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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

TBNR, LLC. v. Eha Julaeha, prestonplayz.net

Case No. D2021-0813

1. The Parties

The Complainant is TBNR, LLC., United States of America (“United States”), represented by Brackett & Ellis, P.C., United States.

The Respondent is Eha Julaeha, prestonplayz.net, Indonesia.

2. The Domain Name and Registrar

The disputed domain name <prestonplayz.net> is registered with OnlineNIC, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2021. On March 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 21, 2021, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint and the proceedings commenced on March 31, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 21, 2021.

The Center appointed Antony Gold as the sole panelist in this matter on April 27, 2021. 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 operates a website, using the domain name <prestonplayz.com>, and social media channels which provide links and streaming content, primarily about the Minecraft video game, to more than nine million subscribers. The Complainant’s channels are branded as “PrestonPlayz”, this being the name by which its founder, Preston Arsement, is commonly known by followers of his gaming activities.

The Complainant owns two trade marks to protect its trading style, including United States service mark, registration number 5,174,934, for PRESTONPLAYZ, in class 41, registered on April 4, 2017, the first use in commerce date being November 29, 2010.

The disputed domain name was registered on March 5, 2020. At the time the complaint was filed it resolved to a website containing, towards the top of the home page, the heading “Preston’s Gaming”, beneath which werea series of links, primarily to gaming-related content, including the Minecraft video game. Beneath those links is another heading, “PrestonPlayz”, which was followed by further links to additional content, all related to the Minecraft game.

5. Parties’ Contentions

A. Complainant

The Complainant refers to its trade marks for PRESTONPLAYZ, details of one of these marks having been provided above, and says that the disputed domain name is identical or confusingly similar to its mark. It is spelt identically and the only difference is the generic Top Level Domain (“gTLD”) “.net”.

The Complainant says also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no evidence to demonstrate the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods and services which is not associated with the services of the Complainant. Nor has the Complainant found evidence to indicate that the Respondent has been commonly known by the disputed domain name. Furthermore, the Respondent does not appear to be making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or tarnish the trade mark or service mark in issue.

Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. The Complainant’s video content features its founder, Preston Arsement, playing video games and providing commentary on them. The Complainant has used its mark in this manner since 2010 and the Respondent registered the disputed domain name ten years later. The disputed domain name uses the Complainant’s registered trade mark and seeks to provide visitors to its website with the content of the Complainant’s website without license or authorization to do so.

Internet users who visit the Respondent’s website find a webpage which uses the heading “Preston’s Gaming” and web content similar to that offered by the Complainant. The Respondent is using its website and the disputed domain name to divert traffic from the Complainant’s own website and gain the benefit of the additional traffic and clicks on its links. Most of these users are likely to be customers or potential customers of the Complainant looking for the Complainant’s website. The Respondent’s website does not appear to provide any other goods or services which might independently attract consumers. Accordingly, the Respondent seeks to profit from customers of the Complainant making an error when searching for the Complainant’s website. The Respondent is therefore using the disputed domain name to intentionally attempt to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or a product or service on it.

B. Respondent

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

6. Discussion and Findings

Dealing, first, with the Respondent’s failure to file a response to the Complaint, 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 these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.

Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:

(i) the disputed 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 disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided details of the registered trade and service marks it owns for PRESTONPLAYZ, including the mark in respect of which full details have been given above. These establish its rights in this mark.

As a technical requirement of registration, the gTLD that is “.net” in the case of the disputed domain name, is typically disregarded when applying the test for identicality or confusing similarity under the first element. The disputed domain name therefore comprises the Complainant’s PRESTONPLAYZ mark in full and without any alteration. It is accordingly identical to the Complainant’s PRESTONPLAYZ service mark.

The Panel therefore finds that the disputed domain name is identical to a service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out circumstances, without limitation, by which a respondent might demonstrate that it has rights or a legitimate interest in a domain name. These are, summarised briefly: (i) if the respondent has been using the domain name in connection with a bona fide offering of goods and services; (ii) if the respondent has been commonly known by the domain name; or (iii) if the respondent has been making a legitimate noncommercial or fair use of the domain name.

The Respondent’s website, whilst rather basic, is plainly intended to capture Internet users who have been searching for the Complainant’s website. There is no other explanation as to why the Respondent would use the terms “Preston’s Gaming” and “PrestonPlayz” as headings for links which are related primarily to the Minecraft video game, this being a game with which the founder of the Complainant, Preston Arsement, is closely associated. Such use does not comprise a bona fide offering of goods and services. See, for example, the decision of the panel in Richemont International SA v. brandon gill, WIPO Case No. D2013-0037: “Complainant contends that Respondent is using the Domain Name to publish websites that offer products for sale that compete directly with Complainant and/or which may be counterfeit copies of Complainant’s own products. In the absence of any denial, the Panel infers that through these activities Respondent is using a deliberately similar version of Complainant’s very well-known IWC Trademark and Complainant’s significant goodwill and reputation to attract Internet traffic. The Panel concludes that the Domain Name has been employed as a means of improperly diverting Internet customers. In those circumstances, it is difficult to see how Respondent’s conduct could be characterized as legitimate and thus permissible.”

The second circumstance can be dealt with briefly; there is no evidence that the Respondent has been commonly known by the disputed domain name. The third circumstance is also inapplicable; the Respondent’s website is commercial in character and the composition of the disputed domain name is such that it carries a high risk of implied affiliation with the Complainant, which prevents its use from being considered fair; see section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition.

The Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name and the burden of production shifts to the Respondent to show that it does, in fact, have such rights or interests. The Respondent having failed to respond to the Complaint, has self-evidently not satisfied that burden. The Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name.

C. Registered and Used in Bad Faith

The date on which the Complainant established its website offering is not entirely clear, but the Complainant’s evidence establishes that it was well-known for the provision of Minecraft-related content as at the date of registration of the disputed domain name in March 2020. Given the identicality between the disputed domain name and the Complainant’s mark, coupled with the content of the Respondent’s website, it is evident that the Respondent was aware of the Complainant and its PRESTONPLAYZ mark as at the date of registration of the disputed domain name and registered it in order to take unfair advantage of it. As the panel found in Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith.” The Panel similarly finds the Respondent’s registration of the disputed domain name to have been in bad faith.

Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstance set out in paragraph 4(b)(iv) of the Policy is if a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.

The use to which the Respondent has put the disputed domain name falls within paragraph 4(b)(iv) in that it resolves to a website which uses the Complainant’s PRESTONPLAYZ mark and a similar name, “Preston’s Gaming”, in relation to Minecraft-related content which Internet users will associate with the Complainant. Users familiar with the Complainant’s website who visit the Respondent’s website, whether intentionally or by accident, may not necessarily be confused into thinking that they have landed on the latest iteration of the Complainant’s website, but they are prone to being misled into the belief that the Respondent’s website is authorized by, or has some association with, the Complainant. Such a belief will be reinforced because of the identicality between the disputed domain name and the Complainant’s PRESTONPLAYZ mark. Furthermore, there is no conceivable good faith use which the Respondent could make of the disputed domain name, nor has the Respondent attempted to explain or justify its position, through service of a response to these proceedings or otherwise. These factors collectively point to bad faith registration and use of the disputed domain name; see, in broadly similar circumstances, the decisions of the panels in Swarovski Aktiengesellschaft v. WhoisGuard Protected / Peter D. Person, WIPO Case No. D2014-1447 and Walgreen Co. v. Muhammad Azeem / Wang Zheng, Nicenic International Group Co., Limited, WIPO Case No. D2016-1607.

The Panel accordingly finds that the disputed domain name was registered and is being used in bad faith.

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 disputed domain name <prestonplayz.net> be transferred to the Complainant.

Antony Gold
Sole Panelist
Date: May 10, 2021

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