WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Defy Media LLC v. Virtual Point
Case No. D2015-1249
1. The Parties
Complainant is Defy Media LLC of New York, New York, United States of America (“US”), internally represented.
Respondent is Virtual Point, c/o David Lahoti of Irvine, California, US, represented by The Kinde Law Group, APC, US.
2. The Domain Name and Registrar
The disputed domain name <addicting-games.com> (the “Domain Name”) is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2015. On July 20, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center sent an email communication to Complainant on July 23, 2015 regarding mutual jurisdiction. Complainant filed an amendment to the Complaint on the same date.
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 Respondent of the Complaint, and the proceedings commenced on July 24, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, 2015. The Response was filed with the Center on August 13, 2015.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on August 27, 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.
Complainant’s counsel sent an email to the Center on August 18, 2015 containing additional information regarding the Complainant’s activities prior to the registration of the Domain Name, and Respondent’s counsel sent a responsive email to the Center on August 21, 2015. In each instance, the Center informed the parties that no express provision is made for Supplemental Filings by either party, except in response to a deficiency notification or if requested by the Center or the Administrative Panel. Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of Supplemental Filings received from either Party. The Panel has determined that in view of the comprehensive initial submissions filed by Complainant and Respondent in this case, there is no need to consider these additional submissions from the Parties.
4. Factual Background
In June 2014 Complainant acquired the “Addicting Games” business from Viacom, Inc. and, as a result, now owns the assets and goodwill of the business, including the website at “www.addictinggames.com” and the ADDICTING GAMES trademark.
Complainant’s ADDICTING GAMES mark is registered as US Registration No. 3326790 in Class 41 for entertainment services, covering online computer and video games. According to the trademark certificate, the US mark was registered on October 30, 2007 with a filing date of November 1, 2005 and a date of first use in commerce as May 9, 2007. The ADDICTING GAMES mark was assigned to Complainant on June 9, 2014. The ADDICTING GAMES mark is also registered in Australia as Registration No. 108592; in Canada as registration No. TMA 43193; as Community Trademark (“CTM”) Registration No. 004742607; and in India as Registration No. 1400575.
Complainant’s predecessor-in-interest registered the domain name <addictinggames.com> on August 27, 2002.
The Domain Name was registered by Respondent on January 4, 2003.
5. Parties’ Contentions
(i) Identical or confusingly similar
Complainant states that “Addicting Games” was founded in 2002 as one of four entertainment websites owned by Atom Entertainment, Inc. (“AE”). AE pioneered the gaming industry and the Addicting Games site became a leading online destination for gamers, offering nearly 1,500 free and downloadable games. AE’s digital properties, including the Addicting Games site, were acquired in August 2006 by MTV Networks, a division of Viacom, for USD 200 million. Since then, Addicting Games has remained a highly trafficked gaming site, with approximately 6 million estimated unique monthly visitors as of June 1, 2015 according to an Alexa Global Traffic Rank Report.
Complainant states that it and its predecessors-in-interest have used the ADDICTING GAMES trademark for goods and services since 2002. Through this use and subsequent registration of the mark, Complainant claims its ADDICTING GAMES mark has become well-known and highly recognized worldwide in relation to offering online digital game, achieving substantial goodwill.
In addition to relying on its registration for the ADDICTING GAMES mark, Complainant relies on common law trademark rights in the mark, which it claims date from 2002. Complainant contends it is well established that under the Policy a domain name may be ordered transferred based on common law rights. The Policy requires only that a certain combination of letters and/or numbers be recognizable as a mark by a significant number of Internet users or consumers in general.
Respondent’s Domain Name includes Complainant’s mark in its entirety. The only difference between Complainant’s mark, ADDICTING GAMES, and the Domain Name is the latter’s addition of a hyphen between “addicting” and “games.” Complainant contends that the insertion or elimination of a hyphen in a domain name cannot avoid a finding of similarity. Thus, the Domain Name is confusingly similar to Complainant’s ADDICTING GAMES mark.
(ii) Rights or legitimate interests
Complainant states that Respondent has no rights or legitimate interests in the Domain Name because Complainant has not granted any rights to Respondent to use it. Additionally, Complainant states that Respondent cannot meet any of the situations enumerated in paragraph 4(c) of the Policy.
Respondent is not commonly known by the Domain Name or any similar name. The relevant WhoIs information identifies Respondent as “Virtual Point”, a name that does not resemble the Domain Name. The Virtual Point website provides links to four affiliate sites, none of which make any reference to the Domain Name. Moreover, the Domain Name does not make any reference to Virtual Point or any of its affiliate sites. Instead, the website at the Domain Name includes alink to the website at <gamex.com>, which provides links to six online gaming sites, but makes no reference to the name <addicting-games.com> or to Virtual Point.
Complainant contends that Respondent is not using the Domain Name for a bona fide offering of goods or services. Instead, Respondent is using it to redirect Internet users to a competing website. Complainant contends the website linked to the Domain Name mimics the look and feel of Complainant’s website and features online games similar to those offered by Complainant. The use of a domain name that is confusingly similar to a mark to offer the same or similar services as those offered under the mark is not a use in connection with a bona fide offering of goods or services pursuant to Policy, paragraph 4(c)(i). Moreover, Complainant contends that Respondent is trading on the goodwill associated with Complainant’s ADDICTING GAMES mark. The site linked to the Domain Name displays numerous pay-per-click advertisements from which Respondent receives compensation. This does not amount to a legitimate non-commercial or fair use of the Domain Name.
(iii) Registered and used in bad faith
Complainant submits that Respondent registered and is using the Domain Name in bad faith pursuant to paragraph 4(a)(iii) of the Policy. Complainant states that the original Addicting Games site launched in 2002. Subsequently, Respondent registered the Domain Name in 2003. Although the ADDICTING GAMES trademark was not filed until 2005, Complainant maintains that the mark had established common law rights through its extensive use in commerce since 2002.
Complainant argues that several UDRP panels have found bad faith even when a respondent’s registration of a domain name was prior to the complainant’s trademark registration, especially in instances where the respondent registered the domain name being conscious of the advantages that would result from being mistakenly affiliated with the complainant. Complainant urges that Respondent’s behavior in this case is indicative of bad faith registration. Complainant asserts that Respondent registered the Domain Name in 2003, shortly after the Addicting Games site was launched and gaining popularity, with awareness of the money that could be made by being mistakenly affiliated with Complainant.
Complainant argues that the inference that Respondent must have known of Complainant’s trademark rights is reinforced by Respondent’s alleged notoriety as a habitual cyber squatter, as shown by prior US court decisions. Complainant states that courts and panels consistently find that a respondent’s history of cybersquatting is a strong indication of registration and use in bad faith.
Complainant states that Respondent has used and continues to use the Domain Name in bad faith under paragraph 4(b)(iv) of the Policy. Bad faith should be found as Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with a Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of respondent’s website. Respondent intended to capitalize on Complainant’s ADDICTING GAMES mark. Respondent’s business model is to passively collect click-through revenue generated from the goodwill associated with Complainant’s ADDICTING GAMES mark. Exploitation of the reputation of a trademark to obtain click through commissions from the diversion of Internet users is a common example of opportunistic bad faith use under the Policy, and identified in previous UDRP decisions.
Complainant contends that Respondent’s use of the ADDICTING GAMES mark in the Domain Name and on the resolving website causes consumers to believe, mistakenly, that Complainant is affiliated with or endorses the Domain Name. Visitors to Respondent’s site are presented with an offering of online games they would expect to find on Complainant’s official site. Moreover, Respondent’s website mimics the look and feel of Complainant’s official website. Respondent, like Complainant, uses the same red and black color scheme, a similar font style, and a similar layout. These actions constitute bad faith registration and use pursuant to Policy paragraph 4(b)(iv). Therefore, Respondent’s use of the Domain Name to intentionally attract Internet users for commercial gain, the similarity to Complainant’s original website, and the pattern and practice of Respondent’s cybersquatting give rise to an inference of bad faith.
Complainant concludes that the bad faith allegations described above, combined with Respondent’s lack of rights or legitimate interests in the Domain Name, should lead the Panel to conclude there is no plausible circumstance under which Respondent could legitimately register or use the Domain Name and that, therefore, the Domain Name was registered and is being used by Respondent in bad faith.
Respondent claims that this is a case of an attempted reverse domain name hijacking (“RDNH”) and that the Complaint must be denied “as a matter of law” because the facts as pleaded by Complainant cannot support a claim under the Policy. In particular, Respondent states that it registered the Domain Name before the trademark rights, upon which Complainant relies, were first established, so there can be no bad faith registration. Respondent also argues that the term “addicting games” is generic. As such, despite Complainant’s trademark registration, Respondent contends that Complainant possesses no trademark rights and Respondent has a legitimate interest in continuing to use the Domain Name. Respondent also raises a laches defense and requests a finding of RDNH.
(i) Identical or confusingly similar
Respondent submits that Complainant’s asserted ADDICTING GAMES trademark is generic because the term “addicting games” is a genus of goods and therefore generic under trademark laws. Thus, despite Complainant’s trademark registrations, Respondent contends that Complainant possesses no trademark rights and Respondent has a legitimate interest in continuing to use the Domain Name. This is particularly true given the co-existence of the Domain Name and Complainant’s <addictinggames.com> domain name for over a decade.
Respondent states that although the US Patent and Trademark Office (“USPTO”) permitted registration of the asserted ADDICTING GAMES mark, it was registered years ago when the online gaming industry was only first emerging. In order to be deemed generic, the words must become known as the name of the underlying goods or services rather than as a mark. Respondent argues that there is an entire world of games that are identified as either “addicting games” or “addictive games”, which generally have the characteristic of being simple in design, but frustrating in performance. A search on the Google search engine reveals literally thousands of addicting games websites. Thus, Respondent claims that the words “addicting games” fail to function as a trademark. By way of example, Respondent provides a list of just over 200 domain names incorporating the terms “addicting” and “games”, many of which resolve to active websites and others to directory pages or parked pages.
(ii) Rights or legitimate interests
Respondent claims that because Complainant has no trademark rights in the terms, “addicting games”, Respondent has a legitimate interest in continuing to use the Domain Name. Respondent also asserts that before receiving any notice of the dispute, it used the Domain Name in connection with a bona fide offering of goods or services.
(iii) Registered and used in bad faith
Respondent argues that it cannot be found to have registered the Domain Name in bad faith, since Respondent registered the Domain Name in January 2003 before any rights could have been established in Complainant’s asserted ADDICTING GAMES trademark. According to Respondent, Complainant acknowledges that the Domain Name was registered over twelve years ago in 2003. However, Complainant’s predecessor-in-interest filed an Intent-to-Use (“ITU”)trademark application for the asserted ADDICTING GAMES mark two years later on November 1, 2005. During the prosecution of that trademark application, Complainant’s predecessor-in-interest filed a Statement of Use (“SOU”), admitting that the first use date for the asserted mark was May 9, 2007. On October 30, 2007, the USPTO issued a certificate of registration to Complainant’s predecessor-in-interest for the mark.
Respondent argues that Complainant makes a statement in the Complaint without any substantiation: “Although the ADDICTING GAMES trademark wasn’t filed until 2005, the mark had established common law rights through its extensive use in commerce since 2002.” However, Respondent states that this statement is contradicted by Complainant’s predecessor-in-interest in documents signed under oath and penalty of perjury. First, Complainant’s predecessor-in-interest signed a document in its ITU mark application of November 2005 indicating that it intended to use the mark in the future. Second, Complainant’s predecessor-in-interest subsequently filed a SOU on May 14, 2007, confirming a first use date for the mark of May 9, 2007.
Respondent urges that these facts contradict Complainant’s allegation that Complainant “had established common law rights through its extensive use in commerce since 2002.” Further, Complainant’s predecessor-in-interest is the entity with actual knowledge of the historical use of the mark, whereas Complainant acquired rights to the asserted ADDICTING GAMES trademark from Viacom only in June 2014.
Respondent contends that as between Complainant’s 2005 filing date and Complainant’s 2007 first use date, the 2005 filing date is the earliest date that Complainant may use as its constructive use date for purposes of this dispute. Thus, by Complainant’s own assertions, Respondent’s registration of the Domain Name in 2003 could not give rise to bad faith registration because Complainant had no trademark rights to assert at that time.
Respondent states that this analysis is supported by Complainant’s trademark registrations in other countries. The Australian and EU trademark registrations identified in the Complaint were filed by Complainant’s predecessor-in-interest near the same time as the filing of the US application. The Canadian trademark registration cited in Complainant’s Complaint includes a declaration of use date of June 16, 2009.
Respondent claims that the Domain Name was not registered or acquired primarily for the purpose of selling, renting, or otherwise transferring it to Complainant; the Domain Name was not registered in order to prevent Complainant from reflecting its mark in a corresponding domain name and, in connection therewith, Respondent has not engaged in a pattern of such conduct; the Domain Name was not registered primarily to disrupt Complainant’s business; and the Domain Name was not registered in an intentional attempt to attract for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
Respondent explains that 4 months after Complainant acquired the ADDICTING GAMES trademark registration by way of an assignment on June 9, 2014, Complainant sent a cease and desist letter to Respondent on October 20, 2014, which threatened to initiate a trademark infringement lawsuit against Respondent. On November 3, 2014, Respondent’s counsel replied to Complainant and asserted the mark is generic and that Respondent would vigorously defend against any action.
Respondent also asserts a laches defense. Respondent states that it registered the Domain Name 12 years ago, yet Complainant offers no explanation for the delay in bringing this action. Although Complainant acknowledges that it only recently acquired rights from its predecessor-in-interest, Respondent asserts that the clock for laches does not reset; otherwise, laches could be cured by recording an assignment and having the assignee take action. Complainant’s failure to offer any explanation as to why Complainant and its predecessors have taken no action for 12 years gives rise to a laches defense and the Complaint should be denied on grounds of laches alone.
(iv) Reverse Domain Name Hijacking (“RDNH”)
Respondent requests that the Panel make a finding of RDNH. Respondent argues that despite threatening Respondent with a lawsuit over 8 months ago, Complainant knew that it would not prevail. Instead, Complainant decided to “throw the dice” by filing this UDRP action – knowing full well that the 2005 ITU trademark application filed by Complainant’s predecessor-in-interest identified the first use date as 2007. Accordingly, Respondent states that not only should the Complaint be denied, but a finding of RDNH should also be made.
6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
The Panel must first determine whether the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights. Complainant has presented evidence of trademark registrations for its ADDICTING GAMES mark not only in the US, but also in the EU, Australia, Canada and India. In the US, the mark has been registered without challenge for almost 8 years. Moreover, while the US trademark certificate indicates that Complainant has disclaimed the exclusive right to use the word “games” apart from the mark as shown, the registration is, in fact, for a “word” mark, providing Complainant with the exclusive right to use the two words together, as shown in the ADDICTING GAMES mark, in relation to online computer games and video games.
Respondent has not attempted to contest that the Domain Name is nearly identical to the ADDICTING GAMES trademarks. Instead, Respondent has contended that the phrase “addicting games” is generic as descriptive of the online computer games offered by Complainant and other gaming websites, and therefore Complainant has no trademark rights to assert in this dispute. Respondent has referred to a number of US court cases where determinations were made that a name was generic, and provided evidence of other domain names incorporating the words “addicting” and “games”.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), states in paragraph 1.1 that “[i]f the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.” Further, the “[r]egistration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under the UDRP.” WIPO Overview, paragraph 1.4. In view of Complainant’s word mark registration in the US, and its trademark registrations in multiple countries, the Panel considers that Complainant has established rights in its mark for purposes of the Policy. Should Respondent wish to challenge Complainant’s registered trademarks on the grounds that the terms comprising the marks are allegedly generic, it must do so in another forum where the evidence on this issue can be more fully developed.
The Domain Name incorporates the ADDICTING GAMES mark in its entirety and differs only by the placement of hyphen between the two words. Accordingly, the Panel finds that the Domain Name is virtually identical to a trademark in which Complainant has rights, and the first element of paragraph 4(a) of the Policy is satisfied.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the Domain Name. A complainant is normally required to make out a prima facie case that respondent lacks rights or legitimate interests. Once a prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Although this case presents a close call, the Panel finds that Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Complainant presented a number of the elements commonly relied upon by complainants to make a prima facie showing: that Respondent is not commonly known by the Domain Name or the name Addicting Games; that Complainant did not provide Respondent with permission to use Complainant’s ADDICTING GAMES trademark in the Domain Name; and that there is no evidence of Respondent’s 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. Instead, Complainant indicated that Respondent is trading on the goodwill associated with Complainant’s ADDICTING GAMES mark, by linking the Domain Name to a webpage that includes links to websites offering gaming services that are in competition with Complainant.
In response to these arguments, Respondent argued that it has a legitimate interest in continuing to use the Domain Name because Complainant has no trademark rights in the term “addicting games”. However, as determined in section 6.A above, the Panel found that Complainant has established rights in its ADDICTING GAMES trademark for purposes of the Policy. Respondent also made the conclusory assertion, without providing any explanation, that before receiving any notice of the dispute, it has used the Domain Name in connection with a bona fide offering of goods or services. However, without any evidence or explanation to support this claim, the Panel cannot agree.
On the record in this case, the Panel finds that Respondent failed to rebut Complainant’s prima facie showing that Respondent has no rights or legitimate interests in the Domain Name. Accordingly, the Panel finds that Complainant has satisfied the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Name in bad faith. Here, Complainant’s Complaint must fail.
The Domain Name was registered on January 4, 2003, which is well before the 2005 date of filing for Complainant’s ADDICTING GAMES registered mark. While Complainant asserted that common law rights in its ADDICTING GAMES mark arose as early as August 2002 (when its predecessor-in-interest first registered the <addictinggames.com> domain name), and that Respondent must have been aware of the mark when it registered the Domain Name in January 2003, Complainant has provided little evidence in support of this claim. Further, Complainant has not adequately explained why its predecessors-in-interest, in trademark application filings with the USPTO, claimed May 9, 2007 as the first-use-in-commerce date for the ADDICTING GAMES registered mark. Complainant’s assertion that it (or its predecessors-in-interest) had common law rights dating back to 2002 is contradicted by these USPTO filings. See DuWop, LLC v. Jayson Online, WIPO Case No. D2001-1315.
Thus, on the record before it, the Panel cannot find that Respondent intentionally targeted Complainant (or its predecessors-in-interest), or the ADDICTING GAMES mark, when it registered the Domain Name in 2003. Accordingly, there is insufficient evidence of bad faith registration.
The Panel additionally notes, for completeness, that although it has not accepted Complainant’s supplemental filing, the Panel’s assessment under this element would not be substantially different it the event that such submission was accepted.
Regarding bad faith use of the Domain Name, the Panel considers that Complainant has made a stronger showing. However, in view of Complainant’s failure to demonstrate bad faith registration, the Panel has made no final determination on this issue. Nor has the Panel made any finding regarding Respondent’s claim of laches.
D. Reverse Domain Name Hijacking
Respondent has requested that the Panel making a finding of RDNH against Complainant. Paragraph 15(e) of the Rules provides that if, after considering the submissions, the Panel finds that the complaint was brought in bad faith, for example, in an attempt at RDNH or primarily to harass the domain name holder, the Panel shall declare that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. RDNH is defined as using the Policy in bad faith to attempt to deprive a domain name holder of a domain name.
WIPO Overview 2.0 states that UDRP panels have found RDNH in circumstances including where “the complainant in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP”. Respondent has echoed this reason. However, while the Panel’s decision on RDNH presents a close call in this case, the Panel considers, on balance, that in view of Complainant’s submissions, the Complaint was brought in good faith and not primarily as a means of harassment. For example, had Complainant developed further its evidence regarding rights in the ADDICTING GAMES mark dating back to 2002, and how Respondent might have been aware of those rights when it registered the Domain Name four months later, the outcome of this case might have been different.
For the foregoing reasons, the Complaint is denied.
Christopher S. Gibson
Date: September 10, 2015