WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
InnoGames GmbH v. Buydomains.com, Inventory Management
Case No. D2011-0085
1. The Parties
The Complainant is InnoGames GmbH of Hamburg, Germany, represented by GRAEF Rechtsanwälte, Germany.
The Respondent is Buydomains.com, Inventory Management of Waltham, Massachusetts, United States of America, represented by NameMedia, Inc., United States of America.
2. The Domain Name and Registrar
The disputed domain name <tribalwars.com> (“the Domain Name”) is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 14, 2011. On January 17, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name. On January 17, 2011, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the Domain Name.
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 January 25, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 14, 2011. The Response was filed with the Center February 15, 2011.
The Center appointed Warwick A Smith, Warwick A. Rothnie, and David E. Sorkin as panelists in this matter, on March 14, 2011. The Panel finds that it was properly constituted. Each member of 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 is a developer and publisher of games which can be played on the Internet using a browser. One of its most popular games is called, in its English language version, “Tribal Wars”. The Complainant stated in its Complaint that its Tribal Wars game was first published in 2003.
The Complainant is the registered proprietor of the Community Trademark TRIBALWARS. That registration has been in force in the European Union since October 10, 2007, and it is registered for the following services: “Advertising, rental of advertising space; rental of advertising time on communication media; dissemination of advertisements.”
The Complainant also claims that it has established common law trademark rights in the sign “TribalWars”, arising from the worldwide dissemination of its online game known by that name. According to an affidavit provided by the Complainant’s managing director, some 37.9 million registered players in over 140 countries now play Tribal Wars, and the game is available in 33 languages. The Complainant spends a lot of money promoting its Tribal Wars game – in 2010 it spent USD5.6 million promoting its online games (among them the Tribal Wars game).
The Complainant uses numerous domain names which link to websites at which the Tribal Wars game may be played. These domain names include <tribalwars.net>, <tribalwars.org>, <tribalwars.biz>, and numerous “tribal wars” country code top level domains.
The Complainant contends that its TRIBALWARS mark has a strong reputation, and is famous.
The Respondent and the Domain Name
According to the relevant WhoIs particulars, the Domain Name was created on October 11, 2003. In one part of the Response, the Respondent stated that it acquired the Domain Name on April 25, 2004. In other parts of the Response, the Respondent stated that it acquired the Domain Name in October 2003.
The Domain Name resolves to a website (“the Respondent’s website”) which provides links, grouped under various categories, to third party websites. Many of the click-on links appear to be to sites relating to online games, but others, grouped under the heading “Popular Categories”, are to websites which are concerned with more general topics, such as travel, financial planning, lifestyle, and real estate.
The Respondent’s website contains the following statement:
“The domain tribalwars.com is for sale. To purchase, call BuyDomains.com at ….”.
The Respondent provided with its Response an affidavit sworn by its associate general counsel, Mr. Erik Zilinek. Mr. Zilinek stated that, to his knowledge and belief, “we” registered the Domain Name on October 11, 2003, after a previous registrant (unrelated to the Complainant) had failed to renew the registration.
Mr. Zilinek stated that the Respondent closely follows a policy of registering and maintaining only those domain names that, at the time of their registration, incorporate common and/or generic words, phrases, acronyms, abbreviations and/or descriptive terms for which the available evidence suggests no single party has exclusive rights. Since 1999, the Respondent has developed a large portfolio of such domain names. Some are offered for sale to the general public through the website at “www.BuyDomains.com”.
Mr. Zilinek acknowledged that the Domain Name was being offered for sale, but stated that the Respondent did not register the Domain Name for the purpose of selling it to the Complainant. He deposed that, because the Complainant did not apply for registration of a “Tribalwars” trademark until it made its application for a Community Trademark in October 2007, the Respondent could not have, and did not, register the Domain Name with the Complainant’s trademark “in mind”.
Mr. Zilinek stated in his affidavit that the Domain Name provides advertising “consistent with the two-word phrase’s online gaming connotations”.
According to Mr. Zilinek, the first notice the Respondent received of any formal dispute was on January 25, 2011, when it received a copy of the Complaint. He said that prior to that time, the Respondent had been unaware of any rights the Complainant might assert in its trademarks, particularly as they allegedly related to the Domain Name.
Mr. Zilinek’s evidence was that the Respondent uses proprietary technology to regularly screen acquired domain names for, among other things, conflicts with exclusively-owned, descriptive, or fanciful trademarks applied for and/or registered at, among other places, the United States Patent & Trademark Office (the “USPTO”). He said that that screening also extends to trademarks which, at the time of registration of the relevant domain name, have a significant market presence on the Internet. Mr. Zilinek went on to say that when the Respondent acquired the Domain Name and ran its screening check, queries on the expressions “tribal wars” and “tribalwars” revealed no active, pending, or expired applications for the Complainant’s mark at the USPTO, the World Intellectual Property Office, or the German Trademark Office.
Mr. Zilinek denied that any goods or services of a kind covered by the Complainant’s Community Trademark registration are the subject of any links, information, or advertising on the Respondent’s website.
Mr. Zilinek also referred in his evidence to efforts made by the Respondent to avoid impinging on any third party trademark rights. These efforts were said to include the installation of “robots.txt” files on many of the Respondent’s domain names’ web servers, to prevent the domain names or the content of the websites associated therewith from being indexed by search engines such as Google and Yahoo!. The effect was said to be that the Respondent’s domain names and their associated websites do not appear in the organic search results for key word searches, and thus could never appear alongside, for example, the Complainant’s primary domain name or the content of its associated website. The result, according to Mr. Zilinek, is that the only way for Internet users to access the Respondent’s website is to directly navigate to it by typing it into the address bar of their Internet browser (website traffic of this kind is referred to as “type-in traffic”, or “direct navigation”). Mr. Zilinek stated that deriving revenue from type-in traffic is one of the Respondent’s core business activities.
In addition to the affidavit of Mr. Zilinek, the Respondent produced a number of other documents. One was a Wikipedia entry referring to the Complainant’s TribalWars game. The “History” part of the Wikipedia entry included the following:
“TribalWars, or “Die Staemme” as it is known in German, is a browser based game and was released in 2003 as a text based game. It was developed and released by [the Complainant]. The international version of the game was released in 2006.”
In addition to the Wikipedia entry, the Respondent produced an extract from Domain Tools’ online database, showing that the Complainant’s domain name <tribalwars.net> (which appears to be the principal website through which the Complainant’s TribalWars game is made available to international users), was only created on April 25, 2006.
The Domain Tools’ database extract produced by the Respondent showed that the earliest indexed WhoIs record for the domain name <tribalwars.net> was that dated June 6, 2006.
The Respondent then produced a page printed from the Wayback Machine at www.archive.org, showing the Complainant’s website at www.tribalwars.net as it appeared on June 14, 2006. This web page was prominently headed “Tribal Wars”, and it appeared to be the earliest page from the website at “www.tribalwars.net” archived on the Wayback Machine, which had any connection with the Complainant.
The Respondent said in its Response that, when it registered the Domain Name in 2003, it had no knowledge of the Complainant’s geographically remote use of its “Die Staemme” mark in Germany. It said that it could not have anticipated that the Complainant would, more than 4 years later, file a trademark application corresponding to its April 2006 acquisition and use of the <tribalwars.net> domain name.
The Respondent specifically denied (i) that the Respondent’s website provides links to websites offering browser games produced by the Complainant’s competitors, (ii) the Complainant’s allegations that the “Respondent directs users to a certain game and is paid for these services” and, (iii) that banners and advertisements on the Respondent’s website lead to games of the Complainant’s competitors.
Previous Proceedings Under the Policy Involving the Respondent
In its Complaint, the Complainant noted that the Domain Name was formerly owned by “RN WebReg RareNames, Inc”, a corporation having identical physical and email addresses to those of the Respondent. It concluded that “Respondent was just apparently renamed Buydomains.com”.
The Complaint listed a number of administrative proceedings under the Policy in which RN WebReg RareNames Inc had been an unsuccessful respondent. The Complaint also listed two administrative proceedings under the Policy in which “Buydomains.com” was the (named) unsuccessful respondent.
The Respondent in its Response did not refer to “RN WebReg RareNames, Inc”. However, Mr. Zilinek did state in his affidavit that his employer is “NameMedia, Inc. d/b/a BuyDomains.com, the Respondent in this proceeding”. As for the previous proceedings under the Policy, the Respondent acknowledged the various cases mentioned by the Complainant, and mentioned a number of other proceedings in which it had successfully defended claims under the Policy.
5. Parties’ Contentions
The Complainant contends:
1. The Domain Name is identical to the Complainant’s registered Community Trademark, and to the Complainant’s common law TRIBALWARS mark.
2. The Respondent has no right or legitimate interest in respect of the Domain Name, having regard to the following:
(i) The Respondent has no connection, affiliation, or other relationship with the Complainant, nor has the Complainant authorized the Respondent to exploit the Complainant’s trademark in any manner.
(ii) The Respondent is currently holding the Domain Name hostage in order to sell advertising space and reap profits from the Domain Name.
(iii) The Respondent’s primary aim is to promote the games of third parties. Banners and advertisements lead to games of competitors of the Complainant. By using the name of a popular online game on the Respondent’s website, the Respondent directs Internet users to a certain game and is paid for that service (citing Tom Cruise v. Network Operations Center/Alberta Hot Rods, WIPO Case No. D2006-0560).
3. The Domain Name was registered and is being used in bad faith. The Complainant relies on the following matters:
(i) The Complainant’s TRIBALWARS mark is famous, and it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate (citing Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003).
(ii) The Respondent unduly exploits the Complainant’s TRIBALWARS mark, in that third parties pay for the Internet traffic which is attracted to their websites from the Respondent’s website.
(iii) No fewer than 12 previous administrative proceedings under the Policy exist in which the Respondent (under its old name RN WebReg) was ordered to transfer the disputed domain name to the complainant. The Respondent has lost two further administrative proceedings under the Policy, under the name Buydomains.com.
The Respondent contends:
1. The Respondent accepts that the mark TRIBALWARS is essentially identical to the Domain Name, but denies that the Complainant held any rights in the two-word phrase “tribal wars” before it applied for its Community Trademark. That was more than 4 years after the Respondent registered the Domain Name.
2. The Respondent has rights and a legitimate interest in the Domain Name. Common dictionary words as well as descriptive terms are legitimately subject to registration as domain names on a “first come-first served” basis, and the mere ownership of a domain name comprising a common dictionary word, or a combination of such words, should, in and of itself, establish the owner’s rights and legitimate interest (citing Shirmax Retail Limited v. CES Marketing Inc, e-Resolution, Case No. AF-0104, and Asphalt Research Technology Inc v. National Press & Publishing Inc, WIPO Case No. D2000-1005).
3. The Respondent has a right or legitimate interest in the Domain Name under paragraph 4(c)(i) of the Policy. Well prior to the instant complaint, the Respondent used (and continues to use) the Domain Name in connection with common allusions between online gaming and warfare.
4. It is well-established that using a gTLD domain name comprised of common dictionary words for the purpose of providing third party advertising, may constitute use in connection with a bona fide offering of goods or services. Whether the advertising is in fact a bona fide offering of goods or services, turns on whether the Respondent is exploiting the Complainant’s mark by offering advertisements that confuse Internet users, for commercial gain. In this case, there are no advertisements that would be likely to confuse a single consumer.
5. It is likewise well-established that the sale of domain names constitutes a bona fide offering of goods or services where the respondent is unaware of the complainant’s rights in a mark. In this case, there is no evidence that the Respondent had any knowledge of the Complainant’s trademark when it registered the Domain Name, and affirmative evidence that the Respondent could not have had such knowledge. The Complainant’s assertion that the Respondent is “currently holding the Domain Name hostage … to reap profits from the Domain Name” is inaccurate and unavailing.
6. The Respondent did not register, and has not been using, the Domain Name in bad faith. Absent direct proof that a domain name comprised of common dictionary words was registered or acquired solely for the purpose of profiting from the Complainant’s trademark rights, there can be no finding of bad faith registration and use (citing Koninklijke KPN N.V. v. Konstantinos Zournas, WIPO Case No. D2008-0055). Merely offering to sell a domain name to the general public (as the Respondent has done in this case) is not bad faith registration and use under the Policy – the domain name must have been registered primarily for the purpose of selling it to the owner of a trademark for an amount in excess of the registrant’s out-of-pocket expenses.
7. The Complainant has proffered no evidence that, at the time the Respondent registered the Domain Name in 2003, the Respondent had any knowledge of the Complainant’s geographically remote use of its DIE STAEMME mark in Germany, or that the Respondent could have anticipated that the Complainant would, more than 4 years later, file an application for a Community Trademark corresponding to its April 2006 acquisition and use of the <tribalwars.net> domain name. In fact, the Respondent had no such knowledge. It was not in 2003, but in 2006 that the Complainant released an international version of its “Tribal Wars” game on its website at “www.tribalwars.net”. Thus, the Respondent could not have registered the Domain Name with the Complainant “in mind”, or with intent to use it in any of the ways described at paragraph 4(b) of the Policy.
9. The Complainant has produced no evidence to show that, back in October 2003, the Complainant’s “Tribal Wars” game was so well-known internationally that the Respondent must be taken to have heard of it.
10. The acquisition of deleted or expired domain names has been endorsed as a bona fide practice under the Policy (Vernons Pools Limited v. Vertical Access Inc, WIPO Case D2003-0041). The fact that a disputed domain name was registered after being deleted actually favors the Respondent, because the deletion is a signal that the prior registrant has abandoned any claim to it.(See, inter alia, Corbis Corporation v. Zest, NAF Case No. 98441).
12. The Respondent did not register the Domain Name in order to prevent the Complainant from reflecting its mark in a corresponding domain name. Before the Complainant brought the instant action, it had already registered 43 domain names, all of which incorporated the Complainant’s mark. The Complainant is not being prevented from reflecting its mark in a domain name of its choice.
13. The Domain Name was not registered for the purpose of disrupting the business of a competitor. The Complainant does not allege that the parties are competitors, and in fact they are not.
14. The Respondent is not creating any likelihood of confusion with the Complainant’s business. The links provided on the home page of the Respondent’s website are generic advertising links related to online gaming. There are no links to browser games run by the Complainant’s competitors, and no evidence that the Respondent directs users to a certain game and is paid for that service, or that banners and advertisements on the Respondent’s website lead to games of the Complainant’s competitors. In those circumstances, there is no reason to believe that a solitary consumer would be confused into thinking that the Respondent’s website originated with, or is sponsored or approved by, the Complainant.
6. Discussion and Findings
A. What the Complainant must prove under the Policy - General
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
B. Identical or Confusingly Similar
The Complainant has proved this part of the Complaint. It has sufficiently proved that it is the registered proprietor of the word mark TRIBALWARS in the European Union, and that mark is identical to the Domain Name (the generic suffix “.com” is not taken into account in the comparison).
The fact that a complainant may have only acquired rights in the trademark or service mark on which it relies after the respondent registered the disputed domain name, is not normally a relevant consideration under paragraph 4(a)(i) of the Policy. That circumstance, where it exists, is a matter for consideration under subparagraphs 4(a)(ii) and (iii) of the Policy.
C. Rights or Legitimate Interests
In the view to which the Panel has come on the issue of bad faith registration and use, there is no need for the Panel to make any findings under this heading.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant 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 disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, 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 location or of a product or service on [the respondent’s] website or location.
A complainant under the Policy is required to prove both bad faith registration and bad faith use.1 Any of the circumstances described at paragraph 4(b) of the Policy, if proved, will be evidence of such bad faith registration and use, but that evidence is not irrebuttable, and will not necessarily be conclusive. For example, if the evidence showed that a disputed domain name had been registered in good faith, but later put to a bad faith use, the requirements of paragraph 4(a)(iii) of the Policy would not have been met, and the complaint would fail.
In this case, the Complainant has failed to persuade the Panel that the Domain Name was registered in bad faith. The Panel has come to that view for the following reasons:
1. On the evidence which has been produced, it seems more likely than not that the Respondent registered the Domain Name on October 11, 2003. That is the date given by Mr Zilinek in his sworn affidavit, and it is also referred to in several places in the body of the Response. There is a reference at page 7 of the Response to the Respondent acquiring the Domain Name on April 25, 2004, but that date is not mentioned elsewhere in the Response, and the affidavit sworn by the Respondent’s associate general counsel would seem to provide the more reliable evidence.
The Complainant pointed out that the former registrant of the Domain Name was an entity called “RN WebReg RareNames, Inc.” and contended that the Respondent was just “apparently renamed Buydomains.com”. The evidence of Mr Zilinek, on behalf of the Respondent, is consistent with that contention.
2. That means that the Complainant is required to prove that the Respondent acted in bad faith in October 2003, when it registered the Domain Name. The Complainant has failed to discharge its burden of proof on that point, so the Complaint must fail.
The Policy generally requires that the respondent’s bad faith must be targeted at the complainant or its mark in some way (see, for example, Dreamstar Cash S.L. v Brad Klarkson, WIPO Case No. D2007-1943, citing The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743, and Christian Dior Couture v Paul Farley, WIPO Case No. D2008-0008. See too, the case referred to by the Respondent, Koninklijke KPN N.V. v. Konstantinos Zournas, supra). There was insufficient in the evidence in this case to support a claim by the Complainant that it enjoyed rights in a TRIBALWARS mark as early as October 2003, let alone to support a claim that the Respondent was targeting such a mark when it registered the Domain Name. The Complainant did not even apply for its Community Trademark until October 2007, and there was no evidence of the Complainant making any commercial use of a “Tribal Wars” sign as early as October 2003, such as might have supported a claim (at least in some jurisdictions) to common law trademark rights in that sign. As the Respondent has noted, the first use of the Complainant’s TRIBALWARS mark appears to have been in 2006, when the Complainant launched the international version of its game (previously known by the German language name “Die Staemme”).
3 The Respondent appears to be a professional domainer, and some cases have regarded such registrants as being subject to an obligation to conduct more extensive checking before registering domain names than would be expected of an individual domain name registrant, at least where the domain name in question is not a dictionary word, and the domainer’s processes for acquiring new domain names are fully automated (see, for example, Media General Communications Inc. (supra), mVisible Technologies Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141, and Grundfos A/S v Texas International Property Associates, WIPO Case No. D2007-1448). But even applying such a higher standard would not make a difference in this case. No enquiries the Respondent might have made could have uncovered rights which did not then exist.
4. None of the Complainant’s submissions on the “registration and use in bad faith” issue addressed the issue of bad faith at registration time in October 2003. The absence of proof on that issue is fatal to the Complaint.
E. Reverse Domain Name Hijacking
The Respondent did mention this issue, so the Panel will address it briefly.
Although the Complaint has failed, this is not a case for a finding of reverse domain name hijacking. The Domain Name is identical to the Complainant’s TRIBALWARS mark, and there are links on the Respondent’s website which appear to be concerned with online games. Had it been necessary for the Panel to address the issue of bad faith use of the Domain Name, the Complainant’s arguments on that issue might not have been lightly dismissed. The Complaint has failed because the Complainant has failed to discharge its burden of proving bad faith at registration time, but the Panel does not believe that it can safely conclude that the Complainant must have been aware that its Complaint was doomed to failure.
For all the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
David E. Sorkin
Dated: March 28, 2011
1 See, for example, the decision of the majority in A. Nattermann & Cie .GmbH and Sanofi-aventis v. Watsons Pharmaceuticals, Inc., WIPO Case No. D2010-0800, and the recent unanimous three-member panel decisions in Prime Pictures LLC v DigiMedia.com L.P., WIPO Case No. D2010-1877, Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011, Quester Group, Inc. v. DI S.A., WIPO Case No. D2010-1950, and The Proprietors of Strata Plan No. 36, A Turks and Caicos Corporation v. Gift2Gift Corp, WIPO Case No. D2010-2180. A limited number of UDRP panels have interpreted the reference in paragraph 4(a)(iii) of the Policy to registration and use in bad faith, as a “unitary” concept, under which a finding of bad faith registration and use might be made in an appropriate case even in circumstances where initial good faith in the registration of the disputed domain name had been later followed by bad faith use – see for example, the cases listed at pages 6 to 7 of the decision of the majority in Natterman, and the subsequent three-member panel decision in Jappy GmbH v. Satoshi Shimoshita, WIPO Case No. D2010-1001. However, for more than 10 years the vast majority of UDRP panels have treated paragraph 4(a)(iii) as requiring proof that the respondent acted in bad faith both at registration time and in its subsequent use of the disputed domain name. This Panel sees no compelling reason to depart from that majority view.