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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Johan Peitz Holding AB v. Domain Admin, Whois protection, this company does not own this domain name / Hulmiho Ukolen, Poste restante

Case No. D2021-2135

1. The Parties

Complainant is Johan Peitz Holding AB, Sweden, represented by Valea AB, Sweden.

Respondent is Domain Admin, Whois protection, this company does not own this domain name, Czech Republic / Hulmiho Ukolen, Poste restante, Finland.

2. The Domain Name and Registrar

The disputed domain name <icytower.com> (the “Domain Name”) is registered with Gransy, s.r.o. d/b/a subreg.cz (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 5, 2021. On July 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 7, 2021, 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 July 8, 2021 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 July 10, 2021.

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 July 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 4, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 5, 2021.

The Center appointed Robert A. Badgley as the sole panelist in this matter on August 11, 2021. 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 is the co-designer of the video game Icy Tower, which was launched in 2001. The game’s Facebook page has 2.5 million followers. Complainant holds trademark rights in ICY TOWER through various registrations in several jurisdictions, including International trademark ICY TOWER (Reg. No. 1024326, registered November 25, 2009) designated in the European Union, Japan, Republic of Korea, Russian Federation, and United States of America.

The Domain Name was registered on May 18, 2018. It currently resolves to a blocked website, but as of June 29, 2021, it resolved to a landing page containing various hyperlinks, including “Icy Tower Download,” as well as links involving video games unrelated to Complainant, such as “Action Game Online” and “Computer Games.”

Complainant has noted that Respondent has been involved in scores of prior cases under the UDRP in which Respondent was held to be a cybersquatter.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied each of the three elements required under the Policy for a transfer of the Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements, which Complainant must satisfy with respect to the Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests 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 Panel concludes that Complainant has rights in the trademark ICY TOWER through registration and use demonstrated in the record. The Panel also concludes that the Domain Name is identical to that mark.

Complainant has established Policy paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your 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; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent has not come forward in this proceeding to articulate, much less demonstrate, his bona fides vis-à-vis the Domain Name. According to Complainant, it has not authorized Respondent to use its ICY TOWER as a trademark in a Domain Name or otherwise.

The three non-exclusive “safe harbors” quoted above do not appear present here. Respondent does not assert or demonstrate any efforts to use the Domain Name in connection with a bona fide offering of goods or services. There is no basis to conclude that Respondent is commonly known by the Domain Name. Respondent has not claimed that he is seeking to make a noncommercial or fair use of the Domain Name, and the Panel cannot perceive any such effort from the record here.

Complainant has established Policy paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii) that 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 Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online 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.

The Panel concludes that Respondent has registered and used the Domain Name in bad faith. The Panel finds it more likely than not that Respondent had Complainant’s registered trademark ICY TOWER in mind when registering the Domain Name. The hyperlinks at Respondent’s website (at least as of June 29, 2021) included links referring to the ICY TOWER mark, and also links referring to computer video games in general.

With respect to bad faith use, the Panel concludes that Respondent is a serial cybersquatter, having been so branded in dozens of prior cases under the UDRP. Respondent is therefore in bad faith within the meaning of the above-quoted Policy paragraph 4(b)(ii).

Complainant has established Policy paragraph 4(a)(iii).

7. Decision

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 <icytower.com> be transferred to Complainant.

Robert A. Badgley
Sole Panelist
Date: August 19, 2021

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