The Complainant is Zynga Game Network Inc. of San Francisco, California, United States of America, represented by Moses & Singer LLP, United States of America.
The Respondent is Vasilica Ionescu (also listed as Ionescu Vasilica) of Bacau, Romania.
The disputed domain names <chips4zynga.com> and <yourzyngachips.com> are registered with GoDaddy.com, Inc. The disputed domain name <zyngachips4sell.com> is registered with Register.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2009. Two amendments were subsequently filed on May 19, 2009 and June 12, 2009.
On May 7, 2009, the Center transmitted by email to GoDaddy.com, Inc. and Register.com a request for registrar verification in connection with the disputed domain names <chips4zynga.com> and <zyngachips4sell.com>, respectively. On May 7, 2009, GoDaddy.com, Inc. and Register.com transmitted by email to the Center verification responses confirming that Vasilica Ionescu was the registrant of the disputed domain name <chips4zynga.com> and that Ionescu Vasilica was the registrant of <zyngachips4sell.com>.
On May 27, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name <yourzyngachips.com>. On May 27, 2009, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent Vasilica Ionescu was listed as the registrant.
The Center verified that the second 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 June 18, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 8, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 9, 2009.
The Center appointed David J.A. Cairns as the sole panelist in this matter on July 20, 2009. 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 disputed domain name <zyngachips4sell.com> was registered on January 3, 2009; <chips4zynga.com> was registered on February 9, 2009; and <yourzyngachips.com> was registered on April 4, 2009.
The Panel sought to enter the websites at the disputed domain names on July 21, 2009. The <chips4zynga.com> domain name hosted on this date a parking page of GoDaddy.com with various “Sponsored Listing”' and “Related Searches”. The sponsored listings varied when the site was re-entered and many were in Spanish (the Panel accessed the site from Spain). They included a link to “www.mychipman.com”, the website of “My Chipman” “an independent group of social gaming supporters with a mission to provide you with the best deals and discounts for all your social gaming requirements”, that offers for sale playing chips that “will work on Facebook, Myspace, Bebo, HI5, Tagged, Yahoo and iPhone”. When the Panel attempted to enter <zyngachips4sell.com> and <yourzyngachips.com> it received error messages.
The Complainant is a corporation existing under the laws of the State of Delaware, United States with its principal place of business in San Francisco, California. It registered the domain name <zynga.com> on November 2, 2007 and filed a United States trademark application for ZYNGA on March 5, 2009. The application has neither been withdrawn nor opposed and bears the serial number 77684104.
The Complainant is a social gaming company providing games found on popular social networking sites such as Facebook and MySpace. It products include, inter alia, an online Texas Hold'Em poker game with a large following. The type of chips allegedly sold at the sites hosted at the disputed domain names are a necessary means of playing the Complainant's Texas Hold'Em game, as a user must bet a pre-determined amount to enter the game and then wager several varying amounts of chips to remain playing. According to the Complainant, the chips “provide entertainment value only” and “the only authorized method of obtaining ZYNGA poker chips is by being a registered user of Zynga's poker game, and logging into the personal account registered to the user seeking to obtain the poker chips.”
The Complainant puts forward evidence that the Respondent is responsible for all three sites. The Complainant notes that (i) the registrant names for the disputed domain names are identical but for the reversal of the first and last names; (ii) the registrant contact information for the disputed domain names all list the Sarata commune in the Bacau county of Romania as the place of residence as well as provide the same contact e-mail address and phone number; (iii) the websites located at the disputed domain names all share identical price points to sell chips, starting with the unusual quantity of 1.3 million; (iv) all three websites located at the disputed domain names are in English with two of the sites (<zyngachips4sell.com> and <chips4zynga.com>) bearing identical passages replete with typing errors, misspellings, and colloquialisms; and (v) all three websites use a third party named “Plimus” to process payments and provide the same e-mail address for “content related or technical questions” for the process of such payments.
The Complainant further argues that: (i) it has trademark rights over the mark ZYNGA; (ii) the disputed domain names are confusingly similar to the ZYNGA mark; (iii) the Respondent has no rights or legitimate interests in the ZYNGA mark; and (iv) the Respondent registered and is using the disputed domain names in bad faith.
The Complainant argues that it has made trademark use of the ZYNGA mark since June 2007. The Complainant submits as evidence a copy of its United States trademark application, filed March 5, 2009, as well several articles reporting the “runaway success” of the company and the wide dissemination of the mark. The Complainant states that the merk was introduced into the market on November 2, 2007, nearly two years before the Respondent's registration of the disputed domain names.
The Complainant argues that the disputed domain names are confusingly similar to its own ZYNGA mark: “Because Respondent's Domain Names reflect Complainant's coined and arbitrary Mark in its entirety, with the addition of non-distinctive elements such as CHIPS (which merely reinforce the association of ZYNGA with Complainant), the Domain Names are confusingly similar to Complainant's ZYNGA Mark.”
The Complainant further argues that the Respondent has no rights or legitimate interests in the trademark in question. The Complainant has not authorized the use of the disputed domain names nor the ZYNGA mark, nor is affiliated in any way with the Respondent. Furthermore, upon information and belief, the Complainant states that the Respondent is not commonly known by the name ZYNGA or any iteration thereof and that the Respondent registered the disputed domain names only after the ZYNGA mark was made popular by the Complainant. The Complainant further adds, “Importantly, in compliance with applicable gaming law, Zynga does not allow the redemption of chips for money or items of value. Accordingly, there is no authorized secondary market for poker chips.”
The Complainant argues that the Respondent “registered the Domain Names to falsely attract Internet users searching for information about ZYNGA, to purchase virtual poker chips from Zynga for use in Zynga online games, and/or to mislead and confuse consumers as to the origin, source or sponsorship of the purchaser's website and goods. Given the lack of a legitimate basis for such use of Zynga's ZYNGA mark in domain names, the only reasonable inference is that Respondent has acted with a bad faith intent to profit from Zynga's name and reputation.” The Complainant draws the Panel's attention to Telstra Corp. Ltd. v. Nuclear Marshmalows, WIPO Case No. D2000-0003 (February 20, 2000), that establishes that the registration of a domain name that is not significantly differentiated from a well-known mark is itself evidence of bad faith registration.
The Complainant further argues that the Respondent's bad faith maintenance of the site is exemplified by: (i) the fact that the well-known mark was “clearly known to Respondent prior to registration”; (ii) the Respondent's actions are intentional, wilful and in bad faith, and were committed with full knowledge of the use by the Complainant of the ZYNGA trademark and the Complainant's rights to use and license the mark; (iii) and that the Respondent seeks to profit from the consumer confusion that comes about from the deceptive domain names.
The Complainant seeks transfer of the disputed domain names.
The Respondent has made four communications during this proceeding. The first was sent on June 11, 2009, prior to the notification of the Second Amended Complaint. The e-mail states:
“hello my DEARS..
i am not a good speaker in English;
i really don't understand whats happened with this domain names
who want to get them
its ok just to say .. what i did with them was a test
if somebody want this domain names .. pls contact me
directly i can give them for free … but i think is fair they to pay me some cash .. because i never heard about WIPO and about what they say there
sorry for inconvenience
On June 18, 2009, an automatic reply to the Notification of the Complaint was received in the following terms:
As you might have noticed we had some technical problems on our website but now everything is fixed.So this is an email that only lets you know we are again accepting orders,but due to the larg amount of customers we are forced to accept for the moment only orders of 13 mil,30 mil and 50 mil chips.If you want to place an order you are welcomed to visit our website www.chips2uonline.com .For more details you can chat online with one of our operators.
On June 22, 2009, the following response to an e-mail from the Complainant to the Center, which had attached a signed copy of the Second Amended Complaint, a copy of the Exhibits to the Second Amended Complaint, and a copy of the Complaint Transmittal Coversheet for the Second Amended Complaint. The e-mail states:
this domain .. u forget it
and a lot of sites who really sell this zynga products
i don't sell and i don't need this domain names
anyway .. are not anymore on my propriety
The final e-mail was sent July 13, 2009, as a reply to an e-mail sent by the Center attaching the Notification of Respondent's Default in this proceeding. The Respondent's e-mail states:
“ok .. please let me know when i can transfer that domain names to the Compliant
The Panel is required to decide the 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 appropriate.
Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) that the Respondent's domain names have been registered and are being used in bad faith.
Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of the domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name.
It has not been disputed by the Respondent that the same person is the owner of the three disputed domain names.
The Panel's first task is to determine the Respondent's position from the emails received. For this purpose the Panel disregards the automatically generated response to the Notification of the Complaint on June 18, 2009 as this message is clearly intended for potential purchasers of chips from the Respondent's website, and not as a specific response to the Complaint. In considering the other responses, the Panel notes that the Respondent had received copies of various communications between the Center and the Complainant relating to the Complaint and its amendments, and therefore can be presumed to have known the exact domain names in dispute. The three specific responses all propose the transfer of the disputed domain names. The first response on June 11, 2009 indicated that the Respondent was willing to transfer these domain names “for free”, although it added that it would be “fair they to pay me some cash”. The other two responses repeat the preparedness to transfer the disputed domain names (the June 22, 2009 message indirectly through the phrase “take it”), and make no request for payment. It is true that the June 22, 2009 message refers to a domain name that is not at issue in these proceedings, but this message specifically refers to Zynga products, and was in response to a message attaching the Second Amended Complaint, so that the Panel concludes this message does also refer to the three domain names in this proceeding. Two of the messages include an apology, which is consistent with a recognition of the Complainant's rights. The last message on July 13, 2009 is an unequivocal offer to transfer the disputed domain names to the Complainant.
The Panel concludes that the Respondent in these communications has consented to the transfer of the disputed domain names. A consent to transfer justifies an order to transfer without any need for the Panel to consider and find proven the three elements of paragraph 4(a) of the Policy: see The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132 and Port Aventura, S.A. v. Demand Domains, Inc. WIPO Case No. D2008-0176. The former decision reasons as follows:
“A number of Panel decisions have considered the proper course where a respondent has unilaterally consented to transfer a disputed domain name to a complainant. There have been at least three courses proposed: (i) to grant the relief requested by the Complainant on the basis of the Respondent's consent without reviewing the facts supporting the claim (see Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207; Slumberland France v. Chadia Acohuri, WIPO Case No. D2000-0195); (ii) to find that consent to transfer means that the three elements of paragraph 4(a) are deemed to be satisfied, and so transfer should be ordered on this basis (Qosina Corporation v. Qosmedix Group, WIPO Case No. D2003-0620; Desotec N.V. v. Jacobi Carbons AB, WIPO Case No. D2000-1398); and (iii) to proceed to consider whether on the evidence the three elements of paragraph 4(a) are satisfied because the Respondent's offer to transfer is not an admission of the Complainant's right (Koninklijke Philips Electronics N.V. v. Manageware, WIPO Case No. D2001-0796) or because there is some reason to doubt the genuineness of the Respondent's consent (Société Française du Radiotéléphone-SFR v. Karen, WIPO Case No. D2004-0386; Eurobet UK Limited v. Grand Slam Co, WIPO Case No. D2003-0745).
“There is a difference between a unilateral consent to transfer and an admission of the elements of paragraph 4(a) of the Policy. A respondent might consent to transfer in circumstances where bad faith would be strongly denied (for example, where a domain name was registered in error). Accordingly, this Panel does not accept that a unilateral consent to transfer ‘deems' proved the three elements of paragraph 4(a) of the Policy. However, this Panel considers that a genuine unilateral consent to transfer by the Respondent provides a basis for an immediate order for transfer without consideration of the paragraph 4(a) elements. Where the Complainant has sought transfer of a disputed domain name, and the Respondent consents to transfer, then pursuant to paragraph 10 of the Rules the Panel can proceed immediately to make an order for transfer. This is clearly the most expeditious course (see Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207).”
This Panel adopts this reasoning from The Cartoon Network LP, LLLP Supra and finds that in these circumstances the Panel can order an immediate transfer of the disputed domain names pursuant to paragraph 10 of the Rules, and so orders in this case.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <chips4zynga.com>, <yourzyngachips.com> and <zyngachips4sell.com> be transferred to the Complainant.
David J.A. Cairns
Dated: July 31, 2009