WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fantage.com, Inc. v. PrivacyProtect.org /Privacy Domain Manager a subsidiary of Taylored Web Creations
Case No. D2012-0867
1. The Parties
The Complainant is Fantage.com, Inc. of Fort Lee, New Jersey, United States of America, represented internally.
The Respondent is PrivacyProtect.org of Queensland, Australia / Privacy Domain Manager a subsidiary of Taylored Web Creations of Brisbane, Queensland, Australia, represented internally.
2. The Domain Name and Registrar
The disputed domain name <fantagemobile.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2012. On April 24, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 Complainant filed an amendment to the Complaint on April 26, 2012.
The Center verified that the Complaint together with the amendment to 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 April 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 17, 2012. The Response was filed with the Center on May 15, 2012. A Supplemental Filing was submitted by the Complainant to the Center, copied to the Respondent, on May 21, 2012.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on Friday, May 25, 2012. 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 May 30, 2012, the Panel asked the Center to invite the Respondent to make a Supplemental Filing in reply to that of the Complainant, and to notify the Complainant that its Supplemental Filing had omitted two annexes. The relevant Procedural Order was issued on May 31, 2012 and the replies through the Center were forwarded to the Panel on June 1, 2012.
4. Factual Background
According to the Complainant, Fantage.com, Inc., its business is, inter alia, to provide Internet chat rooms for gaming and entertainment purposes for children and providing avatar-based on-line games and multi-user games for children. The Complainant also creates mobile games that are connected to its online games and provides applications (“apps”) for mobile phones and devices.
The Complainant is the owner of the trademarks:
ROMARIN International Trademark Information Database
No. 1033909, word FANTAGE, registered on March 17, 2010, classes 38, 41;
United States Patent and Trademark Office (USPTO)
No. 3813384, word FANTAGE, registered on July 6, 2010, classes 38, 41.
The Complainant uses the domain name <fantage.com>.
According to the Respondent its business is to provide a comprehensive service that includes domain name registration, website hosting, website design, website and content management and maintenance. The Respondent acted to provide such services on the instructions of Australian client FAM, trading as Fantasy Age Mobile, stated to be a supplier of new and refurbished mobile phones, mobile accessories such as covers, chargers, cables and reseller of mobile phone credit recharge cards. After various domain names were found to be unavailable, FAM chose the disputed domain name, <fantagemobile.com>, which was registered with a record date of April 8, 2012.
5. Parties’ Contentions
The Complainant has produced copies of online search results as evidence of its ownership of the trademarks listed in section 4 above.
The Complainant contends that the disputed domain name <fantagemobile.com> is confusingly similar to its registered trademark FANTAGE. The component “fantage” of the disputed domain name is identical to the trademark FANTAGE, and the additional word “mobile” alludes to the Complainant’s business in the field of mobile applications. Internet users may confuse the disputed domain name with the Complainant’s own domain name <fantage.com>.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The disputed domain name was not in use at the time when notice was sent to the Respondent. There is no evidence that Fantasy Age Mobile exists or is well known. The disputed domain name was registered whereas <fantasyagemobile.com> was itself available.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The Respondent intentionally attempts to attract Internet users to the disputed domain name by creating a likelihood of confusion with the Complainant’s trademark and website.
The Complainant requests the transfer to itself of the disputed domain name.
The Respondent denies the Complaint and makes extensive contentions that include the following.
The Respondent says that on March 26, 2012, its subsidiary Tayla Creations was engaged by FAM to institute a website. FAM described its business to the Respondent as purveyors of mobile phones, accessories and recharge cards. FAM requested <fam.com>, or alternatively <famobile.com>, <fantasymobile.com> or <fantasy.com>. None was available and FAM wanted a shorter domain name than <fantasyagemobile.com>, so chose <fantagemobile.com>, which was available.
FAM does not hold a trademark over the names Fantasy Age Mobile or Fantage Mobile. The Respondent says it conducted a Bing search to see if <fantagemobile.com> may have conflicted with another business with the same name, which it did not. The Respondent’s practice is to register domain names under its Privacy Domain Manager arm until the client completes payment.
The disputed domain name was submitted to the registrar on April 5, 2012 and registered on April 8, 2012. On April 18, 2012 a sample website was sent to FAM, which accepted it and asked that a temporary website be instituted. On April 20, 2012, the Respondent received a direct letter stating grounds for complaint from the Complainant.
The Respondent denies confusing similarity between the disputed domain name and the Complainant’s trademark. The Respondent contests that the Complainant would have an exclusive monopoly on the term “Fantage” and submits documentary evidence of an unrelated trademark (the “Darwin” trademark):
USPTO, No. 77337803, FANTAGE, for archery equipment, filed on November 27, 2007, which was succeeded by:
USPTO, No. 85284976, FANTAGE, for archery equipment, filed on April 4, 2011.
The Respondent contends it is fair to say that the USPTO found a distinction between the Complainant’s trademark and the Darwin trademark purely on the description of goods and services being offered, to allow these to exist together.
The Respondent produces evidence of the existence of domain names incorporating the word “fantage”, namely, <fantagecheats.org> which, the Respondent contends, uses the Complainant’s trademark and targets the interest group of the Complainant; <fantagecheese.com>; and <fantageforum.com>.
The Respondent and its client FAM do not intend to offer goods and services that infringe on the Complainant’s trademark, and the intended website does not resemble the Complainant’s website. The Complainant’s website targets younger children of 6-16 whereas the target market of FAM is adults or older children.
The Respondent further contends that it has a legitimate interest in the disputed domain name as its client FAM intends to make a bona fide offering of goods and services that do not conflict with the Complainant’s business.
The Respondent addresses the Complainant’s contention that the disputed domain name did not resolve to any operational website on the date of the notice of Complaint. The Respondent says a fully commercial website may take months to develop: the disputed domain name was registered on April 8, 2012, a temporary snapshot of the likely website was launched on April 20, 2012, and the Complaint was lodged on April 24, 2012.
The Respondent denies that the disputed domain name was registered or is being used in bad faith. There has been no attempt to target the Complainant’s market or to capitalise on the Complainant’s goodwill. The disputed domain name does not feature in Bing or Yahoo searches for Fantage Mobile. The addition of the generic term “mobile” to the word mark FANTAGE is irrelevant under UDRP. The value of the trademark FANTAGE is diluted by the existence of other domain names incorporating the word. Visitors to the Respondent’s website will quickly realise they have arrived at the wrong destination.
The disputed domain name is not for sale. The Respondent contends that neither it nor FAM had heard of or had any reason to contact the Complainant.
C. Complainant’s Supplemental Filing
In so far as they may be new or relevant, the Complainant’s further contentions include the following.
The Complainant produces a copy of its home page to demonstrate its activities in the mobile applications realm, and copies of discussion material taken from the Internet in support of its claim to have a prominence in the mobile games and applications fields. Users are likely to search for “fantage” and “mobile” and may be confused into thinking that <fantagemobile.com> is connected to the Complainant.
The Complainant refutes the Respondent’s assertion that the Parties target different demographic markets.
The Complainant refutes the Respondent’s claim to have rights and legitimate interests in the disputed domain name. It says that the name “Fantasy Age Mobile” was not revealed until after the Complainant initiated contact with the Respondent to complain. The Complainant tried to contact the Respondent through PrivacyProtect.org on April 13, 2012, and through Fabulis Domains on April 18, 2012. It appears that the snapshot website was instituted in reaction, and that the name “Fantasy Age Mobile” was fabricated to establish a legitimate basis for the defending the Complaint.
The Complainant says the Respondent’s snapshot website contains two posts under "news and events" dated February 26, 2012 and April 5, 2012. These dates pre-date the official registration of the disputed domain name and, it is contended, are intended to make the Respondent’s business appear to be well established.
D. Respondent’s Supplemental Filing
In so far as they may be new or relevant, the Respondent’s further contentions include the following.
The Respondent says the Complainant’s activities are: providing Internet chat rooms for gaming and entertainment purposes for children: and providing avatar-based on-line games and multi-user games for children. The areas of business intended by the Respondent’s client FAM, including sale of mobile phones and related things, are not to be confused with the Complainant’s sale or promotion of mobile applications, being software that runs on smartphones and mobile phones. Mobile applications are designed to educate, entertain, or assist consumers in their daily lives. Thus, the Respondent and the Complainant operate in different areas of commerce.
The Respondent contests the Complainant’s assertion that the appearance of <fantagemobile.com> in search results may confuse customers. The Respondent continues to assert that the disputed domain name <fantagemobile.com> does not look like <fantage.com> and users would not assume a connection between the two because of the disputed domain name alone. The screenprints of Bing, Yahoo and Google search results are further discussed. Appropriate design of FAM’s intended website will have suitable text, reflected in search results, that will limit the likelihood of receiving non-target users.
In respect of rights or legitimate interests in the disputed domain name, the Respondent re-states its position and says the fact that FAM does not hold a trademark over Fantasy Age Mobile or Fantage Mobile is irrelevant.
The Respondent denies that the snapshot website to which the disputed domain name resolves is a sham created after the Complaint was made. Taking into account the international dateline and other factors, the first contact between the Respondent and Complainant was on or about April 20, 2012, and formal action was instituted on April 24, 2012. A quotation from a letter of April 20, 2012 from the Complainant to “Mr. Taylor” shows prior knowledge of the name Fantasy Age Mobile. The letter also refers to previous unsuccessful attempts to contact the Respondent through Privacy Protect, without obtaining a reply.
In respect of bad faith the Respondent restates its position and says it has rebutted the Complainant’s assertions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required:
“[…] to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
Identity of the Respondent and other entities
Paragraph 1 of the Rules defines a registrar as the entity with which a respondent has registered a domain name that is the subject of a complaint. The registrar is Directi Internet Solutions Pvt. Ltd., d/b/a PublicDomainRegistry.com. Paragraph 1 of the Rules defines a respondent as the holder of a domain name registration against which a complaint is initiated. The DomainTools Whois initially named the registrant as PrivacyProtect.org. The registrar, in its letter of verification of April 24, 2012, identified the registrant as Privacy Domain Manager, and stated that PrivacyProtect.org is a privacy protection service the Respondent had enabled for the disputed domain name. The Panel deems the Respondent to be the registrant of record, namely Privacy Domain Manager.
The Respondent identifies itself as “Privacy Domain Manager a subsidiary of Taylored Web Creations”. Tayla Creations is a subsidiary of the Respondent. The word Respondent in this Decision shall refer to Privacy Domain Manager, Taylored Web Creations or Tayla Creations as appropriate.
FAM trading as Fantasy Age Mobile is a client of Tayla Creations.
Fabulis Domains of Queensland, Australia, appears to be a provider of registration services and a subsidiary of the Respondent. Fabulis Domains has been referred to by the Respondent as a registrar.
The Complainant received a Response containing an explanation and information that it may not reasonably have anticipated, detailing the identity and business of the Respondent. The Complainant submitted through the Center an unsolicited Supplemental Filling addressing the new matters. Paragraph 12 of the Rules provides that the Panel, in its sole discretion, may request further statements or documents from either of the Parties. In the circumstances the Panel may have requested a Supplemental Filing from the Complainant, and has admitted the submission on this occasion.
Proceedings under the Policy are conducted with due respect to the principles of natural justice. Paragraph 10(b) of the Rules specifies that the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. Accordingly the Respondent was invited to make a Supplemental Filing in reply to that of the Complainant, and the Complainant was requested to supply two missing annexes. All additional filings were made promptly.
A. Identical or Confusingly Similar
The Complainant’s name is Fantage.com, Inc., and its trademark FANTAGE is registered at the USPTO on the Principal Register and registered internationally. The Complainant’s rights in the trademark are uncontested in this proceeding.
The disputed domain name is <fantagemobile.com> and the question is whether that is confusingly similar to the Complainant’s trademark. The trademark FANTAGE is a distinctive non-dictionary word. The bar for a finding of confusing similarity under the Policy is conventionally not high and the addition of a generic word before or after a recognised trademark is unlikely to be distinguishing (for example, <diormobile.com>; Christian Dior Couture Company v. 301 mozna bldg, WIPO Case No. D2008-0115; <mobileairfrance.com>; Société AIR FRANCE v. Consultores, Brian Glenn, WIPO Case No. D2011-1114). The Panel finds for the Complainant under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant is required to prove that the Respondent does not have rights or legitimate interests in the disputed domain name. The Complainant implies that it has no relationship with the Respondent and says there is no evidence that Fantasy Age Mobile exists or is well known.
Paragraph 4(c) of the Policy provides for the Respondent to establish rights or legitimate interests in a disputed domain name by demonstrating:
“(i) before any notice to you [the Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 above circumstances are illustrative and without limitation.
The Respondent is a provider of Internet services; Fantasy Age Mobile is its ultimate client. The Complainant sent a message setting out its position to the Respondent through PrivacyProtect.org on April 13, 2012. It may reasonably be expected that PrivacyProtect.org forwards messages to its paying clients. The Complainant sent a further email, time stamped Wednesday April 18, 2012 at 4.37 pm, to the Respondent’s subsidiary Fabulis Domains. The Respondent does not dispute having received the email but makes much of how long it may have taken to receive it. Allowing for world time and dateline differences, and assuming nominal transmission times, it should have arrived in Brisbane on the morning of Thursday April 19, 2012, i.e., before the Respondent’s website was put up. Had this timing been crucial, the Panel would not necessarily have accepted the Respondent’s assertion that “[...] for all intents and purposes the first contact between the Respondent and Complainant took place on or about 20 April 2012”, but it is not crucial, as the Panel does not find the contemporaneous placement of a holding page website to be sufficient evidence in this case of demonstrable preparations for bona fide use of the disputed domain name before notice of the dispute.
The Respondent does not claim to have been commonly known by the disputed domain name, and its intended use is not claimed to be noncommercial.
It might be considered, from the Respondent’s point of view, that a website developer could have a legitimate interest in a domain name in the transient period between its registration on behalf of a client and its delivery to the client. Despite the opportunity provided by an invited Supplemental Filing, the Respondent has provided no evidence of the existence of FAM to counter the Complainant’s assertion that it may not exist. Had such evidence been provided, the question would have remained as to whether the use of the disputed domain name could have been legitimate.
In the terms of paragraph 4(a)(ii) of the Policy, the Panel finds for the Complainant.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name by a Respondent in bad faith, of which the fourth may be pertinent to the present case:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your website or location.”
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith registration and use may be found by the Panel on alternative grounds.
Thus, the image of Fantage is a major commercial operation aimed at the provision of a responsible and safe environment for children, externally endorsed, with a history dating back at least to 2009, substantial momentum and a following. A prominent label in the homepage scenery reads “Welcome to a Fantastic Age”, indicating the possible origin of the trademark FANTAGE from Fantastic Age.
A strong association of the Complainant’s website with the word “mobile” is inescapable. The Complainant’s homepage featuring the label “Fantastic Age”, and another homepage version featuring “Prom Dance Party”, produced in evidence, both have a prominent box labelled “Mobile App”. Pages from the “Fantage.com Official Blog” contain numerous references to mobile facilities and platforms, such as “FishFish: Deep Blue - An Exciting New Game For iPhone!”; “When you transfer stars from FishFish Mobile to Fantage, you will receive...”. A news item posted on “www.mmorpg.com” is headed General: “Fantage Goes Mobile, posted Sept 13, 2011 by Suzie Ford” (MMORPG means Massively Multiplayer Online Role-Playing Games). A sub-page of “cphan3sfantageguide.wordpress.com” produced in the Complainant’s evidence is headed “Fantage Homepage Update + New Mobile App + Off The Hook Multiplayer” and has the dateline April 10, 2012. The evidence contains other comparable examples.
The Respondent provided screenprints of Yahoo, Bing and Google searches for the word pair “fantage” and “mobile”, intended to show the disputed domain name does not appear on the first pages of Yahoo and Bing results, the implication being that searchers for the Complainant’s or the Respondent’s websites respectively will not confuse the two. A parallel Google search, however, included in the Respondent’s evidence, listed the disputed domain name fifth on the first page out of “about 218,000 results”, and it is of note that this extraordinarily high ranking was achieved by a nascent holding website not yet in proper use. The Panel is concerned to note that the snippet shown in the Google excerpt from the disputed domain name <fantagemobile.com> reads “26.02.12 - New Website Coming Soon Sorry to our many customers [...]”. Since the disputed domain name was not registered until April 8, 2012, the Complainant has raised the question of the authenticity of the date “26.02.12” (February 26, 2012).
The Panel’s interpretation of many of the results from all three search engines is that they lead predominantly to either the Complainant’s business or to commentary about it, and project a clear association between the Complainant’s business and either the word “mobile” or mobile devices. For example, the Yahoo excerpt of the Wikipedia entry for Fantage reads “Recently Fantage.com, Inc., has created several mobile applications such as, Fantage Bullseye, Fantage IDFone, and Fantage Fish Fish for the iPhone platform”. The excerpt from “www.gamesultra.com” is headed “Fantage Hits the Bullseye with First Foray into Mobile Gaming”. The excerpt for “www.miniclip.com”, referring to Fantage, includes “These games are optimised for use on mobile devices”. It is of no consequence if the Complainant has in fact motivated any of these entries because they place the mobile connotations of the Complainant’s activities in the public domain.
The Respondent identifies its business as the provision of a comprehensive service in the field of domain name and website creation and management. As such it presumably was aware of its obligations surrounding the registration of a domain name, including paragraph 2 of the Policy which states, inter alia, that a registration shall not infringe the rights of any third party, and states that it is the registrant’s responsibility to determine whether a proposed domain name infringes another’s rights. Furthermore paragraph 12 of the Domain Registrant Agreement with Public Domain Registry requires that the registrant shall not infringe any intellectual property rights or other rights of any person or entity.
The Respondent has referred to the existence of an unrelated FANTAGE trademark for archery equipment. The co-existence of those trademarks is the concern only of their respective owners. The Respondent has also provided evidence of other domain names incorporating the word “fantage”. <fantagecheats.org> does not appear to belong to the Complainant but appears to target the same interest group; <fantageforum.com> and <fantagecheese.com> are registered with privacy services. The Panel does not find the existence of these domain names to advance any suggestion that the word “fantage” is available for general use.
It is clear from the Respondent’s evidence that it knew or ought to have known of the association of the word “mobile” with the Complainant’s activities, and could expect that many Internet users on seeing the disputed domain name may be likely to associate it with the Complainant by confusion. Why the Respondent’s client should eschew a clear representation of its own name in <fantasyagemobile.com> (which was available) and prefer the disputed domain name, for a saving of a mere three characters at the cost of predictable confusion with another’s trademark, is incomprehensible. Initial interest confusion occurs at the moment of attraction to a website, and is not cured by the discovery, however obvious, that it is not the intended site. The distinction between the provision of mobile applications by the Complainant and the intention to sell mobile devices by the Respondent’s client is inconsequential (<mobilemicrogaming.com>; Microgaming Software Systems Limited v. Stefan Molleman, WIPO Case No. D2008-0157; “The fact that the Complainant’s MICROGAMING Marks do not explicitly cover mobile devices is irrelevant in this regard”).
The provisions of paragraph 4(b) of the Policy are without limitation. The Respondent’s choice of the disputed domain name <fantagemobile.com>, whether by oversight, negligence, willful blindness or otherwise, is so far removed from good faith registration as to constitute registration and use, or intended use, in bad faith. The Panel so finds in the terms of paragraph 4(a)(iii) of the Policy.
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 <fantagemobile.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Dated: June 7, 2012