WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Web Entertainment Limited v. Halil Durmaz
Case No. D2015-0374
1. The Parties
1.1 The Complainant is Web Entertainment, LLC of Las Vegas, Nevada, United States of America (“United States”), represented by Randazza Legal Group, United States.
1.2 The Respondent is Halil Durmaz of Istanbul, Turkey.
2. The Domain Name and Registrar
2.1 The disputed domain names <iy8.org>, <oy8.org>, <y3y8.org>, <y8book.com> and <y8clip.com> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2015. On March 4, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On March 4, 2015, 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.
3.2 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”).
3.3 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 March 6, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 26, 2015. The Respondent sent an email to the Center on March 25, 2015 providing an informal response to the Complaint.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on March 31, 2015. 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.
4. Factual Background
4.1 The Complainant, although giving an address in the United States for the purposes of these proceedings, appears to be a company based, or at least incorporated, in Hong Kong, China. It provides online video games, virtual reality games, and other entertainment services to its users from a website operating from the domain name <y8.com>. These services were first provided from that domain name in or around late 2006.
4.2 Currently the Complainant’s website is one of the most popular Internet websites for video and virtual reality games in the world. According to the Alexa Internet list of the most popular websites for global website traffic, it is ranked at number 1,420.
4.3 The Complainant is the owner of various registered trade marks that comprise or incorporate the term “Y8”. They include:
(i) Community Trade Mark no. 009412255 filed on September 30, 2010 and published on May 18, 2011for Y8 as a word mark in classes 35 and 41; and
(ii) United States registered trade mark no. 4,130,791, filed on April 11, 2011 for Y8 as a standard character mark in class 41.
4.4 The Domain Names were registered on the following dates:
<iy8.org> February 17, 2011
<oy8.org> March 10, 2011
<y3y8.org> March 10, 2011
<y8book.com> March 10, 2011
<y8clip.com> February 13, 2012
4.5 The Respondent would appear to be an individual with an address in Turkey.
4.6 Internet archive print outs show that at least three of the Domain Names have been used since at least shortly after registration for websites that offer services very similar, if not identical, to those of the Complainant. They also adopted a layout which is very similar to that of the Complainant’s site. In the case of the remaining two Domain Names, the position is less clear, because the robot.txt settings for these websites prevented archives being taken. However, prior to the filing of the Complaint all of the Domain Names were being used for websites of this sort.
4.7 As at the date of this decision, no website is operating from any of the Domain Names.
5. Parties’ Contentions
5.1 The Complainant claims that by reason of its activities it is, in addition to its registered trade marks, the owner of common law trade mark rights in the term “Y8”. It refers in this respect to the decision in Web Entertainment, LLC v. Privacy Protection Service Inc. d/b/a PrivacyProtect/Anastasios Tsiligiannis, WIPO Case No. D2014-0632, in which the panel held that common law rights had been established in the term “Y8” by at least 2010.
5.2 The Complainant contends that each of the Domain Names are confusingly similar to its trade marks, arguing that each of the Domain Names comprises the term “Y8” in combination with either a single letter or number or an ordinary English word and a non-distinctive top level domain (“TLD”).
5.3 The Complainant maintains that the Respondent’s use of the Domain Names to provide a competing service to the Complainant using the Complainant’s mark is not legitimate. Such use is said not to provide a right or legitimate interest for the purpose of the Policy. This is said to be particularly so given that the Y8 mark is one with no inherent meaning. The Complainant also refers to advertisements appearing on the websites operating from the Domain Names. The printouts provided from these websites do indeed seem to show that prominently towards the top of each of these websites is to be found a banner advertisement. The Complainant contends that these advertisements show that the activity on these sites is not noncommercial.
5.4 The Complainant further contends that the Respondent’s registration and use of the Domain Name amounts to registration and use in bad faith. It contends that the nature of the Complainant’s mark and the nature and format of the websites that have operated from the Domain Names mean that the “Respondent could not argue, with any credibility, that it did not have actual knowledge of the Complainant’s mark.” It also relies upon the fact that each of the Respondent’s websites “lists Y8.com as a top search term for its visitors” and that in the case of at least two of the websites there are direct references to <Y8.com> in the text of the sites.
5.5 The Complainant contends that although it does not need to show actual confusion between the websites operating from the Domain Names and that of the Complainant, the similarities between them are such that actual confusion is likely to have occurred. In this respect it also refers to the fact that no disclaimer appeared on any of the websites operating from the Domain Names.
5.6 The Respondent sent an email to the Center on March 25, 2015 providing an informal response to the Complaint. Rather than attempt to summarise its contents, it is easier to reproduce it in full in this decision. It read as follows:
“I took with me your opinion on the domains of sorrow. I did not know it was first mentioned last y8 and y8.com copyright of words. I did so free blogs, but this site you can see a threat that can not be in that search engine or by looking alexa, these websites provide not financial gain, they are far from me. certainly was not my intention to interfere with the y8.com site damage or loss. I looked on the internet and saw the sample can be a sample site called ‘y8.fm’ located on the first page of the search engines and examples like this are completely mimic sites me encouragement was a result thereof, if sites like this, I thought that the copyright of y8 sites. I'm sorry about the subject taking into account the Documentation will respect you have sent the copyright of this person. I mentioned my domains have closed at the moment, if I can continue to use my domains if possible different websites.”
6. Discussion and Findings
6.1 It is incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. The Complainant must prove that:
(i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names (paragraph 4(a)(ii)); and
(iii) the Domain Names have been registered and are being used in bad faith (paragraph 4(a)(iii)).
6.2 The Panel will separately address each of these requirements of the Policy.
A. Identical or Confusingly Similar
6.3 The Complainant is clearly the owner of two word marks comprising the term “Y8”. The Panel accepts that each of the Domain Names, incorporates that term in its entirety. As this Panel stated in Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227:
“… in most cases where a domain name incorporates the entirety of a trade mark, then the domain name will for the purposes of the Policy be confusingly similar to the mark. The Complainant has cited a number of cases that are said to support that proposition. However, this Panel would prefer not to endorse this as a hard and fast rule. Are the domain names <theatre.com> or (to adopt American spelling) <theater.com> really confusingly similar to a mark for the word ‘heat’? Each case must be judged on its own facts, and the assessment will always depend on the specific mark and the specific domain name.”
6.4 Conducting the comparison in this case the Panel accepts that the only sensible reading of two of the Domain Names (i.e., <y8book.com> and <y8clip.com>) is as the term “y8” in combination with an ordinary English word and a TLD. Therefore each of these are clearly “confusingly similar” to the Complainant’s mark, given the way that the phrase “confusingly similar” is understood under the Policy.
6.5 So far as the other Domain Names are concerned, matters are not quite so clear cut. However, ultimately the Panel similarly concludes that they are “confusingly similar” for the purposes of the Policy. There are two reasons for this. The first is the Complainant’s undisputed contention that the term “y8” is one that has no descriptive or generic meaning. Although it is difficult to give any meaning to the terms “iy8”, “oy8” and “y3y8” it is not fanciful to suggest that they would be read and understood as involving some reference to the term “y8” embodied in the Complainant’s marks.
6.6 The second reason is that the actual use made of the Domain Names in this case suggests that the Respondent adopted the term “y8” in the Domain Names because of its association with the Complainant’s business and marks. Normally determining whether there is confusing similarity involves an objective comparison between relevant mark and relevant domain name alone. The content of the respondent’s website is not usually relevant. However, as this Panel recorded in RapidShare AG and Christian Schmid v. majeed randi, WIPO Case No. D2010-1089, a respondent’s intent can sometimes provide evidence as to how the domain name is objectively understood by others. This is such a case.
6.7 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy so far as all the Domain Names are concerned.
B. Rights or Legitimate Interests
6.8 For the reasons that are set out in greater detail under the heading of “Registered and Used in Bad Faith” below, the Complainant has persuaded the Panel that the Domain Names were all registered and have been held because they incorporate the Complainant’s Y8 mark. It also concludes that this was done with a view to unfairly drawing Internet users to the Respondent’s websites, which compete with the website of the Complainant. Such activity does not involve a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. In the circumstances, the Panel concludes that the Respondent has no rights or legitimate interests in the Domain Names. The Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.9 The Panel accepts the Complainant’s contention that at the time the Domain Names were registered the Respondent would have known of the Complainant’s use of the Y8 mark. As the Complainant contends, and is not disputed, the term “Y8” is not a descriptive or generic one for the services that the Complainant and the Respondent offers. Accordingly, the only sensible explanation of the Respondent’s registration of domain names that incorporated the “Y8” term is because of its associations with the Complainant.1
6.10 Further, there is the remarkable similarity between the Respondent’s websites and that of the Complainant. These websites were clearly designed at the very least to emulate the site of the Complainant. If this is not a case of actual impersonation of the Complainant, it is very close to it. Indeed, although the language of the Respondent’s informal response is hard to follow, it comes very close to admitting that these websites constitute deliberate “mimic” sites of the Complainant.
6.11 Given this the Panel concludes that the Domain Names have been registered and used to attract for commercial gain, Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of those web sites. Such activity falls within the scope of paragraph 4(b)(iv) of the Policy.
6.12 The Respondent appears to maintain that he has not financially gained from these sites. However, he does not specifically respond to the Complainant’s contention that the websites have carried advertisements from which he is likely to have generated revenue. Further, as the Complainant rightly contends in its Complaint, the examples of bad faith registration and use set out in paragraph 4(b) of the Policy are non-exhaustive. Regardless of whether the Respondent’s activities strictly fall within the scope of paragraph 4(b)(iv) of the Policy, it is nevertheless clear that the Domain Names have been registered and used to take unfair advantage of the Complainant’s trade mark rights. This is sufficient for a finding of bad faith registration and use (see Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230). Accordingly, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <iy8.org>, <oy8.org>, <y3y8.org>, <y8book.com> and <y8clip.com>, be transferred to the Complainant.
Matthew S. Harris
Date: March 31, 2015
1 As far as the Panel can tell the Community Trade Mark relied upon by the Complainant and identified in paragraph 4.3 of this decision, although filed before the Domain Names were registered, was not published until after four of the five Domain Names were registered (and as to the significance of publication see Article 9(3) of the Community Trade Mark Regulation). It may be that this is one of the reasons why the Complainant also seeks to rely upon alleged pre-existing common law rights. However, in the opinion of the Panel this does not matter where, as here, the complainant has used the relevant sign in a trade mark sense prior to the domain name’s registration and the domain name has been registered with the intention of taking advantage of any trade mark rights that may subsequently arise (see, for example, United Phosphorus Limited v. Monagro Sp.z o.o. WIPO Case No. D2014-1561).