The Complainant is Web Entertainment Limited of Las Vegas, Nevada, United States of America, represented by Randazza Legal Group, United States of America (“United States of America”).
The Respondent is Shekhar Gupta of Karnataka, India.
The disputed domain name <flashy8games.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 20, 2016. On January 20, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 20, 2016, 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 January 22, 2016 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 January 28, 2016. The Center sent a request for clarification of the mutual jurisdiction of the Amended Complaint on January 28, 2016. In response to the notification by the Center requesting the clarification of the mutual jurisdiction of the Amended Complaint, the Complainant filed an amendment to the Amended Complaint on January 29, 2016.
The Center verified that the Complaint together with the amended Complaint and amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on February 1, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 21, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 23, 2016.
The Center appointed Luca Barbero as the sole panelist in this matter on March 7, 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.
The Complainant operates the web site “www.y8.com”, where it provides online video games, virtual reality games, and other entertainment services to Internet users.
The Complainant is the owner of the following trademark registrations:
- Community Trademark No. 009412255 for Y8 (word mark), filed on September 30, 2010 and registered on August 25, 2011, in Nice classes 35 and 41;
- Community Trademark No. 009649609 for Y8, Y8.COM (figurative mark), filed on March 31, 2011 and registered on July 25, 2011, in Nice classes 35 and 41;
- United States Trademark No. 4130791 for Y8 (word mark), filed on April 11, 2011 and registered on April 24, 2012, for services comprised in Nice class 41;
- United States Trademark No. 4130792 for Y8, Y8.COM (figurative mark), filed on April 11, 2011 and registered on April 24, 2012, for services comprised in Nice class 41.
The domain name <y8.com> was registered on September 1, 1997 and was acquired by the Complainant’s predecessor in interest in 2006. Since December 2006, the domain name <y8.com> has been used by the Complainant and its predecessor to provide entertainment services under the trademark Y8.
The disputed domain name <flashy8games.com> was registered on June 18, 2012 and is pointed to a web site providing online video games as well as advertising other gaming web sites.
The Complainant states that its web site “www.y8.com” is one of the most popular Internet web sites for video and virtual reality games in the world, and that, according to the Alexa ranking, it is among the world’s top 1,200 most popular web sites for global web site traffic.
The Complainant contends that the disputed domain name is identical to the Complainant’s mark Y8, adding only the common terms “flash” and “games” before and after the mark, which does nothing to lessen the likelihood of confusion created by the disputed domain name.
The Complainant asserts that the Respondent will be unable to provide concrete evidence that it has legitimate rights or legitimate interests in the disputed domain name since i) the disputed domain name is used to provide services directly competitive with those offered by the Complainant and, specifically, provides the same kind of online video games and entertainment that can be found on the Complainant’s site “www.y8.com”; ii) 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; iii) the Respondent has no argument that it is making a legitimate noncommercial or fair use since the Respondent is clearly using the disputed domain name for a commercial purpose, publishing on its web site also advertisements, for which the Respondent is undoubtedly compensated; iv) “Y8” is a term with no inherent meaning, it is arbitrary and fanciful, thus being the strongest kind of trademark; v) no evidence indicates that the Respondent is commonly known by the disputed domain name and, indeed, the Respondent relies on a privacy service to obscure its own actual identity.
The Complainant also states that the Respondent registered and is using the disputed domain name in bad faith, because the Complainant and its predecessor in interest have been using the mark Y8 in connection with the gaming web site “www.y8.com” since 2006, predating the Respondent’s registration by nearly six years and, therefore, the Respondent’s provision of services that are highly competitive with, if not identical to, the Complainant’s services, makes it inconceivable that the Respondent was not aware of the Complainant’s mark when it registered the disputed domain name. The Complainant also highlights that, in light of the publication, on the Respondent’s web site, of the message “Flash Games – Play Free Y8 Flash Games Online [Y8.com] at Flashy8games.com”, there is no question whatsoever that the Respondent registered the disputed domain name with full awareness of the Complainant’s rights in the mark Y8 and with the specific intention of profiting from the Complainant’s mark.
The Complainant further contends that, even if somehow the Panel determines that the Respondent did not have actual knowledge of the marks Y8 and Y8, Y8.COM at the time of any of its registrations, constructive knowledge of a mark is properly applied in UDRP proceedings.
The Complainant finally indicates that the Respondent’s use of a privacy service for the registration of the disputed domain name provides further evidence of bad faith registration.
With specific reference to the use of the disputed domain name, the Complainant states that, in view of the Respondent’s promotion of competing services and the absence of a disclaimer, the Respondent intended to disrupt the Complainant’s business and to divert Internet traffic away from the Complainant’s web site, attracting users to its web site by creating a likelihood of confusion among the consuming public as to the source, sponsorship, affiliation, or endorsement of the web site located at the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or a service in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
The Complainant has established rights in the trademark Y8 based on the United States and Community Trademark registrations for Y8 (word mark) mentioned above.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark as it incorporates it in its entirety with the mere addition of two generic terms, “flash” and “games”, which are insufficient to exclude confusing similarity. In fact, these terms enhance the confusion as they are descriptive of the services offered by the Complainant.
In view of the above, the Panel finds that the requirements prescribed by paragraph 4(a)(i) of the Policy have been met.
It is well established that a complainant is required to make a prima facie case that the respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393; Accor v. Eren Atesmen, WIPO Case No. D2009-0701, and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
In the case at hand, the Panel finds that the Complainant has made a prima facie case and that the Respondent, by not submitting a Response, has failed to demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.
According to the documents and statements submitted, there is no relation between the Respondent and the Complainant, the Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademark or to register the disputed domain name.
In addition, there is also no indication before the Panel that the Respondent, which hid its identity through a privacy service and whose name is – according to the data disclosed by the Registrar - Shekhar Gupta, might be commonly known by the disputed domain name.
The Panel also finds that the Respondent’s use of the disputed domain name, confusingly similar to the Complainant’s trademark Y8, in connection with a web site providing online gaming services identical to, and in direct competition with, those of the Complainant does not amount to a bona fide use of the disputed domain name in connection with any products or services or to a legitimate noncommercial or fair use of the disputed domain name.
The Panel therefore finds that the Complainant has proven the Respondent’s lack of rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy.
The Panel notes that the disputed domain name is confusingly similar to the Complainant’s trademark Y8, which is constituted of a fanciful term and has no meaning in any language. Moreover, the Complainant’s trademark is combined in the disputed domain name with two terms, namely “flash” and “games”, which are descriptive of the Complainant’s online gaming services. Furthermore, the Complainant has proven that its trademark Y8 has been used at least as of December 2006 to provide entertainment services on the web site “www.y8.com”.
In view of the above, the Panel finds it highly unlikely that the Respondent registered the disputed domain name, in June 2012, without intention to refer to the Complainant’s trademark. Indeed, the Respondent’s reference to the Complainant’s trademark Y8 on the web site to which the disputed domain name resolves and the Respondent’s provision of services identical to those of the Complainant induce to believe that the Respondent was well aware of the Complainant’s mark and registered the disputed domain name with said trademark in mind.
As highlighted above, the disputed domain name is pointed to an online gaming web site displaying several references to the Complainant’s trademark without providing any disclaimer as to the lack of association with the Complainant and its web site. Furthermore, the web site also displays advertisements redirecting users to other gaming web sites. The Panel finds that such use of the disputed domain name amounts to use in bad faith, and that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s web site by creating a likelihood of confusion with the mark Y8 as to source, sponsorship, affiliation, or endorsement of the Respondent’s web site.
In light of the circumstances of the case, the Panel finds that the Respondent’s use of a privacy service to shield its identity and its failure to respond to the Complaint are additional circumstances evidencing the Respondent’s bad faith.
The Panel finds that the Respondent has registered and is using the disputed domain name in bad faith under 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, <flashy8games.com>, be transferred to the Complainant.
Luca Barbero
Sole Panelist
Date: March 22, 2016