WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Social Point, S.L. v. 3745854 Domain Manager / Moniker Online Services, LLC
Case No. D2013-2082
1. The Parties
The Complainant is Social Point, S.L. of Barcelona, Spain, represented by Garrigues, Spain.
The Respondent is 3745854 Domain Manager of Boynton Beach, Florida, United States of America (“US”) / Moniker Online Services, LLC of Portland, Oregon, US, represented by Erika L. Hengst, Esquire, United States of America.
2. The Domain Name and Registrar
The disputed domain name <socialpoint.com> is registered with Moniker Online Services, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2013. On December 3, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 9, 2013, 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 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 December 24, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 13, 2014. The Response was filed with the Center on January 13, 2014.
The Center appointed Luca Barbero as the sole panelist in this matter on January 21, 2014. 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 February 5, 2014, the Center notified to the parties an extension of the decision due date until February 11, 2014.
4. Factual Background
The Complainant is the developer of social games such as “Social Empires”, “Dragon City”, “Monster Legends” and “Social Wars” that can be played through the website “www.facebook.com” on streaming or downloaded to be played with iOS and Android apps.
The Complainant is the owner of the following trademark registrations for SOCIAL POINT (word and design): Spanish trademark No. 2861768, registered on June 22, 2009, in class 41; Community trademark No. 1137571, registered on July 6, 2012, in class 41; and United States trademark No. 4394443, registered on July 6, 2012, in class 41.
The Complainant is also the owner of the domain name <socialpoint.es>, registered on September 30, 2008.
The disputed domain name <socialpoint.com> was registered on August 30, 2001 and appears to have been maintained by the Respondent since that time. At the time of the drafting of the Decision, the disputed domain name is pointed to the Respondent’s website “www.socialholdings.com”.
5. Parties’ Contentions
The Complainant points out that, since its foundation, it has been providing services under the trademark SOCIAL POINT and states that the trademark has become well-known on the Internet, providing links to online blogs where the Complainant is mentioned as one of the fastest-growing mobile startups. The Complainant also highlights that a Google search for “Social Point” shows more than 1 million results, the first ones being directly related to the Complainant.
The Complainant contends that the disputed domain name is identical to its trademark SOCIAL POINT, as it incorporates its “well-known characters” in its entirety, with the mere addition of the “.com” suffix, that shall not be taken into account for comparison purposes.
As to the Respondent’s rights or legitimate interests in the disputed domain name, the Complainant asserts that the Respondent is not commonly known by the disputed domain name, does not own any registered trademark for SOCIAL POINT and has not been authorized by the Complainant to use the trademark SOCIAL POINT.
The Complainant informs the Panel that the Respondent identifies itself as belonging to a company named Global Ventures, which is focused on “the domain name systems”. The Complainant also alleges that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, as Global Ventures and its affiliates are directed by a person who would be engaged in the registration of domain names incorporating third parties’ trademarks.
The Complainant points out that the Respondent’s speculative intent is demonstrated by the fact that i) the Respondent’s email is associated with 14,588 domain names, according to DomainTools, ii) the Respondent’s website hosted under the disputed domain name also includes a section to receive offers for the disputed domain name and iii) the disputed domain name is also at auction through the GoDaddy’s web site, starting at bids above USD 5,000. The Complainant also indicates that, after the Complainant showed its interest in acquiring the disputed domain name, the Respondent sent an email to the Complainant in which it indicated its interest in selling the disputed domain name for an amount of 6 digits.
In view of the above, the Complainant concludes that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services and that the Respondent is unlawfully using the disputed domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademark SOCIAL POINT.
As to the use of the disputed domain name, the Complainant underlines that it has been pointed to a standard pay-per-click page with hyperlinks based upon the Complainant’s trademark and products (e.g. Dragon City, Social Empires, Social Wars, etc.), some of which provide users with information on how to cheat on Social Point games, information that would infringe the Complainant’s intellectual property rights.
The Complainant also asserts that the Respondent is misleadingly diverting users to its website and obtaining a considerable income thanks to the advertising placed therein.
In addition, the Complainant points out that, assuming that the trademark SOCIAL POINT could have been generic at some point, the Respondent did know of the reputation and goodwill that the Complainant has built up in this name and has linked the disputed domain name to the famous games commercialized by the Complainant, knowing that Internet users will immediately associate the disputed domain name with the products and services commercialized by the Complainant.
As to bad faith registration, the Complainant contends that the Respondent’s renewal of the disputed domain name on August 21, 2013 must be considered the date on which to assess whether the disputed domain name was registered and is being used in bad faith for the purposes of paragraph 4(a)(iii) of the Policy. Indeed, the Complainant asserts that the disputed domain name was renewed because the Respondent knew of the existence of the Complainant’s trademark. The Respondent’s awareness of the Complainant’s trademark would be demonstrated also by the content hosted under the disputed domain name, which is related to the Complainant’s business.
The Complainant therefore concludes that, by using the disputed domain name to redirect users to a website containing information on how to cheat or to hack Social Point games, the Respondent is unlawfully attracting Internet users to its website. In addition, the Respondent would be also attracting advertisers which pay the Respondent for the placement of their respective links. The Complainant also highlights that the Respondent is directly responsible for the links contained on the website to which the disputed domain name resolves.
In addition, the Complainant invokes the application of paragraph 4(b)(i) of the Policy, stating that the Respondent has registered the disputed domain name to intentionally attempt to sell it to the Complainant, as the Respondent has offered the disputed domain name for sale for an amount that exceeds its directly related out-of- pocket costs.
The Complainant concludes that, taking into consideration Octogen Pharmacal Company, Inc. v. Domains by Proxy, Inc. / Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786, Ville de Paris v Jeff Walter, WIPO Case No. D2009-1278 and Jappy GmbH v. Satoshi Shimoshita, WIPO Case No. D2010-1001, it may be concluded that the Respondent’sunlawful use of the disputed domain name in violation of the Complainant’srights calls into question the Respondent’s compliance with the representationsand warranties made under paragraph 2 of the Policy and thus, can beconsidered enough to prove the third requirement of the Policy.
The Respondent argues that the disputed domain name cannot be deemed identical or confusingly similar to the Complainant’s registered trademarks because none of the trademarks cited by the Complainant are for the standard character terms “Social Point,” but are rather for the special form design of the Complainant’s logo. The Respondent also states that it is improper in this instance to compare the Complainant’s design logo to the disputed domain name since the word portion of the trademark is not capable of trademark protection due to its generic or descriptive quality.
The Respondent also states that the Complainant has not established its common law trademark rights in the term “Social Point” since the information and publications cited by the Complainant indicate that their social games are popular and that it is in fact the names of the games themselves that have achieved the notoriety claimed and possible common law trademark protection sought and not the Complainant’s company name.
The Respondent also asserts that being in first position on Google search engine for the term “Social Point” and raising investment money for the Complainant’s business does not establish a secondary meaning for the term “Social Point”.
The Respondent points out that it became the first and only registered owner of the disputed domain name in 2001, before the date of the Complainant’s first trademark in 2009, but also before the foundation date of the Complainant.
The Respondent informs the Panel that the disputed domain name was the seventh that it purchased in what would ultimately make up a project and portfolio that the Respondent now calls the “Social Holdings Assets”, including today 56 domain names, with the aim at creating a community where strategic partners can collaborate to develop their projects into profitable businesses. The Respondent indicates that the reason why the disputed domain name, along with the other Social Holdings Assets, is not already a fully developed business is because the Respondent is still perfecting the technology.
The Respondent states that it purchased the disputed domain name because it was a generic, dictionary term “catchy and easy to remember” and that the Respondent’s intended use of the disputed domain name is exactly what the disputed domain name suggests, i.e. to be a contact point for people to facilitate joint efforts to develop and create business in a social and fun online location.
As to the use of the disputed domain name, the Respondent states that it is not presently parked and that, however, it was redirected to a parking page for a very brief period of time. Regarding the links, the Respondent asserts that, when domain names are parked with parking companies, the domain owner has no input as to what kind of paid links are placed on the website.
The Respondent brings to the Panel’s attention that in the 12 years since first registration of the disputed domain name, it has never received a cease and desist letter from the Complainant. The Respondent confirms that it received a communication in 2012, inquiring about the purchase price of the disputed domain name. At that time, the Respondent was unaware of the source of the communication, because it was sent by a Gmail account holder who did not identify itself as associated with the Complainant. The Respondent underlines that it replied to said communication stating that it had development plans for the disputed domain name and would not consider parting from it unless the offer was significant. The Respondent also asserts that it has received six or seven offers over the years for the disputed domain name and the responses to each have been consistent along those lines.
The Respondent claims that it would be highly prejudiced if it was forced to transfer the disputed domain name to the Complainant since the Respondent has spent the past 15 years and approximately USD 227,600.00 developing its portfolio of “social” related domains and “any decision for the Complainant at this point would have a highly prejudicial and detrimental effect on the Respondent’s development plans.”
The Respondent points out that, since the Complainant’s first trademark registration for the logo design was in 2009 and the company did not come into existence until October 2008, it would have been impossible for the Respondent to be aware of the Complainant in 2001.
Furthermore, the Respondent submits that the Complainant has failed to provide any evidence that the Respondent knew of its company, since the publications provided by the Complainant, which are all dated in 2012 and after, only show the popularity of the Complainant’s games and not its company. In addition, the Respondent alleges that it does not play the Complainant’s games and it does know the Complainant’s company, which is based in Spain.
As to the screenshot of the Respondent’s website submitted by the Complainant, the Respondent highlights that the Complainant has not indicated the date on which the screenshot was taken and reiterates that the redirection of the disputed domain name to a landing page was made for a short period of time. The Respondent states that it did not register the disputed domain name or continuously renew it with the purpose of causing disruption to the Complainant, to prevent it from using its trademark for the logo design of its company, or to cause a likelihood of confusion.
The Respondent argues that the Complainant knew or should have known that it did not have trademark rights in the standard character word term “Social Point” and that the Respondent had a legitimate intent and had made preparations to develop the disputed domain name. The Respondent also reiterates that there was also no bad faith in the registration or renewal of the disputed domain name and requests that the Panel make a finding of Reverse Domain Name Hijacking (RDNH).
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall 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.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a 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.
A. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of a device mark which includes SOCIAL POINT, with registrations in Spain, in the European Community and in the United States.
As highlighted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), figurative, stylized or design elements in a trademark are typically disregarded for the purpose of assessing identity or confusing similarity, such assessment generally being between the alpha-numeric components of the domain name, and the dominant textual components of the relevant mark.
In view of the above, and considering that the suffix “.com” may be disregarded as being a merely functional component in a domain name, the Panel finds that the disputed domain name is confusingly similar to the Complainant’ s trademark, in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating any of the circumstances listed at paragraph 4(c) of the Policy.
In the case at hand, it is undisputed that the Complainant did not provide any authorization to the Respondent to register and use its trademark as a domain name. According to the records, the disputed domain name was in fact registered by the Respondent in 2001, several years before the foundation of the Complainant and the registration of the Complainant’s trademarks. In addition, the Respondent appears to have actually registered the disputed domain name because of its generic or dictionary term since it has engaged since 1998 in the registration of domain names constituted by the word “social” in addition with other generic terms, building a domain name portfolio which counts today a number of “social- related domain names” (such as <socializing.com> and <socialcenter.com>, registered in 1998, <socialbar.com>, registered in 2000, <socialagent.com>, registered in 2003, <socialparty.com> and <socialbrokers.com>, registered in 2005, <socialchallenge.com>, registered in 2006).
As indicated, amongst others, in Mobile Communication Service, Inc. v. WebReg, RN, WIPO Case No. D2005-1304, where a respondent has registered a domain name consisting of a dictionary term because it has a good faith belief that the domain name’s value derives from its generic qualities, that may establish a legitimate interest.
As to the use of the disputed domain name, the Complainant has submitted screenshots dated November 20, 2013 showing that the disputed domain name was redirected, at that time, to a pay-per-click page, and that the disputed domain name was also offered for sale. As recognized in several prior UDRP decisions, the use of a domain name constituted by generic or descriptive terms in connection with pay-per-clink pages would not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services” or from “legitimate noncommercial or fair use” of the domain name but may be permissible in some circumstances, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue without capitalizing on a trademark value.
Also in Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964, it was stated that reselling domain names or using them for advertising links can in certain circumstances represent legitimate interests for purposes of paragraph 4(c) of the Policy. The panel in Zerospam Security Inc. v. Internet Retail Billing, Inc., Host Master, WIPO Case No. D2009-1276 found that such practices are most likely to be deemed legitimate under the Policy when:
“(i) the respondent regularly engages in the business of registering and reselling domain names and/or using them to display advertising links; (ii) the respondent makes good faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others; (iii) the domain name in question is a “dictionary word” or a generic or descriptive phrase; (iv) the domain name is not identical or confusingly similar to a famous or distinctive trademark; and (v) there is no evidence that the respondent had actual knowledge of the complainant's mark”.
In the case at hand, as mentioned above, the Respondent has demonstrated that it is engaged in the business of registering domain names constituted of generic or descriptive terms and that it could not be aware of the Complainant’s trademark at the time of the registration of the disputed domain name, 7 years before the foundation of the Complainant.
However, according to the screenshots submitted by the Complainant, all dated November 20, 2013, several of the hyperlinks featured on the pay-per-click page published at the disputed domain name were referring to the Complainant’s online games. The Respondent states, on this point, that the disputed domain name was redirected to “www.socialholdings.com”, to other domains owned by the Respondent and only in few occasions it was parked to websites containing paid links.
The Panel also notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain name or by a name corresponding to the disputed domain name.
The Panel finds that - since: i) the disputed domain name is constituted by generic terms, ii) was registered in 2001 several years before the foundation of the Complainant and the registration of the Complainant’s trademarks, iii) no formal communication was ever sent by the Complainant prior to the filing of the present Complaint highlighting the existence of the registered trademark and/or the presence on November 20, 2013 of links referring to the Complainant’s services on the corresponding web page and iv) in light of the fact that the Respondent is engaged since 1998 in the registration of domain names constituted by the word “social” in addition with other generic terms - on balance, the Complainant has not discharged its burden of showing that the Respondent has no legitimate interest in respect of the disputed domain name.
C. Registered and Used in Bad Faith
As recognized by the majority of the UDRP panelists, when a domain name is registered by a respondent before the complainant's relied-upon trademark right is shown to have been first established, the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right.
In the case at hand, the Complainant concedes that the Respondent did not register the disputed domain name in bad faith, as it acquired the disputed domain name in 2001, several years before the Complainant came into existence. However, the Complainant submits that the registration date for the purpose of assessing the bad faith registration requirement must be the last renewal date, which occurred on August 21, 2013.
According to the WIPO Overview 2.0, “while the transfer of a domain name to a third party does amount to a new registration, a mere renewal of a domain name has not generally been treated as a new registration for the purpose of assessing bad faith. Registration in bad faith must normally occur at the time the current registrant took possession of the domain name”.
Based on the records, the Panel finds that the Complainant has failed to provide sufficient evidence to demonstrate that the Respondent has, at any time after registering the disputed domain name in 2001, held and renewed the disputed domain name registration in bad faith. Indeed, the Respondent has denied to have been aware of the Complainant’s trademark prior to the notification of the Complaint and has proved that it has built a portfolio of several “social-related domain names.
In view of the above and considering the generic nature of the words constituting the disputed domain name, the Panel finds that the disputed domain name was registered and is, on balance, being maintained by the Respondent in light of its inherent value.
The fact that the disputed domain name was redirected, for an undefined period of time (as the Complainant has submitted only a screenshot dated November 20, 2013 and the Respondent has stated that it was only for a “short period” / “few occasions”), to a web page featuring also links related to the Complainant’s online games, is not sufficient, in view of the circumstances of the case, to demonstrate that the Respondent has registered and used the disputed domain name in bad faith.
In view of the above, the Panel finds that the Complainant has failed to discharge its burden of proving the requirements of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, the Complaint is denied. The Panel does not deem appropriate to make a finding of reverse domain name hijacking.
Date: February 10, 2014