WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
InnoGames GmbH v. Richard Gates
Case No. D2010-1828
1. The Parties
The Complainant is InnoGames GmbH of Hamburg, Germany, represented by Graef Rechtsanwälte, Germany.
The Respondent is Richard Gates of Nelson, New Zealand.
2. The Domain Name and Registrar
The disputed domain name <grepolisgame.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2010. On October 29, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On October 30, 2010, 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 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 1, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 21, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2010.
The Center appointed Michel N. Bertschy as the sole panelist in this matter on December 1, 2010. 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.
On December 17, 2010, the Center informed the parties that the date for decision of this matter had been extended.
4. Factual Background
The Complainant develops and publishes online games, one of which is named “Grepolis”, a game available in 15 languages, which has 4 million registered players from over 150 countries. Although the Complainant provided no direct evidence of ownership of a mark, the Panel has carried out a limited search to confirm that the Complainant does, in fact, own the mark it claims. According to the CTM-ONLINE - detailed trademark information database (Office for Harmonization in the Internal Market - OHIM), the Complainant is the owner of the European mark GREPOLIS, trademark No. 007318819, filed on October 15, 2008, registered on May 27, 2009 and protected in classes 9, 28. 35, 38 and 41 (Nice classification). The Complainant has also registered a number of domain names such as <grepolis.de>, <grepolis.fr>, <grepolis.it>, <grepolis.es>, etc.
The Respondent registered the disputed domain name <grepolisgame.com> on January 28, 2010.
5. Parties’ Contentions
The Complainant contends that it is the owner of a Community mark GREPOLIS and that it has established common law trademark rights in the sign GREPOLIS by virtue of the worldwide dissemination of the online game and its vast number of players. The Complainant further contends that the disputed domain name is “nearly” identical thus confusingly similar to the Complainant’s trademark, the addition of the word “game” having to be disregarded since it is purely descriptive of the services described (Pivotal Corporation v. Discovery Street Trading Co. Ltd., WIPO Case No. D2000-0648; Nintendo of America, Inc. v. Gray West International, WIPO Case No. D2000-1219).
With respect to the rights or legitimate interests of the Respondent, the Complainant also contends that the Respondent has no connection, affiliation or other relationship with the Complainant nor has the Complainant authorized the Respondent to exploit the trademark in any manner whatsoever. According to the Complainant, the Respondent’s primary aim is to promote games of competitors of the Complainant since all banners and advertisements present on the website lead to games of those competitors.
The Complainant further contends that the Respondent has registered the disputed domain name in bad faith since the Respondent unduly exploits the well-known mark GREPOLIS by attracting users to the Respondent’s website, where goods and services are offered (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc., WIPO Case No. D2000-0587; Nora Baumberger v. SAND WebNames – For Sale, WIPO Case No. D2001-0502; Rockstar Games v. Steve Twining, WIPO Case No. D2007-0497; Benetton Group S.p.A. v. Azra Khan, WIPO Case No. D2002-0810).
The Respondent did not reply to the Complainant’s contentions.
6. Absence of direct evidence of ownership of a mark
The Complainant contends that it is the owner of the Community mark GREPOLIS No. 007318819 and states that evidence is provided under Annex 3 to the Complaint. Annex 3 is the Uniform Domain Name Dispute Resolution Policy. No evidence of ownership has otherwise been filed in support of this allegation.
The consensus view is that UDRP panels may undertake limited factual research into matters of public record if they feel that they need that assistance in reaching a decision. If the panels feel that they require further information to make a decision in a UDRP proceeding, then they can issue a panel order to the parties (see section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions and selected decisions (the “WIPO Overview”).
In this instance, the Complainant alleged precisely which trademark rights were relevant to the proceedings giving the precise references enabling the Panel to undertake a limited factual research into the relevant trademark database. The Panel holds therefore that the Complainant is the owner of the alleged trademark GREPOLIS.
7. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and to obtain relief. These elements are that:
(i) the respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the respondent’s domain name has been registered and is being used in bad faith.
Each of the three elements must be proved by the complainant to warrant relief.
A. Identical or Confusingly Similar
There are two requirements that a complainant must establish under paragraph 4(a)(i) of the Policy; that it has rights in a trade or service mark, and that the disputed domain name is identical or confusingly similar to the marks.
The consensus view of UDRP panels is that if the complainant owns a registered trademark, then it satisfies the threshold requirement of having trademark rights. The location of the registered trademark and the goods and/or services it is registered for are irrelevant when finding rights in a mark (see section 1.1. of the WIPO Overview). The Panel finds that the Complainant has proved this requirement.
The Respondent’s addition of “game” to the disputed domain name is likely to increase rather than dispel its confusing similarity with the Complainant’s GREPOLIS mark. The addition of a common or generic term following a trademark does not create a new or different term in which the Respondent would have rights. Moreover since in determining the confusing similarity between a domain name and a mark, points of similarity are generally weighed more heavily than points of difference, the addition of descriptive words such as “game” does not alter the fact that a name included in a domain name is identical to a mark (see in particular: Nintendo of America, Inc. v. Gray West International, WIPO Case No. D2000-1219 and references). The Panel finds that the Complainant has proved this requirement also.
The Panel thus finds that the first requirement of paragraph 4(a) the Policy is satisfied.
B. Rights or Legitimate Interests
A complainant bears the burden of proof under paragraph 4(a)(ii) of the Policy. Once the complainant makes a prima facie case, the respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see section 2.1. of the WIPO Overview; AIB-Vincotte Belgium ASBL, AIB-Vincotte USA Inc./Corporation Texas v. Guillermo Lozada, Jr., WIPO Case No. D2005-0485; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Paragraph 4(c)(iii) of the Policy sets forth examples of circumstances whereby a domain name registrant may demonstrate a right or legitimate interest in a domain name, including “... making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The Respondent did not reply to the Complainant’s contentions. The Respondent’s default does not automatically result in a decision in favor of the Complainant. Subject to the principles described above, the Complainant must establish each of the three elements required by paragraph 4(a) of the UDRP. While a panel may draw negative inferences from the respondent’s default, paragraph 4 of the Policy requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding.
The Respondent is not a licensee of the Complainant and is not otherwise authorized to use the Complainants’ marks. The Complainant has provided evidence that the Respondent has used the domain name as a link to websites operated by the Complainant’s competitors.
The Panel holds that in these circumstances the Respondent is clearly not making a legitimate noncommercial or fair use of the disputed domain name and is, for commercial gain, intentionally and misleadingly diverting consumers from the Complainant’s legitimate website. There is therefore no reason to suppose that the Respondent could claim a right or legitimate interest in respect of the disputed domain name on any other basis.
The Panel thus finds that the second requirement of paragraph 4(a) of the Policy is satisfied.
C. Registered and Used in Bad Faith
For paragraph 4(a)(iii) of the Policy to apply, the Complainant must demonstrate the conjunctive conditions that the disputed domain name was registered and used in bad faith.
Paragraph 4(b) of the Policy sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including: “(i) [the Respondent has] registered or [has] acquired the [disputed] domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the [C]omplainant who is the owner of the trademark or service mark or to a competitor of [the Complainant] for valuable consideration in excess of [the Respondent’s] documented out-of-pocket costs directly related to the domain name, or (ii) [has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the Respondent has] engaged in a pattern of such conduct; or (iii) [the Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or; (iv) by using the domain name [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the [C]omplainant’s mark as to the source, sponsorship, affiliation, or endorsement of [its] web site or location or of a product or service on [its] web site or location.”.
In the Panel’s view, the Respondent’s bad faith registration and use of the disputed domain is evident on the facts of this case. Indeed, the Complainant has proved that the Respondent has registered a domain name which reproduces to the Complainant’s trademark in its entirety. The Respondent must have had knowledge of the existence of the GREPOLIS trademark as demonstrated by the content of the website at the disputed domain name. The Respondent is using the website at the disputed domain name to intentionally divert Internet users from the Complainant’s website by creating a likelihood of confusion with the Complainant’s mark. The Respondent has not used the disputed domain name in connection with any demonstrated legitimate business.
The Panel thus finds that the third requirement of paragraph 4(a) of the Policy is satisfied.
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 <grepolisgame.com> be transferred to the Complainant.
Michel N. Bertschy
Dated: December 20, 2010