The Complainant is Zynga Game Network, Inc. of San Francisco, California, United States of America, represented by Keats McFarland & Wilson, LLP, United States of America.
The Respondent is Just Add Chips LLC of Pittsburgh, Pennsylvania, United States of America.
The disputed domain name <zyngapoker.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2009. On November 2, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On November 2, 2009, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 13, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 3, 2009. The Response was filed with the Center on November 30, 2009.
The Center appointed Dennis A. Foster as the sole panelist in this matter on December 9, 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 Complainant is a United States of America company that has offered online gaming opportunities, including poker games, to Internet users since June 2007. It has obtained a United States Patent and Trademark Office (“USPTO”) registration for its trademark and service mark, ZYNGA (Registration No. 3,685,749, issued September 22, 2009).
The disputed domain name, <zyngapoker.com>, was registered by the Respondent on January 15, 2008. The Respondent uses the name to host a website that provides information related to poker and links to at least one third party online poker gaming website.
- The Complainant is a leading social gaming company that provides, among other things, access to a variety of online games, including poker games.
- The Complainant has used the trademark and service mark, ZYNGA, in commerce since June 2007. It has registered the mark with the USPTO.
- Having enjoyed success since inception, the Complainant's games had been installed over 10 million times and reached almost 700,000 unique game players every day by January 2008. Currently, services supplied under the Complainant's mark boast over thirty games, host 129 million monthly active users and generate revenues well in excess of USD 100 Million per year. The Complainant's product, Zynga Poker, has gained worldwide recognition and is represented by over 150 million hands of poker dealt daily.
- The Complainant's mark has gained a secondary meaning within the social gaming marketplace. The mark is inherently distinctive, and, through extensive sales and advertising, has become famous and an identifier of the Complainant's products and services.
- The Respondent registered the disputed domain name on January 15, 2008, approximately six months after the Complainant began operating under its mark and the same day an article in the New York Times newspaper featured the Complainant's online business successes.
- The Complainant contacted the Respondent to obtain the disputed domain name, but the Respondent declined sale, noting that “zyn” is a term found in the Oriental Biographical Dictionary and that “ga” is “Ga”, the abbreviation for the United States state of Georgia. Further correspondence between the parties led to the Respondent offering to sell the disputed domain name to the Complainant for USD 3,000.
- The disputed domain name is identical or confusingly similar to the Complainant's mark, ZYNGA. The name incorporates the mark in full, and the additional term, poker, refers to one of the Complainant's most popular offerings.
- The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not authorized or licensed the Respondent to use the Complainant's mark. The Respondent is not commonly known by the name. The Respondent is not using the disputed domain name in a “bona fide offering of goods or services” or in a “noncommercial or fair use” manner. The disputed domain name resolved to a website that offers short articles on online poker games and provides links, on a pay-per-click basis, to a website owned by a competitor of the Complainant.
- Disclaimers found on the website regarding non-involvement with the Complainant, fail to legitimize the Respondent's use of the disputed domain name.
- The Respondent registered and is using the disputed domain name in bad faith. The Respondent registered the name only after being well aware of the earlier use of and goodwill associated with the Complainant's ZYNGA mark. Clearly, the Respondent seeks to benefit financially through Internet user confusion with that mark as to its presumed association with the Complainant and its products and services. This infringing use prevents the Complainant from fully exploiting its mark. Moreover, the Respondent's offer to sell the disputed domain name, for far in excess of its cost to the Respondent, serves as further evidence of bad faith registration and usage.
- The Respondent has owned a company called Zythos, Inc. since 1996. The Respondent is a symbolist who studies religious meanings. “Zyn” is an ancient Cabalistic prefix and/or root word denoting “sword.” Whereas “ga” is really “Ga,” the abbreviation for the state of Georgia. Ergo, the disputed domain name should be most correctly written as <ZynGaPoker.com>.
- The Respondent was involved in promoting poker before the Complainant's inception. The Respondent owns other poker-related domain names, such as <pokerac.com>, <pokerbuenosaries.com> and <pokercambodia.com>.
- The Respondent does not offer poker games at the website connected with the disputed domain name, only information.
- The Complainant's poker services were known as “Texas Holdem Poker”, not “Zynga Poker”, when the Respondent registered the disputed domain name.
- The Respondent does not read the New York Times, and any connection between registration of the disputed domain name and the timing of an article appearing in that newspaper is pure speculation – not evidence.
- The Respondent never initiated an offer to sell the disputed domain name, but merely reacted to the Complainant's initiated request to obtain the disputed domain name. During the negotiations, the Respondent never conceded infringing use of the disputed domain name or bad faith registration.
- The Complainant contacted the Respondent well over a year after registration of the disputed domain name. If Complainant has the rights to it claims, it would have contacted the Respondent sooner or registered the domain name prior to the Respondent's registration of the same.
- The Respondent has legitimate rights and interests in the disputed domain name. News, as opposed to goods or services, is offered at the website found at the domain name. Consistent with good faith usage of the disputed domain name, the Respondent has placed a disclaimer on that website which states that it is not associated with the Complainant.
Paragraphs 4(a)(i)-(iii) of the Policy require that the Complainant must prove each of the following three elements to obtain an order that the disputed domain name, <zyngapoker.com>, should be transferred:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name is registered and being used by the Respondent in bad faith.
The Panel has been presented with persuasive evidence (Complaint, Annex G) that the Complainant has a valid USPTO trademark and service mark registration for the mark, ZYNGA, and thus concludes that the Complainant possesses sufficient rights in that mark to satisfy the requirements of Policy paragraph 4(a)(i). See, Paisley Park Enterprises v. James Lawson, NAF Claim No. FA384834 (“Complainant established rights in the PAISLEY PARK mark by registering it with the United States Patent and Trademark Office…”); and Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261.
The disputed domain name, <zyngapoker.com>, combines the Complainant's ZYNGA mark with the common word, poker, and the gTLD, “.com”. Supplying online poker gaming services is a major component of the Complainant's business, so the additional common term found in the disputed domain name does little, if anything, to distinguish it from the Complainant's mark in the Panel's estimation. Prior UDRP panels ruling in like circumstances provide plenty of support for the Panel's determination that the disputed domain name is at least confusingly similar to that mark. See, Accenture Global Services GmbH v. Alok Mishra, WIPO Case No. D2007-0559 (finding <accentureconsultants.com> to be confusingly similar to the mark ACCENTURE); The Gillette Company v. RFK Associates, NAF Claim No. FA492867 (ruling that the domain name, <duracellbatteries.com>, was confusingly similar to the complainant's mark, DURACELL); and Isleworth Land Company v. Lost in Space, SA, NAF Claim No. FA117330 (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy [paragraph] 4(a)(i) analysis.”).
As reasoned above, the Panel finds that the Complainant has proven Policy element 4(a)(i).
As articulated in innumerable previous Policy decisions, paragraph 4(a)(ii) places upon a complainant in a UDRP case the burden of putting forth at least a prima facie case that the Respondent has no rights or legitimate interests in a domain name. Having achieved that, said complainant will have shifted the burden to the respondent to come forward with clear evidence that it possesses such rights or legitimate interests. See, Aetna Inc. v. Peter Carrington a/k/a Party Night, Inc., NAF Claim No. FA154527 (“When Complainant asserts a prima facie case against Respondent, the burden of proof shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy [paragraph] 4(a)(ii).”); and Julian Barnes v. Old Barn Studios Limited, WIPO Case No. D2001-0121.
In the present case, the Complainant has established successfully such a prima facie case by convincing the Panel of its rights in a valid trademark and service mark that is confusingly similar to the disputed domain name and by contending unequivocally that it never authorized or licensed the Respondent's use of that mark.
To counter the Complainant's prima facie case, the Respondent fails to invoke the defense suggested in Policy paragraph 4(c)(ii), i.e., that the Respondent, or a company owned by the Respondent, is commonly known by the disputed domain name. The Panel notes that the Respondent does contend that it owns a company named, Zythos, Inc. Although so noting, the Panel believes that, though the first two letters in that company's name and the disputed domain name, “zy” , are the same, there is no independent basis to conclude reasonably that the Respondent's company would be commonly referred to as, “zyngapoker”. Thus, the Panel finds that paragraph 4(c)(ii) does not apply.
Furthermore, the Respondent itself contends that “no goods or services are offered on [the] Respondent's site.” Thus, the Panel is compelled to rule that the Respondent cannot rely upon the legitimizing criterion listed in Policy paragraph 4(c)(i), because that paragraph depends upon the Respondent using the disputed domain name “in connection with a bona fide offering of goods or services.”
The Respondent implies that it can establish its rights or legitimate interests in the disputed domain name by satisfying the circumstance cited in paragraph 4(c)(iii) of the Policy, i.e., that it 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 the trademark or service mark at issue.” The Respondent does so in contending that its website supplies solely news and information concerning poker.
In contradiction to the aforesaid contention, the Complainant asserts that the Respondent's disputed domain name website also contains links to a third party online poker gaming website, presumably for remuneration to the Respondent through pay-per-click fees. Mindful that the Respondent now bears the burden on this issue, the Panel believes that the Complainant must prevail based upon the evidence (Annex I) that it submitted. That evidence establishes clearly that the Respondent's website does offer a link to a third party website entitled “Full Tilt Poker.” The Panel concludes that this link is offered certainly for the Respondent's financial gain, violating the strictures of paragraph 4(c)(iii).
The Respondent's remaining argument regarding its rights or legitimate interests in the disputed domain name revolves around the rather tortured claim that the name is actually made up of common or generic terms. The Panel can see clearly that “poker” is a common English language word. However, the Respondent contends that “zyn” should be thought of as a simple or generic prefix relating to the word “sword” and that the Panel should recognize “ga” as the abbreviation for the state of Georgia. The latter claim might have some merit, but the Panel doubts that many members of the public – including even the most ardent of crossword puzzle solvers – would recognize “zyn” as a prefix or root word. The Respondent, a self-described symbolist, may be impressed with his discoveries regarding the term “zyn” in reference materials concerning “ancient Cabalist” terminology, but the Panel is not. The Panel is emphatically not persuaded that “zynga” is either a common term or a combination of common terms.
To sum up, the Respondent has failed to invoke the criteria listed in Policy Paragraph 4(c) or to contend otherwise successfully in rebuttal to the Complainant's prima facie case.
As reasoned above, the Panel finds that the Complainant has proven Policy element 4(a)(ii).
It has been a long held consensus of prior Policy rulings that generally a complainant must have established its rights in the requisite mark before registration of a disputed domain name in order to claim successfully that such registration occurred in bad faith. See, for example, Mytech Partners Inc. v. Jebs Corporation c/o Lisa Briggs, NAF Claim No. FA135645; John Ode d/ba ODE and ODE - Optimum Digital Enterprises v. Intership Limited, WIPO Case No. D2001-0074 (“There are ample authorities supporting the view that a trademark that did not exist at the time the disputed domain name was registered cannot serve as the basis for a claim under the ICANN Policy, since it is impossible for the domain name to have been registered in bad faith…”); and Foreight Corp. v. Servos, eResolution Case No. AF-0473.
The Respondent registered the disputed domain name some twenty months before the Complainant obtained a valid USPTO registration for its ZYNGA mark. However, previous UDRP panels have consistently held that trademark or service mark registration is not the sole method to establish enforceable rights in a mark. In cases where a complainant can demonstrate its common law rights in its trademark or service mark prior to disputed domain name registration, that complainant can prevail as to bad faith registration. See, Pilgrim Films and Television Inc v. Brandon Bator, NAF Claim No. FA909831 (“Complainant is not required to own a trademark registration to establish rights in the PILGRIM FILMS & TELEVISION mark. Complainant has established common law rights in the PILGRIM FILMS & TELEVISION mark…”); and PlasmaNet, Inc. v. John Zuccarini, WIPO Case No. D2002-1101 (“The UDRP is crafted in a sufficiently broad way as to permit Complainants to proceed successfully on common law trademark rights.”).
The criteria necessary to establish such common law rights typically involve longevity of mark use, volume of sales, amount of advertising and degree of trade or publication recognition. See, Candy Direct, Inc. v. itsalldirect2u.com, NAF Claim No. FA514784 (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”); and Amsec Enterprises, L.C. v. Sharon McCall, WIPO Case No. D2001-0083. Moreover, the extent to which a mark is distinctive, as opposed to being comprised of common or descriptive terms, weighs in favor of sustaining those rights. See, Heat Trace Solutions, Inc. v. Thermal Technologies, NAF Claim No. FA1265198 (“The less distinctive a mark (i.e., the more descriptive or generic are the word or words making up the mark), the greater the scrutiny required to sustain a complainant's assertion of common law trademark rights.”); One Creative Place, LLC v. Kevin Scott, WIPO Case No. D2006-0518; and Deutsche Post AG v. NJDomains, WIPO Case No. D2006-0001.
In this case, despite the Respondent's rather dubious attempt to suggest that the term is somehow a combination of the descriptive “zyn” prefix and “ga” abbreviation, ZYNGA is a highly distinctive mark in the Panel's opinion. On the other hand, the Complainant had begun operations only about six or seven months before the disputed domain name was registered, hardly the traditional time frame commonly used to support a finding of common law rights. However, in the fast-paced world of the Internet, traditional time periods necessary to sustain such rights must give way to the reality that worldwide recognition and product/service identification can be established swiftly now. The Complainant has furnished the Panel with persuasive evidence (Annex I) of the extensive reach that its services had achieved, in terms of Internet use and notoriety, by the time that the Respondent registered the disputed domain name. It follows nearly inexorably that the Complainant had, as it contends, also mounted the degree of promotion and garnered the amount of revenue required to serve as substantial evidence of its common law rights in its ZYNGA mark by January 2008. Clearly, the copy of the January 15, 2008, feature New York Times newspaper article submitted by the Complainant (Annex H), which touts its commercial success, is powerful evidence on its behalf in this regard.
If the Complainant had so established said common law rights, can the Panel conclude reasonably that the Respondent was aware of them? The Complainant contends, and the Panel accepts, that the Respondent registered the disputed domain name the very day that the aforesaid article was printed in the New York Times. The Respondent dismisses that circumstance as mere coincidence, useful only for coarse speculation but not rising to the level of real evidence. However, the Panel takes note of the facts that the New York Times is perhaps the most influential newspaper published in the United States and that its articles, readily available online, are republished often in other newspapers around the country. Even an entity existing in Pittsburgh, Pennsylvania – where the Respondent is located – could easily be aware of such an article. As a result, the Panel finds this otherwise unlikely, simultaneous occurrence of publication and registration to be highly probative circumstantial evidence that the Respondent did indeed know of the Complainant's operations and mark.
Given that finding, the Panel also concludes that the Respondent sought to exploit its knowledge illegitimately. By causing confusion in the minds of Internet users as to the association or sponsorship of the disputed domain name with the Complainants' mark, and the products and services supplied under that mark, the Respondent intended to reap commercial gain. Therefore, the Panel determines that the circumstance compelling a finding of bad faith registration and use of that name, as enumerated in Policy paragraph 4(b)(iv), applies in this case.
The Respondent has argued that the Panel should set aside the bad faith contentions of the Complainant because it waited too long after registration of the disputed domain name to bring the Complaint and that, in any event, the Respondent has placed on its website a sufficient disclaimer of non-affiliation with the Complainant. With regard to the first argument, the Panel finds nothing in the Policy that requires the Complainant to bring its Complaint in accordance with a specific deadline. With regard to the second argument, the Panel agrees with the many prior UDRP panels that have ruled such disclaimers to be ineffective in voiding the bad faith inherent in registering and using domain names that have already lured unwitting Internet users to a respondent's website based on the infringement of legitimate trademarks or service marks. See, Caterpillar Inc. v. Ron Feimer, NAF Claim No. FA1008998 (“The fact that Respondent has now added a more prominent disclaimer on its site is also irrelevant.”); and Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698 (“Having attracted Internet traffic to his site by trickery, the Respondent cannot resort to disclaimers at the Website, however explicit…to clothe the domain name with legitimacy.”).
As reasoned above, the Panel finds that the Complainant has proven Policy element 4(a)(iii).
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 name, <zyngapoker.com>, be transferred to the Complainant.
Dennis A. Foster
Dated: December 23, 2009