Complainant is Web Entertainment Limited of Las Vegas, Nevada, United States of America, represented by Randazza Legal Group, United States of America.
Respondent is Domain Admin of Suzhou, Jiangsu, China, represented by Zinnian Pan, China.
The disputed domain name <pog.co> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2016. On June 24, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 27, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 19, 2016. The Response was filed with the Center on July 10, 2016.
The Center appointed Yijun Tian as the sole panelist in this matter on July 26, 2016. 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.
Complainant, Web Entertainment Limited, is a company incorporated in United States of America (“USA"). Complainant has exclusive rights in the POG trademarks. Complainant is the exclusive owner of several POG trademarks registered since July 13, 2012 (such as European Union Trademark registration number 011040938; USA Trademark registration number 4463529) (Annex E and Annex F to the Complaint).
Complainant also owns and operates the domain name <pog.com> which was acquired by Complainant’s predecessor-in-interest in 2007 (Annex D and Annex G to the Complaint). <pog.com> is one of the most popular Internet websites for video and virtual reality games in the world, and it has been among the top 1,000 websites on the Internet (Annex I to the Complaint).
Respondent is Domain Admin, China. The disputed domain name <pog.co> was registered on March 5, 2016. Respondent has offered the disputed domain name for sale to Complainant for USD 3,999 via the Domain Broker of DomainNameSales.com (Annex J and Annex K to the Complaint).
Complainant contends that the disputed domain name <pog.co> is confusingly similar to its trademark POG, the registration and use of which by Complainant preceded the registration of the disputed domain name.
Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant contends that the disputed domain name was registered and is being used in bad faith.
Complainant requests that the disputed domain name <pog.co> be transferred to it.
Respondent contends that “pog” can be a personal name, and Respondent’s son has a nickname “pog”.
Respondent contends that “pog” can also have many other meanings, such as Price of Government and Complainant has no exclusive rights to “pog”.
Respondent contends that Respondent was not aware that the previous owner of the disputed domain name attempted to sell this domain name.1
Respondent contends that the main reasons for buying the disputed domain name are Respondent’s son’s nickname is “pog”, and Respondent intends to build a personal blog website. The use of the disputed domain name is legitimate and personal property should be protected.
Respondent contends that Complainant called and threatened Respondent, and has made verbal attack to Respondent by sending Respondent emails written in Chinese.
Respondent contends that Complainant’s website at the domain name <pog.com> is not a normal website, and that it contains many pirated games.
Respondent requests the Complaint to be denied.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark 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 has been registered and is being used in bad faith.
On the basis of the evidence on record and in particular with regards to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:
The Panel finds that Complainant has rights in the POG marks acquired through registration. The POG marks have been registered in the European Union and the USA since 2012.
The disputed domain name <pog.co> comprises the POG mark in its entirety. The disputed domain name only differs from Complainant’s trademark by the country code Top-Level Domain (“ccTLD”) suffix “.co” to the POG mark. This does not eliminate the identity or at least the confusing similarity between Complainant’s registered trademarks and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states:
“The applicable top-level suffix in the domain name (e.g., “.com”) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark”. (paragraph 1.2).
Thus, the Panel finds that the ccTLD suffix “.co” is not sufficient to negate the confusing similarity between the disputed domain name and the POG trademark.
The Panel therefore holds that the Complaint fulfils the first element of paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent has been commonly known by the disputed domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s trademarks.
The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to respondent to rebut complainant’s contentions. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).
Complainant has rights in the POG marks since 2012 which precede Respondent’s registration of the disputed domain name (2016).
According to the Complaint, Complainant’s website <pog.com> is one of the most popular Internet websites for video and virtual reality games in the world, and it has been among the top 1,000 websites on the Internet. (Annex I to the Complaint)
Moreover, Respondent is not an authorized dealer of POG branded products or services. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifts the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, WIPO Case No. D2009-0610; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:
(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the POG marks or to apply for or use any domain name incorporating the POG marks. Respondent claimed the disputed domain name was purchased for setting up a personal blog for his son, and provided a screen shot of a webpage with “pog” and his son’s name on it (although a URL has not been provided). But based on the information provided in the Complaint, the disputed domain name has been used to solicit offers to purchase the disputed domain name. (<domainnamesales.com> page redirected from <pog.co> WhoIs “Buy Pog.co” link, Annex J to the Complaint.). Moreover, the Panel visited the disputed domain name, and found that Respondent is currently using the disputed domain name in connection with a free parking website, which provides the links of free online games and movies (competing with Complainant’s services).2 Therefore, the Panel finds that Respondent has not provided sufficient evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term “pog”.
(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name <pog.co> on March 5, 2016 after the POG marks became well known in providing online gaming services. The disputed domain name is identical or confusingly similar to Complainant’s POG marks.
(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainant, Respondent via the Domain Broker of DomainNameSales.com offered to sell the disputed domain name for USD 3,999.
The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second element of paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on the website or location.
The Panel concludes that the circumstances referred to in paragraph 4(b)(i) and (iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and is using the disputed domain name in bad faith.
The Panel finds that Complainant has a reputation in the POG marks with regard to its products and services on online games. Complainant has registered its POG marks since 2012 and started to use it since 2007. Based on the information provided by Complainant, Complainant’s website at the domain name <pog.com> is one of the most popular Internet websites for video and virtual reality games in the world, which has been among the top 1,000 websites on the Internet.
It is not conceivable that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the disputed domain name (in 2016).
Moreover, Respondent offered to sell the disputed domain name for USD 3,999. Thus, the Panel concludes that the disputed domain name was registered and used in bad faith with the intent to sell the disputed domain name to Complainant or to a competitor of Complainant for valuable consideration in excess of Respondent’s documented out-of-pocket costs.
Furthermore, the Panel notes that Respondent is currently using the confusingly similar disputed domain name with the intention to “attract, for commercial gain, Internet users to Respondent’s websites”.
To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, WIPO Case No. D2009-0610).
Given the reputation of the POG marks, the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website to which the disputed domain name resolves. In other words, Respondent has through the use of a confusingly similar disputed domain name created a likelihood of confusion with the POG marks. Moreover, as mentioned above, Respondent offered to sell the disputed domain name for USD 3,999 via the website resolved by the disputed domain name via email. The Panel therefore concludes that the disputed domain name was registered and is being used by Respondent in bad faith.
In summary, Respondent, by choosing to register and use a domain name, which is confusingly similar to Complainant’s well-known trademarks, intended to ride on the goodwill of Complainant’s trademarks in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website to which the disputed domain name resolves and the offer to sell the disputed domain name to Complainant are indicative of registration and use of the disputed domain name in bad faith.
The Panel therefore holds that the Complaint fulfils the third element of paragraph 4(a) of the Policy.
For all 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 <pog.co> be transferred to Complainant.
Yijun Tian
Sole Panelist
Dated: August 19, 2016
1 As noted under the Factual Background, Annex K to the Complaint contradicts Respondent’s statement in this regard.
2 The Panel visited the current website resolved by the disputed domain name on August 19, 2016.