WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Web Entertainment Limited v. Whois Agent / Whois Privacy Protection Service, Inc. / DNS Manager, Profile Group
Case No. D2016-0964
1. The Parties
Complainant is Web Entertainment Limited of Las Vegas, Nevada, United States (“US”), represented by Randazza Legal Group, US.
Respondent is Whois Agent / Whois Privacy Protection Service, Inc. of Kirkland, Washington, US / DNS Manager, Profile Group of Wilmington, Delaware, US, self-represented.
2. The Domain Name and Registrar
The disputed domain name <y8-online.com> (the “Domain Name”) is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2016. On May 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 18, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 19, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 24, 2016.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 25, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 14, 2016. The Response was filed with the Center on June 14, 2016.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on June 29, 2016. 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
Complainant, or its predecessor-in-interest, has been using the Y8 trademark in international commerce since 2006, providing entertainment services on the Internet, namely, online video games, virtual reality games and other entertainment services via its website at “www.y8.com”.
Complainant owns two US trademarks (nos. 4,130,791 and 4,130,792) for Y8 and for the Y8/Y8.COM logo, each filed on April 11, 2011 in international class 41. Complainant also owns two European Union (“EU”) trademarks (nos. 009412255 and 009649609), filed on September 30, 2010 and March 31, 2011, respectively, in classes 35 and 41.
Complainant’s rights to the Y8 mark pre-date Respondent’s registration of the Domain Name. The registrant of the Domain Name changed from a previous registrant to a privacy service on November 23, 2015. Respondent in its Response has confirmed it acquired the Domain Name on this date. The Domain Name was first registered October 28, 2013, which is also after the registration dates for Complainant’s Y8 marks.
5. Parties’ Contentions
(i) Identical or confusingly similar
Complainant states that it has made significant use of its Y8 trademark in providing services and has acquired both registered and extensive common law trademark rights. Previous UDRP panels have recognized Complainant’s rights in the Y8 mark.
Complainant states that its website at “www.y8.com” is one of the most popular Internet sites in the world for video and virtual reality games. According to Alexa Internet, it is among the world’s top 1000 most popular websites for global website traffic. As of July 2012, more than one year before Respondent’s registration of the Domain Name, the website at “www.y8.com” had a global rank of 243.
Complainant contends that the Domain Name is identical or confusingly similar to Complainant’s mark. Complainant has registered rights as of September 30, 2010 and common law rights accruing as from 2006. Complainant states the Domain Name is legally identical to Complainant’s Y8 mark, adding only a hyphen and the generic term “online,” which described where Complainant exclusively provides its services under its marks. Merely adding common terms to a registered trademark does nothing to lessen the likelihood of confusion created by the Domain Name. Here, the term “online” is generic for the services provided by both Complainant and Respondent. Thus, Complainant submits that the addition of this term does nothing to mitigate the likelihood of confusion created by the Domain Name. Instead, it potentially increases it. Given that the Domain Name is legally identical or confusingly similar to Complainant’s Y8 mark, Complainant maintains that it has satisfied the first element of the Policy.
(ii) Rights or legitimate interest
Complainant contends that Respondent’s registration and use of the Domain Name in bad faith cannot establish any rights or legitimate interests. According to Complainant, Respondent is unable to provide credible evidence of rights or legitimate interests in the Domain Name, as Respondent is currently using it for a generic parking page with keywords targeted at Complainant’s services. Complainant contends pay-per-click sites and domain parking pages are not bona fide offerings of goods or services. This is particularly true where the pay-per-click site links to goods competitive with the trademark owner. Creating a pay-per-click website that has the sole purpose of trading off the good name of a competitor is bad faith under the Policy. Respondent is not making a noncommercial or fair use of the Domain Name. Rather, Respondent is using the Domain Name for a commercial purpose, offering keyword advertising directing visitors to Complainant’s competitors. There is no descriptive element to Complainant’s Y8 marks or its <y8.com> domain name that could make such use by Respondent a good faith use.
Complainant states that “Y8” is a term with no inherent meaning; it is arbitrary and fanciful – the strongest kind of trademark. There is no obvious connection between Y8 and games. Respondent is incapable of good faith use of the Domain Name and is intentionally profiting from the goodwill that Complainant has established in its Y8 and Y8.COM marks. Respondent registered and used the Domain Name not because it refers to or is associated with Respondent, but because it is identical or confusingly similar to Complainant’s <y8.com> domain name and Y8 marks used in association with Complainant’s provision of online video game and entertainment services. Respondent is profiting financially from the Domain Name, and chose the <y8-online.com> Domain Name to profit from the goodwill of Complainant’s Y8 marks.
Available WhoIs records show that Respondent, at the earliest, registered the Domain Name on November 23, 2015. This registration occurred long after Complainant began use of the Y8 and Y8.COM marks and accrued common law rights, and even after Complainant accrued registered rights. After registering the Domain Name, Respondent’s website offered pay-per-click keyword advertising targeted at Complainant’s services. Respondent cannot claim any legitimate right to the Domain Name based on familiarity with either the general public or the relevant market. No evidence indicates that Respondent is commonly known by the text of the Domain Name. Complainant argues the Panel should presume that Respondent is not known by the text of the Domain Name. Additionally, because the Domain Name is identical to Complainant’s Y8 mark, Respondent is legally incapable of using the Domain Name for a legitimate purpose.
(iii) Registered or used in bad faith
Complainant states that Respondent has used the Domain Name to operate a pay-per-click site for the purpose of profiting off Complainant’s goodwill. From available evidence, the Domain Name was registered, at the earliest in November 2015. By that time, Complainant had been using its Y8 mark since November 27, 2006, predating Respondent’s registration by nearly nine years. Complainant also acquired registered rights in the Y8 marks starting on September 30, 2010, predating Respondent’s registration by over five years.
Complainant urges that Respondent has attempted to attract Internet users to its website by creating a likelihood of confusion between Complainant’s services and the infringing services offered by Respondent. Because Complainant had used the Y8 marks in connection with a gaming website for several years and Respondent offered pay-per-click advertising targeted at Complainant’s services, it is inconceivable that Respondent was not aware of Complainant’s mark when Respondent registered the Domain Name. Even if somehow the Panel determines that Respondent did not have actual knowledge of the Y8 and Y8.COM marks at the time of its registration of the Domain Name, constructive knowledge of a mark is properly applied in UDRP proceedings. Respondent’s use of a privacy service prior to Complainant’s filing of the original Complaint in this proceeding is additional evidence of bad faith.
Complainant states that Respondent desired to disrupt Complainant’s business and to divert Internet traffic away from the “www.y8.com” website when Internet users search for “y8.” In other words, Respondent’s registration and use of the Domain Name was designed to create a likelihood of confusion among the consuming public as to the source, sponsorship, affiliation, or endorsement of the website located at “www.y8-online.com.” Respondent has always used the Domain Name to poach Internet users from Complainant and to profit from the goodwill of Complainant’s marks.
Complainant asserts that Respondent has been the subject of multiple complaints under the Policy, and has been found in violation of the Policy by multiple UDRP panels. See, e.g., 02 Holdings Limited v. Profile Group, DNS Manager, WIPO Case No. D2013-1340; Conforama Holding v. Whois Privacy Protection Service, Inc. / Profile Group, DNS Manager, WIPO Case No. D2011-1976. Complainant contends that Respondent’s use and registration of the Domain Name is part of a systematic pattern of cybersquatting using pay-per-click sites, and that the Panel should adopt the reasoning of the other panels that have found Respondent liable.
Complainant argues that it does not need to show actual confusion; rather, the potential for reasonable confusion is sufficient. According to Complainant, where a domain name is likely to cause “initial interest confusion” such that users might abandon their efforts to find Complainant’s products, it is irrelevant that the users eventually realized that the site they reached is not the site they were seeking. Panels find a likelihood of confusion even though users may discover the unlikelihood of a business relationship between Complainant and Respondent. Since the Domain Name is substantively identical to Complainant’s mark and is being used to divert Internet users to Complainant’s competitors, the likelihood of confusion between the two is obvious. Complainant concludes that given Respondent uses the Domain Name to offer links to directly competing services, without so much as a disclaimer, confusion will and likely has occurred, and this was Respondent’s intention when it registered and used the Domain Name.
(i) Identical or confusingly similar
Respondent acknowledges that, under certain circumstances, the addition of hyphen, generic word, and a Top-Level Domain may be insufficient to differentiate a disputed domain name from a trademark; however, Respondent asserts that is not the case in this proceeding. Respondent makes reference to a prior UDRP case involving the trademark SONY. Respondent asserts, by comparison, that Y8 is not a famous trademark and therefore, a reasonable person would not be confused into thinking that the Domain Name, <y8-online.com>, is associated with Complainant. Respondent further notes that the second-level domain “y8-online” is nine characters long, while “Y8” is only two characters long, representing only 22 percent of the second-level domain. This is a further factor demonstrating that the Domain Name is not identical or confusingly similar to the mark Y8. In light of the foregoing, Respondent contends that Complainant has failed to show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights and, therefore, the Panel should find in favor of Respondent.
(ii) Rights or legitimate interests
Respondent states that the second element required to be proven by Complainant is not limited to trademark or service mark rights, but includes equitable interests such as expectation and reliance interests implicated by use of the Domain Name prior to notice of a dispute in connection with a bona fide offering of goods and services. Respondent registers and acquires generic, descriptive, and otherwise non-infringing domain names for the purposes of deriving advertising income by the use of each such domain name in connection with a click-through service, which serves as a starting point for Internet users seeking certain information.
Respondent notes that panels in prior UDRP proceedings have frequently held that a click-through service is a common business practice and constitutes legitimate use of a domain name. In any case, the Policy does not affirmatively require a respondent to demonstrate legitimate rights or interests. Moreover, Complainant has not shown Respondent’s use of the Domain Name for the purpose indicated in connection with clothing-related topics to have been illegitimate.
(iii) Registered and used in bad faith
Respondent states that the final element required to be proved by Complainant is that the Domain Name (1) was registered in bad faith by Respondent, and (2) is being used in bad faith by Respondent. According to Respondent, the bad faith criterion is an element of Respondent’s specific intent directed toward Complainant, and arising from rights known by Respondent to belong to Complainant. The bad faith criterion is independent of, but informed by, some of the same considerations as discussed in connection with rights or legitimate interests, because where the use has been legitimate, it cannot be found to have been in bad faith.
Respondent states, in particular, that the bad faith element is directed to an inquiry into why Respondent registered this Domain Name. Did Respondent register the Domain Name with intent to target or usurp the goodwill of Complainant, or was Respondent motivated by an independent intent, unrelated to Complainant? Respondent contends the evidence shows that it is the latter of these two scenarios. While Complainant makes the frivolous, boilerplate, conclusory statement that “Respondent clearly attempted to attract Internet users by creating a likelihood of confusion…,” Complainant has provided no evidence (as opposed to allegations of counsel) that Respondent registered the Domain Name in bad faith. Respondent states it acquired the Domain Name on November 23, 2015, along with hundreds of other generic, descriptive, and otherwise non-infringing domain names; Complainant was not a factor in Respondent’s decision to acquire the Domain Name. This fact alone demonstrates that Respondent did not register the Domain Name in bad faith. Moreover, as Respondent has established a legitimate interest in the Domain Name, Complainant cannot show that Respondent registered the Domain Name in bad faith.
Respondent states Complainant makes various arguments in an attempt to show that Respondent registered and/or is using the Domain Name in bad faith. One such argument focuses on prior advertisements that were on the website associated with the Domain Name. Respondent notes that such advertisements were automated and that Respondent had no influence in such advertisements. A prior UDRP panel has found similar circumstances sufficient to deny a finding of bad faith. Complainant has also provided no evidence (as opposed to allegations of counsel) that Respondent is using the Domain Name for a free ride upon any mark owned by Complainant, nor has Complainant made any showing that consumers and Internet users have been or are likely to be confused or to associate Respondent’s services with Complainant’s. Thus, Complainant has failed to show that the Domain Name is being used in bad faith by Respondent. Because Complainant has failed to show that the Domain Name was registered in bad faith by Respondent, and is being used in bad faith by the Respondent, the Panel should find in favor of Respondent.
6. Discussion and Findings
As has been recited in many UDRP decisions, in order to succeed in its claim, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied, as follows:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights 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. In this case, Complainant has demonstrated its strong trademark rights in its distinctive and fanciful Y8 mark, which has been in use since 2006 acquiring common law rights, while also registered in the US and EU during the years 2010 and 2011. Complainant has established that its Y8 trademarks and website at ”y8.com”, offering online gaming and entertainment services, are well-known within the online gaming field, as evidenced by the length of use and extensive Internet traffic to Complainant’s website.
The Domain Name incorporates Complainant’s Y8 mark in its entirety, adding only a hyphen and the descriptive term “online,” which can be taken to describe where Complainant’s online video games, virtual reality games and other entertainment services are offered. The word “online” in this context does not distinguish the Domain Name from Complainant’s Y8 marks; instead, it may reinforce the confusing similarity.
The Panel finds that the Domain Name is confusingly similar to a trademark or service mark in which Complainant has rights.
B. Rights or Legitimate Interests
Regarding the second element, 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 the respondent lacks rights or legitimate interests. Once such prima facie case is made, the respondent has the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel finds that Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Complainant has never authorized or licensed Respondent to incorporate Complainant’s Y8 marks in the Domain Name or to use it in any capacity. Complainant is not affiliated with, and has never endorsed or sponsored, Respondent. Respondent has not been commonly known as “Y8-online”. Instead, Respondent acknowledges that the Domain Name was purchased along with many other domain names, to be used for the purposes of deriving advertising income by using each domain name in connection with pay-per-click webpages. While such use might, in certain circumstances, give rise to a legitimate interest in a domain name, this is not the case here. By selecting the Domain Name, Respondent has not chosen a descriptive or generic term to link to its pay-per-click webpage; instead, it chose a term which is based upon, and incorporates, Complainant’s distinctive Y8 mark. The Y8 mark is fanciful and non-descriptive of Complainant’s online gaming services, which makes it highly distinctive. The combination of the term “y8” with the word “online” is not a common one that might be selected independently by Respondent. Rather, the Panel is convinced that the term “y8-online” was selected by Respondent in view of the popularity of Complainant’s Y8 marks and online gaming services available at the website linked to Complainant’s <y8.com> domain name. There can be no legitimate use of the term “Y8-online” by Respondent in connection with a pay-per-click webpage that profits from the Domain Name’s similarity to Complainant’s Y8 mark and offers links to Complainant’s competitors.
Accordingly, the Panel determines that Respondent has no rights or legitimate interests in the Domain Name, and Complainant has established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
In view of the discussion above, the Panel also determines, on the balance of the probabilities, that Respondent has opportunistically registered and used the Domain Name in bad faith. As noted above, Respondent registered the Domain Name, which incorporates and is confusingly similar to Complainant’s distinctive and well-known Y8 trademark, almost 10 years after Complainant (or its predecessor in interest) began using its Y8 mark for online gaming and entertainment services. Respondent then linked the Domain Name to a pay-per-click webpage, which makes money by attracting visitors based on the association with Complainant and its Y8 mark and services. Why else would anyone go to a website using the Domain Name, <y8-online.com>, especially since the term is not descriptive of anything except Complainant’s online entertainment services? In the Panel’s view, Respondent’s Domain Name creates a likelihood of confusion, is disruptive of Complainant’s business, and has been used for commercial advantage to attract Internet users to Respondent’s website, indicative of bad faith under the Policy.
While Respondent argues that it had no influence on the types of advertising appearing on the website, it has been long established that the registrant is typically deemed responsible for the content appearing on the website. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 3.8. Similarly, the Panel finds that it was Respondent’s responsibility to determine whether any domain name in its bulk registration would violate someone else’s rights, particularly where the Domain Name was not a common English word but instead was comprised of a unique combination of the terms “Y8” and “online”.
Accordingly, the Panel finds, in view of all of the above circumstances and the allegations and evidence submitted in this case, that the Domain Name was registered and is being used in bad faith, satisfying the third element 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 Domain Name, <y8-online.com>, be transferred to Complainant.
Christopher S. Gibson
Date: July 16, 2016