player within its industry of online video games.
The term "Y8" has no inherent meaning and is not a generic word used to indicate "games" and/or an activity linked to them. Thus, a coincidence in choosing this name is unlikely.
The Respondent has apparently used the disputed domain name solely to offer services identical to those offered by the Complainant. Indeed, immediately after the registration of the disputed domain name, the Respondent used same for a website offering online video games and entertainment services directly competitive with those offered by the Complainant and prominently displaying an almost identical copy of Complainant's figurative trademark Y8 (reproducing also the same chromatic combination of colors).
Owing to the above, the Panel finds that it is likely that the Respondent was aware of the Complainant and its reputation in the Y8 marks at the time the Respondent registered the disputed domain name. The registration of the disputed domain name in awareness of the Complainant's marks and in the absence of rights or legitimate interests amounts to registration in bad faith2.
Therefore, it appears that, in all likelihood, the Respondent is trying to divert traffic intended for the official website of the Complainant. This Panel agrees with the Complainant that this use amounts to use in bad faith of the disputed domain name.
In addition, this Panel believes that Respondent's prior use of a privacy service provides further evidence of bad faith registration. In fact, although privacy shields may be legitimate in some cases, here, the use of the disputed domain name to offer services competitive to those of the Complainant and the reproduction on the Respondent's website of a logo almost identical to the one of the Complainant, make it difficult to believe that the Respondent used the privacy shield for legitimate purposes and not to hide its identity in order to complicate and eventually frustrate the Complainant's attempts to protect and eventually enforce its trademark rights.
In the absence of contrary evidence, the Panel finds that the Respondent knew of the Complainant's services and trademarks and intentionally intended to create an association with the Complainant and their business; that the Respondent, as shown by the contents displayed on its website, must have had actual knowledge of the Complainant's trademarks at the time of the registration of the disputed domain name; and that the above described use of the disputed domain name, i.e., to divert Internet traffic to the Respondent's website, falls clearly within the example of bad faith set out in 4(b)(iv) of the Policy: "by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
Accordingly, the Panel finds on the basis of the evidence presented, that the Respondent has registered and is using the disputed domain name in bad faith.
Therefore, the Complainant has satisfied 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 disputed domain name <y8.fm> be transferred to the Complainant .
Fabrizio Bedarida
Sole Panelist
Date: May 19, 2015
1 Alexa is a global pioneer in the world of analytical insight. Alexa's traffic rank is a measure of how a website is doing relative to all other sites on the web over the past 3 months.
2 See, Web Entertainment Limited v. Steaven Nguyen, Online Solution, WIPO Case No. D2015-0159.