WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FPS Networks, Inc. v. Registration Private, Domains By Proxy, LLC / ICS Inc
Case No. D2018-0069
1. The Parties
The Complainant is FPS Networks, Inc. of Alberta, Canada, represented by Wiley Rein LLP, United States of America (“United States”).
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / ICS Inc of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
2. The Domain Name and Registrar
The disputed domain name <playtyperacer.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2018. On January 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 16, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 17, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 22, 2018.
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 the Respondent of the Complaint, and the proceedings commenced on January 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 19, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 20, 2018.
The Center appointed Geert Glas as the sole panelist in this matter on February 28, 2018. 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
In March 2008, Alexander Epshteyn, the Complainant’s predecessor, launched TypeRacer. TypeRacer is an Internet game that challenges players to type excerpts of texts as fast as they can by making them compete against each other. TypeRacer is accessible via the website “www.play.typeracer.com”.
Alexander Epshteyn registered the trademark TYPERACER with the United States Patent and Trademark Office on November 26, 2013 (No. 4438914) with a first use in commerce dating back from April 4, 2008.
On October 27, 2017, Alexander Epshteyn assigned the trademark TYPERACER to FPS Networks, Inc., the Complainant.
The Registrar’s WhoIs database shows that the Domain Name <playtyperacer.com> was first registered on July 29, 2013, and that it is registered to the Respondent. The disputed domain name redirects alternatingly to (i) a web site with typing relating content (e.g., typing games, typing certifications, typing courses) or (ii) a web site from which “security browse” software can be downloaded.
5. Parties’ Contentions
The following is a summary of the Complainant’s contentions.
The Complainant requests that the Domain Name be transferred to it on the following grounds:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant contends that the Domain Name is confusingly similar to its TYPERACER trademark. With regard to said trademark, the Complainant contends that it has acquired value and goodwill and that it is therefore entitled to common law trademark protection as of at least as early as mid to late 2008. The Complainant submits different articles written about the TypeRacer game in order to support this position.
The Complainant contends that the Domain Name incorporates the trademark TYPERACER in its entirety. The Complainant adds that this fact is sufficient by itself to demonstrate that a domain name is identical or confusingly similar as assessed by several UDRP panels (See e.g. Intesa Sanpaolo S.p.A v. Tommy, Bartles associates, WIPO Case No. DCO2015-0001).
The Complainant also contends that adding the word “play” to a distinctive trademark does not diminish the risk of confusion (See Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco v. Artem Nadiezhkin, WIPO Case No. D2016-2043).
The Complainant contends that the addition of the generic Top-Level Domain (“gTLD) “.com” does not diminish the risk of confusion as explained in section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition,(WIPO Overview 3.0).
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name since the Respondent (i) is not using the Domain Name in connection with a bona fide offering of goods and services, (ii) has not been authorised by the Complainant to use the trademark TYPERACER, (iii) is not commonly known by the Domain Name and (iv) is not making a legitimate noncommercial or fair use of the Domain Name.
The Complainant contends that the Respondent does not appear to be making any valid use of the Domain Name since the Respondent takes advantage of the Complainant’s trademark and associated domain name <play.typeracer.com> to redirect users to web sites that either trade on the TYPERACER trademark or install potentially dangerous software on users’ computers. The Complainant adds that the Respondent is trading upon the goodwill associated with the TYPERACER trademark by using the Domain Name for commercial purposes. Indeed, the Complainant contends that the Respondent’s purpose in using the Domain Name is to obtain a financial remuneration from pay-per-click links and advertisements displayed on the web sites to which the Domain Name redirects.
(iii) The Domain Name was registered and is being used in bad faith.
The Complainant contends that its trademark TYPERACER is distinctive and that it has benefitted from a lot of publicity. Consequently, the Complainant contends that it is not conceivable that the Respondent would not have known about the Complainant’s rights in the TYPERACER trademark.
The Complainant contends that the Respondent has taken advantage of the TYPERACER trademark to attract traffic on its own website by capitalizing on the confusion that may arise from the resemblance of the Domain name with (i) the TYPERACER trademark and (ii) the domain name <play.typeracer.com> that directs the users to the TypeRacer game.
With this regard, the Complainant adds that the close similarity between the Domain Name and both the TYPERACER trademark and the <play.typeracer.com> domain name, is indicative of the Respondent’s bad faith.
The Complainant contends that the Domain Name serves a commercial purpose through pay-per-click advertisement and that the Respondent has therefore registered the Domain Name and used it in bad faith under article 4(b)(iv) of the Policy according to which the registration and the use in bad faith of a domain name can be deduced from circumstances indicating that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to a web site by creating a likelihood of confusion with the Complainant’s mark.
The Complainant also contends that the Domain Name sometimes redirects to sites that distribute malware or potentially dangerous and intrusive software and that several UDRP panels have found that such fact is sufficient to assert that a domain name has been registered and is being used in bad faith (See e.g., Twitter, Inc. v. Moniker Privacy Services / accueil des solutions inc, WIPO Case No. D2013-0062).
The Complainant contends that the Respondent has engaged in bad faith by concealing its identity through the use of a privacy registration service, which raises a rebuttable presumption of bad faith registration and use (See. John Dilks v. Privacy Administrator / Anonymize, Inc., NAF Claim No. 1623023).
The Complainant also contends that the Respondent is used to registering variations of well-known or reputed trademarks and has therefore engaged in a pattern of abusive conduct (See e.g. Moncler S.p.A. v. Trademark Works, Richard Yaming, WIPO Case No. D2014-0503). The Complainant adds that the Respondent has been the named respondent in more than 300 cases with published decisions (at least 187 cases administered by the Center and 120 cases by the National Arbitration Forum) (See e.g., CMA CMG v. ICS INC. / Contact Privacy Inc. WIPO Case No. D2013-1412).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the complainant prove each and all of the following three elements in order to be successful in these proceedings:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has demonstrated that it is the owner of the TYPERACER trademark since October 27, 2017, the date on which Alexander Epshteyn, the previous owner of the TYPERACER trademark, assigned it to the Complainant. The trademark has only been registered with the United States Patent and Trademarks Office since November 26, 2013 (i.e., after the registration of the Domain Name), but the Complainant has drawn the Panel’s attention on the fact that the TYPERACER trademark was entitled to common law trademark protection as of at least as early as mid to late 2008. The Panel notes in this regard, however, that the timing of rights are not considered relevant to the first element test, but may bear on a Panel’s further substantive determination under the second and third elements (see WIPO Overview 3.0, section 1.1.2). For completeness, the Panel examines the Complainant’s claims to common law trademark rights.
There is no doubt that unregistered or common law trademark rights can be invoked under the Policy (See e.g., Skattedirektoratet v. Eivind Nag, WIPO Case No. D2000-1314; Uitgerverij Crux v. Frederic Isler, WIPO Case No. D2000-0575; and Together Networks Holdings Limited v. Admin Admin / MyPengo Mobile B.V., WIPO Case No. D2016-1350). The WIPO Overview 3.0, section 1.3 provides that “to establish unregistered or common law trademark rights for purpose of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and /or services”. Taking into account the articles submitted by the Complainant and published about the TypeRacer game and of which the oldest date from April 2008, the Panel is of the opinion that the TYPERACER trademark has become a distinctive identifier and agrees with the Complainant’s assertion that the TYPERACER trademark is entitled to earlier common law trademark protection.
The Domain Name incorporates the Complainant’s TYPERACER trademark in its entirety and differs from the TYPERACER trademark only in that the prefix “play” has been added. Several UDRP panel decisions have stated that wholly incorporating a complainant’s registered trademark in a domain name may be sufficient to establish confusing similarity even when a generic term is added to the trademark (See e.g., GA Modefine S.A v. Mark O’Flynn, WIPO Case No. D2000-1424; Viacom International Inc. v. Erwin Tan, WIPO Case No. D2001-1440; and eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307). The addition of the word “play” is no exception to this principle (See Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco v. Artem Nadiezhkin, WIPO Case No. D2016-2043, cited by the Complainant).
Accordingly, the Panel finds that the first element under paragraph 4(a)(i) of the Policy has been established
B. Rights or Legitimate Interests
Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, the consensus view is that, once the complainant has made a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy (See e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Dow Jones & Company, Inc., (First Complainant) and Dow Jones LP (Second Complainant) v. The Hephzibah Intro-Net Project Limited (Respondent), WIPO Case No. D2000-0704 and the WIPO Overview 3.0, section 2.1).
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.
Indeed, based on the evidence submitted by the Complainant, the Panel finds that there is no evidence that the Respondent (i) has made a legitimate noncommercial use of the Domain Name, (ii) has used the Domain Name in relation with a bona fide offering of goods and services or (iii) has been authorised by the Complainant to use the TYPERACER trademark.
Given that the Respondent did not reply to the Complainant’s contentions and did not present any plausible explanation for its use of the Complainant’s mark, the Panel considers that the Complainant has satisfied its burden of proof under this element of the Policy.
Accordingly, the Panel finds that the second element under paragraph 4(a) (ii) of the Policy has been established.
C. Registered and Used in Bad Faith
The Panel turns to the question of whether the Domain Name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy describes some circumstances which, if found to exist, will be evidence of the registration and use of the domain name in bad faith. They are presented in the alternative and consist of a not exhaustive list of indicia of bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s web site or location or of a product or service on the respondent’s web site or location.
The TYPERACER trademark is formed by the combination of two descriptive words “type” and “racer”. However, in practice, those two words are generally not used in combination. Moreover, the use made by the Complainant and its predecessor of the TYPERACER trademark in relation to the TypeRacer game and the publicity from which such game has benefitted have resulted in the TYPERACER trademark acquiring additional distinctive character. In this context, the Panel finds that is not likely that the Respondent did not know about the Complainant’s rights in the TYPERACER trademark at the time of registering the Domain Name. This finding is reinforced by the fact that the Domain Name (<playtyperacer.com>) is almost identical to the Complainant’s domain name directing Internet users to its TypeRacer game (<play.typeracer.com>).
The Complainant contends that the Respondent is using the Domain Name to lure Internet users to a web site “forc(ing) users to install potentially dangerous browser extensions”. However, the Complainant fails to prove that the browser extensions in question are dangerous. In this context, this Panel will not infer any consequences from the potentially dangerous nature of the browser extension.
However, the Panel finds that the Domain Name bears no relationship whatsoever to the Respondent’s name or business and in fact has no other meaning except for being a link to the name and the trademark of the Complainant. In this regard, previous UDRP panels have found that where a domain name is so obviously connected with a complainant, its very use by someone with no connection with said complainant suggests opportunistic bad faith (See e.g. Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 and Legacy Health System v. Nijat Hassanov, WIPO Case No. D2008-1708).
Moreover, the Respondent has already been a respondent in numerous UDRP procedures that have led to the transfer of the litigious domain name (See e.g., Scandic Hotels AB v. Contact Privacy Inc. Customer 0145113232 / ICS INC., WIPO Case No. D2017-2040; Amegy Bank National Association v. ICS INC. / Contact Privacy Inc., WIPO Case No. D2012-0248 and West Interactive Services Corporation v. ICS Inc., WIPO Case No. D2016-2480). This behaviour amounts, in the Panel’s opinion, to a pattern of abusive conduct of preventing a trademark holder from reflecting its mark in a domain name, a behavior that is indicative of bad faith under article 4(b)(ii) of the Policy (See e.g., Verizon Trademark Services LLC v. Osman Khan, NutriGold Inc, WIPO Case No. D2015-1651; Home Interiors & Gifts, Inc. v. Home Interiors, WIPO Case No. D2000-0010 and Wikimedia Foundation Inc. v. Kevo Ouz a/k/a Online Marketing Realty, WIPO Case No. D2009-0798).
Additionally, the Panel finds that the use by the Respondent of a proxy service is an indication of the Respondent’s bad faith. Although there are recognized legitimate uses of privacy and proxy registration services (See WIPO Overview 3.0, section 3.6), the Panel considers that in the present case, the circumstances are indicative of the Respondent’s bad faith. Indeed, it appears that the Respondent has engaged in a pattern of abusive conduct and that it is therefore not the first time that it prevents a trademark holder from reflecting its mark in a domain name. In this context, one can assume that the Respondent employs the proxy service to avoid the disclosure of its name (See Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696).
The Complainant contends that the Respondent is earning money from pay-per-click advertisement links displayed on one of the websites to which the Domain Name redirects. However, as the above elements are already conclusive as to the bad faith requirement, the Panel will not further examine this element.
Consequently, the Panel finds that the Respondent has registered and is using the Domain Name 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 Domain Name <playtyperacer.com> be transferred to the Complainant.
Date: March 14, 2018