WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

GameStop, Inc. v. Above.com Domain Privacy / Protection Domain

Case No. D2018-1243

1. The Parties

The Complainant is Gamestop, Inc. of Grapevine, Texas, United States of America (“United States”), represented by Kelley Drye & Warren, LLP, United States.

The Respondent is Above.com Domain Privacy of Beaumaris, Victoria, Australia / Protection Domain of Panama City, Panama.

2. The Domain Name and Registrar

The disputed domain name <gaemstop.com> (the “Domain Name”) is registered with Above.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2018. On June 4, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 5, 2018, 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 June 8, 2018 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 June 8, 2018.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 2, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 4, 2018.

The Center appointed David Taylor as the sole panelist in this matter on July 20, 2018. 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.

4. Factual Background

The Complainant, GameStop, Inc., is operating as a retailer of computer, video and electronic games, consumer electronics, wireless services, accessories, and related goods and services. The Complainant is headquartered in Grapevine, Texas, United States, and, together with its affiliates, operates over 7,000 retail stores throughout the United States, Canada, Australia, New Zealand, and Europe. The Complainant’s retail stores operate under the GAMESTOP brand name, among others. The Complainant has registered trade mark rights in the term GAMESTOP (among others, United States trade mark No. 1,707,460, registered on August 11, 1992 for services in class 45 and European Union trade mark No. 003045812, registered on February 5, 2003 for services in classes 35).

The Domain Name was registered by the Respondent on April 21, 2014. At the time of filing, the Domain Name was redirected to Complainant’s website “www.gamestop.com”. The Complainant contends that this redirection is being carried out by a member of Complainant’s affiliate network, who is monetizing the traffic that it is redirecting to Complainant’s website.

5. Parties’ Contentions

A. Complainant

The Complainant avers that it has extensive, exclusive rights in the well-known GAMESTOP marks throughout the world in connection with retail and online retail store services featuring computer, video and electronic games, consumer electronics, wireless services, accessories, and related goods and services. The Complainant contends that its GAMESTOP trade marks are a distinctive indicator of the source of its goods and services. As evidence, the Complainant has supplied copies of its trade mark registration certificates.

In response to each of the requirements under the Policy, the Complainant asserts as follows:

(i) The Domain Name is confusingly similar to the Complainant’s trade mark.

According to the Complainant, the Domain Name is nearly identical and confusingly similar to the GAMESTOP marks owned by Complainant or one of its affiliates. The Complainant submits that the Domain Name registered and used by the Respondent is confusingly similar to the well-known and distinctive GAMESTOP marks in that it is virtually identical to the GAMESTOP trade mark. The Complainant underlines that the only difference between the Domain Name and the GAMESTOP trade mark is the inversion of the letters “m” and “e”. The Complainant contends that by incorporating an almost identical version of the GAMESTOP trade mark in the Domain Name and directing users to Complainant’s “www.gamestop.com” website, the Respondent has attempted to attract and misdirect consumers seeking products and services offered by the Complainant.

(ii) The Respondent has no rights or legitimate interests in the Domain Name.

According to the Complainant, the Respondent has no rights or legitimate interests in respect of the Domain Name and the Domain Name is not the trade name or company name of the Respondent.

Furthermore, the Complainant submits that Respondent is not commonly known by that name, is not a licensee of the Complainant and is not otherwise authorized to use Complainant’s GAMESTOP marks. The Complainant avers that by registering the Domain Name, the Respondent’s sole intention was clearly to benefit financially from, and/or unlawfully trade upon, the renown associated with Complainant’s trade marks. The Complainant submits that the use of the GAMESTOP marks does not bear any legitimate relationship to the Respondent’s business but for seeking to create a false association with Complainant, and to attract visitors seeking Complainant’s website and/or information about Complainant’s goods and services for Respondent’s own commercial gain. According to the Complainant, in order for Respondent’s use to be considered to have a legitimate relationship it must make non-infringing use of Complainant’s mark, which it does not.

Further, the Complainant states that by redirecting users to Complainant’s website, the Respondent did actually benefit financially from and/or unlawfully trade upon the renown associated with Complainant’s trade marks. The Complainant adds that the Domain Name is redirected to Complainant’s website “www.gamestop.com” by a member of Complainant’s affiliate network, Protected Brand, who is monetizing the traffic that it is redirecting to Complainant’s website.

(iii) The Domain Name was registered and is being used in bad faith

The Complainant argues that given that the Respondent is a member of Complainant’s affiliate network, as well as the prior use of the GAMESTOP marks by Complainant and its affiliates for several years before the Domain Name was registered, and the renown of Complainant’s GAMESTOP marks and associated goods and services at the time the Domain Name was registered, there can be no doubt that Respondent was well aware of Complainant’s and its affiliates’ rights in the GAMESTOP marks at the time it registered the Domain Name, and that it did so for illegitimate purposes. According to the Complainant, the Respondent’s illegitimate intentions are particularly clear because Respondent’s website redirects to Complainant’s “www.gamestop.com” website.

The Complainant states that the Respondent’s use of the Domain Name is in bad faith as the Respondent is a member of Complainant’s affiliate network. The Complainant contends that by registering an intentional misspelling of the GAMESTOP trade mark in the Domain Name and redirecting users to Complainant’s website, Respondent clearly intended to attract Internet users to its website to capitalize on the goodwill of the well-known GAMESTOP marks for its own commercial gain by creating a likelihood of confusion with Complainant’s marks and collecting financial payments from Complainant.

According to the Complainant, the Respondent’s bad faith is also evidenced by its use of a privacy service to conceal its identity. The Complainant states that as a result of Respondent’s steps to anonymize itself and its other registration activity, Complainant is unable to determine whether Respondent has engaged in a pattern of registering domain names featuring trade marks in which it has no legitimate interest.

The Complainant respectfully requests that the Panel instruct the Registrar to provide the Complainant with a list of other domain names registered by the Respondent. According to the Complainant, based on the foregoing, Respondent clearly registered and is using the Domain Name in bad faith in violation of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that to obtain the transfer of the Domain Name, the Complainant must prove the following three elements:

(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(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.

Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. Furthermore, paragraphs 10(b) and 10(d) of the Rules provide that the Panel shall ensure that the parties are treated with equality and shall determine the admissibility, relevance, materiality, and weight of the evidence.

In addition, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it considers appropriate.

The Panel notes that the Respondent did not reply to the Complainant’s contentions. The Respondent’s failure to respond, however, does not automatically result in a decision in favor of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Taking the aforementioned provisions into consideration, the Panel finds as follows:

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Panel to consider first whether the Complainant has established relevant trade mark rights. The Complainant has provided evidence that it has registered trade mark rights in the term GAMESTOP in connection with retail and online retail store services featuring computer, video and electronic games, consumer electronics, wireless services, accessories, and related goods and services. The Panel is therefore satisfied that the Complainant has established relevant trade mark rights.

The Panel is also required under paragraph 4(a)(i) of the Policy to examine whether the Domain Name is identical or confusingly similar to the Complainant’s trade mark. The Domain Name, <gaemstop.com> consists of a misspelt version of the Complainant’s GAMESTOP trade mark (having inversed of the letters “m” and “e”). Prior panels deciding under the Policy have held that when a domain name contains a common or obvious misspelling of a trade mark, as in the present case, it will normally be found to be confusingly similar to such trade mark, where the misspelt trade mark remains the dominant or principal component of the domain name. See section 1.9 of the WIPO Overview 3.0 and also National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011 (<minorleaugebaseball.com>)(“Typosquatted domain names are intended to be confusing so that Internauts, who unwittingly make common typing errors, will enter the domain name instead of the mark […]. The Panel finds the disputed domain name is confusingly similar to that mark”).

Furthermore, it is widely accepted that the “.com” generic Top-Level Domain is generally irrelevant for the purpose of assessing identity or confusing similarity between a trade mark and a domain name.

The Panel therefore finds that the Domain Name is confusingly similar to the Complainant’s trade mark.

The Complainant has therefore satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the Complainant to demonstrate that the Respondent has no rights or legitimate interests in the Domain Name. Paragraph 4(c) of the Policy sets out a list of non-exhaustive circumstances that may suggest that a respondent has rights or legitimate interests in a domain name, including but not limited to:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”

A complainant is required to make a prima facie case that the respondent does not have rights or legitimate interests in the disputed domain name. 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 in question. If, however, 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. See section 2.1 of the WIPO Overview 3.0.

The Panel has considered the evidence put forward by the Complainant and considers that the Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interests in the Domain Name and that, as a result of its default, the Respondent has failed to rebut such a showing.

The Respondent is not a licensee of the Complainant, and is not otherwise authorized to use Complainant’s GAMESTOP marks. There is no evidence that the Respondent is commonly known by the Domain Name, in accordance with paragraph 4(c)(ii) of the Policy.

The Domain Name redirects to Complainant’s official website and therefore the Respondent is not using the Domain Name in connection with any bona fide offer of goods or services in accordance with paragraph 4(c)(i) of the Policy and the Respondent is not making legitimate noncommercial or fair use of the Domain Name in accordance with paragraph 4(c)(iii) of the Policy (see PayPal Inc. v. Jon Shanks, WIPO Case No. D2014-0888).

The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to demonstrate that the Domain Name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that may indicate bad faith, including but not limited to:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The Panel finds that the Domain Name was registered in bad faith. The Complainant’s GAMESTOP trade mark not only predates the registration date of the Domain Name, but also enjoys considerable renown in connection with retail and online retail store services featuring computer, video and electronic games, consumer electronics, wireless services, accessories, and related goods and services, as shown by the evidence put forward by the Complainant. Furthermore, the Domain Name <gaemstop.com> consists of an intentional misspelling of the Complainant’s trade mark, moreover, almost identically mirrors the Complainant’s domain name <gamestop.com>. Prior panels deciding under the Policy have held that “typosquatting is inherently parasitic and of itself evidence of bad faith”. See National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011. Indeed, given the Complainant’s renown and the nature of the Domain Name itself, it is clear that the Respondent had knowledge of the Complainant’s rights at the time of registration of the Domain Name and that the Respondent deliberately registered it to take advantage of such rights.

The use of the Domain Name to redirect the traffic to the Complainant's own website also implies bad faith as there is a risk that the Respondent may at any time cause Internet traffic to redirect to a website that is not that of, or associated with, the Complainant (See MySpace, Inc. v. Mari Gomez, WIPO Case No. D2007-1231) and as it may increase customer confusion that the Domain Name is somehow licensed or controlled by the Complainant (see PayPal Inc. v. Jon Shanks, WIPO Case No. D2014-0888).

The Panel draws an adverse inference from the Respondent’s use of a privacy protection service to conceal its identity. Whilst privacy shields may be legitimate in certain cases, it is difficult to see why the Respondent in this case needs to protect its identity “except to frustrate the purposes of the Policy or make it difficult for a brand owner to protect its trade marks against infringement, dilution and cybersquatting”. See Ustream.TV, Inc. v. Vertical Axis, Inc, WIPO Case No. D2008-0598.

Finally, the Panel also finds that the Respondent’s failure to take part in the present proceedings constitutes an additional indication of its bad faith.

The Complainant has therefore satisfied paragraph 4(a)(iii) of the Policy.

The Panel rejects the Complainant's request to instruct the Registrar to provide the Complainant with a list of other domain names registered by the Respondent as this action is outside of the Panel's general powers (See paragraph 10 of the Rules).

7. Decision

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 <gaemstop.com> be transferred to the Complainant.

David Taylor
Sole Panelist
Date: August 3, 2018