WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Web Entertainment Limited v. Dursun Turunc, HT Bilgisayar
Case No. D2016-1107
1. The Parties
The Complainant is Web Entertainment Limited of Las Vegas, Nevada, United States of America (“United States”), represented by Randazza Legal Group, United States.
The Respondent is Dursun Turunc, HT Bilgisayar, Mehmet of Istanbul, Turkey.
2. The Domain Names and Registrar
The disputed domain names <y8on.com> and <y8online.com> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2016. On June 2, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 3, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 13, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 3, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 4, 2016.
The Center appointed David J.A. Cairns as the sole panelist in this matter on July 15, 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
The Complainant is the registered owner of the following trademarks: (i) U.S. trademark registration No. 4,130,791 for the word mark Y8 filed on April 11, 2011, registered on April 24, 2012 and based on a first use in commerce on December 5, 2006 in international class 41; (ii) Community trademark registration No. 009412255 filed on September 30, 2010 and dated August 25, 2011 for the word mark Y8 in international classes 35 and 41.
The Complainant also owns further United States and Community trademark registrations for a graphic mark consisting of Y8 beneath which is the wording “Y8.COM” inside a black rectangle, and utilizing the colours grey, red and black.
The Complainant also owns and operates the domain name <y8.com>.
The disputed domain name <y8on.com> was first registered on December 18, 2010. The Panel entered the disputed domain name <y8on.com> on July 26, 2016. The heading on the landing page included “Y8” inside a black rectangle, with the letter “Y” in white and the “8” in red, and the line “Welcome to our Y8 games” followed by “Finally, a site that have come to the right. Here you can find any flash game you were looking for. The right place to have fun. We add new games every day. All the games you can play without any payment”. The landing page had multiple links, including “Sponsors”, “New Y8 Games” and to many names classified by genre: “action”, “adventure”, etc. There was also an advertisement which led to a website offering outdoor adventure activities.
The disputed domain name <y8online.com> was first registered on June 14, 2011. The Panel also entered the disputed domain name <y8online.com> on July 26, 2016. This led to a similar website, where the heading on the landing page again included “Y8” inside a black rectangle, with the letter “Y” in white and the “8” in red. The text alongside read: “Welcome to our Y8 games. Here is the largest game resources of great free online games from Y8.COM. We are including Y8 Games, Y8 arcade games, Y8 action games, Y8 sports games, Y8 flash games, Y8 board games, Y3 web games, Y3 Games, kids games, online games, dress up games, internet games and much more. Here you can find all free online games, we update new Y8 Games every day.” There were links to “Sponsors” and “Y8 Games” as well as many other games categories.
5. Parties’ Contentions
The Complainant states that it owns and operates the domain name <y8.com>, and has used this domain name for several years in connection with the provision of online video games, virtual reality games, and other online entertainment services. In providing these services it says that it has made significant use of the Y8 trademark. The Complainant states that <y8.com> is one of the most popular Internet sites for video and virtual reality games in the world. It states that the success of the Y8 trademark has made it a target for cybersquatters and counterfeit websites.
The Complainant states that its rights based on its trademark registrations date from the filing of the trademark applications (referring to WorldNames, Inc., NU Domain Ltd. v. Marcel & Nora Uithoof, WIPO Case No. D2005-0480 for Community trademark registrations and Rolley v.Younghusband, 204 F.2d 209, 211 (9th Cir. 1953) for its U.S. trademark registrations). The Complainant states that in addition to its registered trademarks it has extensive common law rights in the Y8 mark that commenced well before the Respondent registered the disputed domain names, and as early as 2006. The Complainant refers to a screenshot of the website at <y8.com> on December 5, 2006 which contains the Complainant’s distinctive and now trademarked logo, and online non-downloadable video games.
The Complainant states that the disputed domain names are identical or confusingly similar to the Complainant’s trademarks. The Complainant states that the disputed domain names merely add the words “on” and “online” to the Complainant’s Y8 trademarks, and that adding common or descriptive terms to a registered trademark does nothing to lessen the likelihood of confusion and, given that the Complainant provides its services exclusively online, the disputed domain names actually increase the likelihood of confusion.
The Complainant states that the Respondent has neither rights nor legitimate interests in the disputed domain names. It states that the disputed domain names have been used to provide services directly competitive with those offered by the Complainant, and that capitalizing on the fame of a trademark in order to sell goods or services that directly compete with the trademark owner is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Respondent is incapable of using the disputed domain names for a legitimate purpose where the disputed domain names merely add descriptive terms and offer services virtually identical to and competitive with the Complainant’s services. There is no legitimate noncommercial or fair use and the Respondent is profiting financially from the use of the disputed domain names. The Respondent registered the disputed domain names after the Complainant began to use the trademarks and acquired common law rights, and even after the Complainant accrued registered rights. Finally, there is no evidence that the Respondent is known by the disputed domain names.
The Complainant states that the disputed domain names were registered and are being used in bad faith. It states that the Respondent clearly registered the disputed domain names to attempt to attract Internet users to its websites by creating a likelihood of confusion between the Complainant’s services and infringing services offered by the Respondent. The evidence of the original websites at the disputed domain names shows the Respondent registered the disputed domain names with full awareness of the Complainant’s rights in the Y8 trademark and with the specific intention of profiting from the Complainant’s trademarks. Even if the Respondent did not have actual notice, the Complainant asserts that there was clearly constructive notice, referring to UDRP cases.
The Complainant states that the Respondent desired to disrupt the Complainant’s business and create a likelihood of confusion among the consuming public as to the source, sponsorship, affiliation or endorsement of the websites located at the disputed domain names, constituting bad faith use. Such bad faith use is even more apparent given that the Respondent’s websites at the disputed domain names explicitly stated that they are providing the very same online video services as the Complainant. Further the Respondent has used a logo that mimics the Complainant’s logo in an attempt to deceive visitors. The Complainant states that the likelihood of confusion is obvious.
The Complainant asks that the disputed domain names be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable (paragraph 15(a) of the Rules).
The Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) that the disputed domain names have been registered and are being used in bad faith.
Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights or legitimate interests in the disputed domain name.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant owns the trademark registrations for the word mark Y8 referred to above.
The disputed domain names are not identical with the Complainant’s Y8 trademark. The disputed domain names incorporate the Complainant’s trademark entirely adding the suffixes “on” and “online”. The term “online” is purely descriptive of a medium of service delivery. The suffix “on” has no specific meaning when added to the mark Y8. Some Internet users may conceivably consider it a contraction of “online”, or as indicating that “Y8” is functioning. Both these possible interpretations emphasize the trademark function of Y8, but for the purposes of the first element of the Policy the Panel will proceed on the basis that “on” has no meaning in conjunction with “Y8”.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2 states that “[t]he threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms... typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.”
In the present case, the Panel considers that on a straightforward visual comparison the disputed domain names <y8on.com> and <y8online.com> are confusingly similar to the Y8 trademark for the following reasons: (i) the disputed domain names incorporate in its entirety the trademark Y8; (ii) “Y8” is an invented term without any meaning and is highly distinctive; (iii) “online” is a descriptive term which is insufficient to distinguish the disputed domain name from the Complainant’s trademark; (iv) the addition of the descriptive term “online” emphasizes rather than neutralizes the trademark function of Y8 because it makes reference to the Complainant’s means of service delivery; (v) “on” is a short commonplace word that has no meaning in this context and the Y8 trademark remains immediately recognizable and distinctive within the disputed domain name.
Therefore, the addition of the suffixes “on” and “online” do not avoid a confusing similarity between the Y8 trademark and the disputed domain names, and so the first element required by the Policy is satisfied.
B. Rights or Legitimate Interests
The Panel notes the following circumstances in relation to any possible rights or legitimate interests of the Respondent in the disputed domain names: (i) there is no evidence that the Respondent has any proprietary or contractual rights in any registered or common law trademark corresponding in whole or in part to the disputed domain names; (ii) the Respondent is not authorized or licensed by the Complainant to use the Y8 trademark or to register and use the disputed domain names; (iii) there is no evidence that the Respondent has been commonly known by the disputed domain names.
Paragraph 4(c) of the Policy provides a list of three circumstances, any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain names. With regard to paragraph 4(c)(i), the websites associated with the disputed domain names display the Complainant’s distinctive Y8 trademark in relation to the same services, and prominently refers to Y8 games. These websites also use a logo that replicates the style and colour scheme of the Complainant’s logo (itself subject to trademark protection). The websites also had links to “sponsors”, and therefore to products or services unrelated to the Complainant but benefitting from the goodwill associated with the Complainant’s Y8 trademark. The Panel finds that under these circumstances the Respondent cannot be considered to be using the disputed domain names in connection with a bona fide offering of goods and services.
Paragraph 4(c)(ii) does not apply as there is no evidence that the Respondent is known by the disputed domain name.
With regard to paragraph 4(c)(iii) the Respondent clearly has an intent of commercial gain and to mislead Internet users, as the disputed domain names use the Complainant’s well-known trademark, deliberately replicates the Complainant’s logo, and presumptively generates revenue from sponsored links and advertising.
In these circumstances, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that a disputed domain name was registered in bad faith and also “is being used” in bad faith. Paragraph 4(b) sets out the four circumstances without limitation which if found by a panel to be present shall be evidence of the registration and use of a domain name in bad faith. However, bad faith may be established on grounds other than those set out in paragraph 4(b), as the circumstances in paragraph 4(b) are expressed to be “in particular but without limitation”.
The Policy requires both registration and use in bad faith. The disputed domain names were registered on December 18, 2010 and June 14, 2011. These dates are prior to the registration of the Complainant’s Y8 trademarks, although not before the date of application for the registration of the Community Y8 trademark. In any event, the Panel is satisfied that the Complainant enjoyed common law rights in the well-known Y8 trademarks well prior to the dates of its trademark registrations. The U.S. trademark registrations recognize use of the Y8 trademark in commerce as early as December 5, 2006, and there is also evidence of the use of the Y8 trademark at the website under the <y8.com> domain name on this date. The Panel finds that the Respondent’s linkage of “Y8” and “on” and “online” in registration of the disputed domain names was not coincidental but deliberate and in full knowledge of the Complainant’s Y8 trademark.
The Panel finds that the circumstances of paragraph 4(b)(iv) are present in this case as the Respondent registered and has used the disputed domain names with the intention of deceiving and taking advantage of Internet users who would expect to find a website that is affiliated to or sponsored by the Complainant at a domain name incorporating the Y8 trademark. The bad faith and intention to deceive of the Respondent is further demonstrated by the deliberate replication of the Complainant’s logo that would serve to further confirm the impression of Internet users of association with or endorsement by the Complainant. The content of the websites, including sponsors and links to advertisements for unrelated services, confirm the objective of commercial gain.
For these reasons the Panel finds that by using the disputed domain names the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation and endorsement of its websites. The Respondent’s bad faith and intention to deceive, in all the circumstances, is blatant.
For these reasons, the Panel finds that the Respondent has registered and is using the disputed domain names in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <y8on.com> and <y8online.com> be transferred to the Complainant.
David J.A. Cairns
Date: July 29, 2016