WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Certified Guaranty Company, LLC v. Super Privacy Service LTD c/o Dynadot / R Sabga

Case No. D2021-3314

1. The Parties

The Complainant is Certified Guaranty Company, LLC, United States of America (“United States”), represented by Patent GC, LLC, United States.

The Respondent is Super Privacy Service LTD c/o Dynadot, United States / R Sabga, Trinidad and Tobago, represented by Rozier & Hardt PLLC, United States.

2. The Domain Name and Registrar

The disputed domain name <cgcvideogames.com> is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2021. On October 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 8, 2021, 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 October 13, 2021 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 amendment to the Complaint on October 15, 2021.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 10, 2021. The Respondent requested an additional four days to file the Response pursuant to paragraph 5(b) of the Rules. The Response was filed with the Center on November 14, 2021. On November 18, 2021, the Complainant filed a supplemental filing with the Center.

The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on December 20, 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.

On December 29, 2021, the Panel issued Procedural Order No. 1, further described below. On January 5, 2022, the Respondent filed its response to Procedural Order No. 1 with the Center.

4. Factual Background

The Complainant is a Florida, United States, limited liability company. It provides grading and authentication services for various collectibles, for example, comic books, magazines and trading cards, and is expanding its services to video games. The Complainant states that it has been in operation since 1999.

The Complainant is the owner of a variety of registered trademarks for the mark CGC, the earliest of which appears to be United States Registered Trademark No. 4216880 for the word mark CGC, registered on October 2, 2012 in Class 42 (grading services for magazines and comic books). The Complainant also owns United States Registered Trademark No. 5251288 for the design and word mark CGC (featuring an image of a set of scales before those letters), registered on July 25, 2017 in Class 16 (holders and cases for various items), Class 35 (maintaining a registry of comic books), and Class 42 (grading, authentication, and encapsulation services for collectibles, namely, comic books, magazines, lobby cards, posters, handbills, postcards, and photographs). On February 2, 2021, three days before the disputed domain name was registered, the Complainant filed a trademark application with the United States Patent and Trademark Office (“USPTO”) under United States Application Serial No. 90505517 to register the mark CGC VIDEO GAMES. Said application has passed an examination for conflicting marks by the USPTO’s examining attorney but is pending a revisal of use classes/goods and services and the provision of a disclaimer in respect of the words “VIDEO GAMES”. Accordingly, it has not yet proceeded to grant in the United States. The Complainant also filed a corresponding application for an international trademark for said CGC VIDEO GAMES mark (International Trademark Registration No. 1621703), which was registered on September 9, 2021 in Class 28 (protective holders for video games), Class 40 (treatment of video games for preservation, namely, video game encapsulation services in the nature of sealing video games in protective cases or holders), and Class 42 (grading and authentication services for video games). Said mark has been designated in respect of five territories or countries, including China, the European Union and Japan.¹

The disputed domain name was registered on February 5, 2021. According to the Registrar’s verification, the Respondent Mr. Sabga obtained the disputed domain name on July 19, 2021 through a push order. The Registrar also noted in said verification that it appeared that the Respondent was not the owner of the disputed domain name prior to that date. The Respondent itself has advised that it acquired the disputed domain name via an aftermarket website on July 16, 2021. The Complainant’s screenshot of the website associated with the disputed domain name, captured on September 26, 2021, points to a domain name aftermarket website which states that the disputed domain name “is already sold”.

In January 2020, the Respondent was approached by an office bearer of a company which is part of the Complainant’s family of companies to discuss the potential acquisition of Wata Inc., a video game grading service of which the Respondent was interim CEO. The discussions did not proceed further at that stage but said office bearer renewed them in January 2021. On January 11, 2021 and January 18, 2021, the Respondent wrote emails to said office bearer in which the Respondent indicated that the “key players” were interested in discussing said potential acquisition and proposed a date for a meeting to discuss. The Respondent and said office bearer met on January 26, 2021 at the latter’s office in Florida, United States. The Respondent resigned from his position with Wata Inc. on June 30, 2021, after said company was acquired by a third party.

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

Identical or confusingly similar

The disputed domain name is confusingly similar to the Complainant’s CGC mark, which is recognizable in the disputed domain name and is the dominant part thereof. The addition of the generic term “video games” is not sufficient to prevent confusion. The disputed domain name is also identical to the Complainant’s CGC VIDEO GAMES mark. The disputed domain name will be seen by Internet users as referring to the Complainant and the Complainant’s grading and authentication services as applied to video games.

Rights and legitimate interests

The Complainant has not authorized the Respondent to use its CGC or CGC VIDEO GAMES marks. The Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name is parked at “www.dan.com”, a site that advertises its sole function as “fast and easy domain transfers”. The Respondent is not commonly known by the disputed domain name. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The Respondent’s identical use of the Complainant’s CGC VIDEO GAMES mark, which the Respondent registered just three days after the Complainant filed a trademark application for the mark, serves no other purpose than to impersonate the Complainant.

Registered and used in bad faith

The timing and circumstances of the disputed domain name’s registration serves as evidence of bad faith. The Respondent chose to park the disputed domain name at “www.dan.com”. In response to a demand letter from the Complainant, a representative of “www.dan.com” confirmed that its sole function is as a domain marketplace which facilitates the sale of domain names. Registering the disputed domain name three days after the Complainant filed its trademark application and immediately parking the disputed domain name on a domain name marketplace is strong evidence of the Respondent’s bad faith attempt to quickly seize and lock up the Complainant’s mark either for sale to the Complainant or to block the Complainant’s ability to use its mark in connection with the launch of its new grading and authentication services for video games. The Respondent registered the disputed domain name anonymously. Panels have found that the use of a privacy shield upon the initial registration of domain names is evidence of bad faith.

On August 20, 2021, the Complainant sent the Respondent a demand letter, in which it identified its prior trademark rights, using the email address designated in the disputed domain name’s record. The Respondent did not reply to that letter and such failure is additional evidence of bad faith.

Prior to registering the disputed domain name, the Respondent had actual or constructive notice of the Complainant’s trademark rights via the Complainant’s several trademark registrations in various jurisdictions. The mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. Evidence supporting this conclusion includes the lack of a respondent’s own rights to or legitimate interests in a domain name and absence of any conceivable good faith use. The Respondent has registered the Complainant’s well-known CGC mark incorporating descriptive terms and identically copying the Complainant’s CGC VIDEO GAMES mark.

The Respondent revealed by Registrar verification is the President of Canyon Drive Technologies, located in Denver Colorado, United States. However, the Respondent provided an address in Trinidad and Tobago when registering the disputed domain name. The latter address is either fake or is provided in an attempt to obfuscate the Respondent’s location, which is further evidence of bad faith.

The Respondent is identified in his “LinkedIn” profile as Board Chairman and Interim CEO of Wata Games, which he describes as “the world’s preeminent grader and authenticator of collectible video games”. The Respondent is therefore a competitor of the Complainant in the field of grading and authenticating video games who has registered the disputed domain name to prohibit the Complainant from using its trademark as a domain name. This goes to the Respondent’s lack of legitimate interest and bad faith.

B. Respondent

The Respondent contends as follows:

The Complaint should be denied as the Complainant fails to establish a prima facie case.

Identical or confusingly similar

It does not appear to own any unregistered or registered rights to the mark CGC VIDEO GAMES. The Complainant only has a pending trademark application for the name and no evidence of use has been provided.

The Complainant’s reliance on its CGC mark is insufficient to convey rights to the disputed domain name. The addition of extra terms is not to be disregarded in the analysis of similarity. The Complainant provides no analysis of why the additional words do not sufficiently distinguish the disputed domain name from the mark CGC. There are at least 90 United States registered trademarks consisting of or only using CGC. Only a few of these belong to the Complainant. There can be little doubt that hundreds of companies have unregistered or registered rights in marks featuring CGC. The Complainant makes no attempt to explain why the Complainant as opposed to others with rights to certain uses of the mark CGC should unilaterally be given rights to the mark CGC VIDEO GAMES. Given the large number of other CGC marks, there is little chance that the disputed domain name would suggest affiliation with the Complainant specifically. The Respondent is not currently providing content using the disputed domain name, further decreasing any chance of confusion.

Rights and legitimate interests

The Complainant has failed to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. There is no evidence that the Respondent is using or intends to use the disputed domain name in a manner that would suggest affiliation with the Complainant, that the Respondent has any pattern of registering domain names corresponding to the Complainant’s marks or any third party, or that there has been any actual customer confusion due to the disputed domain name.

Registered and used in bad faith

The Complainant’s allegations constitute an unwarranted smear campaign against the Respondent. The Respondent owns a home in Trinidad and Tobago used as the registered address for the disputed domain name. The Complainant does not compete with Wata Games and the Respondent no longer serves on that company’s board and focuses on other business ventures. The Respondent’s “LinkedIn” profile is outdated.

The Respondent does not conduct or plan to conduct business in the field of grading and authenticating video games. The Complainant provides no evidence to support such an assertion. The Complainant has acted in bad faith. It had the Respondent’s name and contact information for at least 30 days but did not reach out to the Respondent, instead choosing to proceed with a deficient Complaint in the hope that it would be too expensive for the Respondent to mount a formal defense.

C. Complainant’s supplemental filing

In its supplemental filing, accompanied by a sworn declaration by Steven Eichenbaum, the CEO of Certified Collectibles Group, LLC (“Certified Collectibles”), the Complainant contends as follows:

It has come to light since the filing of the Complaint that in January 2021, the Respondent discussed by email and in person the potential acquisition of Wata, Inc., the video game grading service for which the Respondent served as CEO and Chairman, with Steven Eichenbaum, the CEO of Certified Collectibles, being part of a family of affiliated companies that specialize in the grading and conservation of a variety of collectible items. The Complainant is a member of this family. The Respondent travelled to the headquarters of Certified Collectibles on January 26, 2021 to meet with Steven Eichenbaum and the two discussed the use of the CGC mark to brand an expansion into video game grading services.

The identity of the Respondent was hidden from the Complainant by a privacy service until October 13, 2021. The Complainant amended the Complaint to name the Respondent. The Complainant then conducted an internal investigation regarding the Respondent and discovered its discussions with Certified Collectibles. The evidence establishes that the Respondent registered the disputed domain name with specific knowledge and contemplation of the Complainant, its CGC trademark, and the Complainant’s entry into the video game grading market, underscoring the Respondent’s bad faith and lack of legitimate interest.

The date of capture of the website of Wata Games, identifying the Respondent as office bearer and featuring his biography was dated October 15, 2021.

D. Respondent’s comment on Complainant’s supplemental filing

In a sworn declaration, the Respondent states (summarized by the Panel):

In January 2020, the CEO of Certified Collectibles Mr. Eichenbaum approached the Respondent regarding Certified Collectibles’ interest in purchasing Wata, Inc., and on January 30, 2020, the Respondent and said CEO held a conversation on the matter. They could not agree on a price for the proposed acquisition.

In January 2021, the CEO of Certified Collectibles renewed discussions regarding Wata Inc., and the same individuals met again in Florida. There was no mention of rebranding Wata Inc. under the CGC name nor any type of name change, and the discussions centered around Wata Inc.’s encapsulation product and the possibility of moving operations to Florida in the event of a deal. The Respondent relayed said discussions to the primary founder and principal shareholder of Wata Inc., who was uncomfortable with certain proposed terms, so discussions did not move forward.

On June 30, 2021, the Respondent resigned from Wata Inc.’s board of directors and from the Respondent’s position as its interim CEO in consequence of Wata Inc.’s purchase by an unrelated entity. As a subsequent project, the Respondent considered starting a business selling video game collectibles. The Respondent owns a site at “www.cdtcollectibles.com” and wanted something different for video games. The Respondent noted that the disputed domain name was available (and had been listed for sale by a third party for many months) and considered it a good fit for the proposed business. The fact that the disputed domain name had been created and listed for sale for many months led the Respondent to believe that CGC did not plan to use it. Later, the Respondent learned that the Complainant had not been granted the trademark for CGC VIDEO GAMES. The Respondent thought that Mr. Eichenbaum may have changed his mind about video games entirely as all related communications had ceased many months before the Respondent acquired the disputed domain name.

The Respondent purchased the disputed domain name via the aftermarket website on July 16, 2021, over two weeks after the Respondent resigned from Wata Inc. The Respondent did not obscure its name or email address, and the disputed domain name was registered according to default settings. The Respondent did not list the disputed domain name for sale after purchase. The Respondent’s intention was to use the disputed domain name as part of a business buying and selling video games. Neither the Complainant nor Mr. Eichenbaum approached the Respondent regarding the disputed domain name until the Complaint was received. The disputed domain name was purchased in good faith.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Preliminary Matter - Complainant’s Supplemental Filing

The Complainant notes that the Panel has discretion to consider supplemental filings, citing section 4.6 of the WIPO Overview 3.0. That section states that such filings are generally discouraged, unless specifically requested by the panel, and that panels have repeatedly affirmed that the party submitting an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response (e.g., owing to some “exceptional” circumstance). In the present case, the Complainant’s supplemental filing describes a discovery that it made involving the Respondent which could only have come to light following the Registrar’s disclosure of the Respondent’s identity. The Complainant says that it amended the Complaint within the five days allowed by the Center but also initiated an internal investigation regarding the Respondent, which caused it to learn of the Respondent’s prior discussions with the CEO of one of the companies within the Complainant’s affiliates.

The Panel reviewed the Complainant’s supplemental filing and was satisfied that it was relevant to the issues in dispute. The Panel accepts the Complainant’s position that its knowledge of the related prior dealings between the Respondent and the Complainant’s affiliate could only have come to light after the Complaint was filed and upon notification of the Respondent’s identity. In these circumstances, the Panel took the view that the supplemental filing should be admitted and considered as part of its deliberations. However, mindful of the Panel’s obligation under paragraph 10(b) of the Rules to ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case, the Panel determined that the Respondent should be provided with an opportunity to comment upon the Complainant’s supplemental filing. Accordingly, on December 29, 2021, the Panel issued Procedural Order No. 1 whereby the Respondent was invited to submit such comments to the Center by January 5, 2022 and the due date for the Panel’s submission of the Decision to the Center was extended to January 12, 2021.

B. Identical or Confusingly Similar

The inquiry under the first element of the Policy, which essentially functions as a standing requirement, is conducted in two steps. First, the Complainant must demonstrate that it has UDRP-relevant rights in a trademark. Secondly, any such mark is compared to the disputed domain name usually on a straightforward side-by-side basis, typically disregarding the generic Top-Level Domain (in this case, “.com”), in order to determine whether the trademark is recognizable in the disputed domain name.

Applying these steps in the present case, the Panel is satisfied that the Complainant has demonstrated that it has UDRP-relevant rights in its CGC registered trademark. The Respondent does not dispute the existence of the Complainant’s rights in that respect, although it points out that the Complainant’s United States trademark application for the CGC VIDEO GAMES mark has not yet proceeded to grant. While such latter mark is still under application in the United States, the Complainant has rights in the CGC trademark, which is sufficient for the standing requirement test under the first element of the Policy.

Returning to the comparison exercise under the first element assessment, the Panel notes that the Complainant’s CGC mark is the principal component of the disputed domain name, and is merely accompanied by two words, namely “video” and “games”. The CGC mark is clearly recognizable within the disputed domain name. These observations are sufficient for the Panel to find identity or confusing similarity within the meaning of the Policy and in terms of Policy jurisprudence. For example, section 1.7 of the WIPO Overview 3.0, states inter alia that while each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.

The Respondent’s suggestion that the Complainant has failed to provide an analysis as to why the words “video” and “games” in the disputed domain name do not sufficiently distinguish the disputed domain name from its trademark seems to the Panel to miss the point of the comparison exercise. It is for the Panel to make the comparison based upon the mark or marks and the domain name concerned, and to assess confusing similarity on the basis of such comparison, while taking account of any relevant submissions of the Parties. The Complainant makes reference to section 1.8 of the WIPO Overview 3.0, which states that the presence of additional words in the disputed domain name besides the trademark concerned (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity. As far as the Panel is concerned, that section accurately describes the consensus position of panels faced with a mark accompanied by other terms in the domain name concerned, which is the case here. Any such additional terms would not prevent a finding of confusing similarity under the first element, although, as section 1.8 goes on to note, the nature of such words may bear on the assessment of the second and third elements.

In all of these circumstances, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you 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 (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 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 consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. In the present case, the Panel finds that the Complainant has established the requisite prima facie case based on its submissions that the Complainant has not authorized the Respondent to use its CGC mark, that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services, that the Respondent is not commonly known by the disputed domain name, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The Complainant also sets out in its supplemental filing its assertion that the Complainant’s affiliate, Certified Collectibles, and the Respondent had conducted prior discussions in January 2021 about the Complainant moving into the business of video game grading, in terms of which the Complainant asserts that the Respondent knew of the Complainant’s intention to brand such business under the CGC VIDEO GAMES mark. The Complainant says that the Respondent acquired the disputed domain name against this particular background.

When reviewing the Complainant’s prima facie case on this topic, the Panel notes for completeness that the Complaint pointed out that the disputed domain name was registered only three days after the Complainant filed its trademark application for the mark CGC VIDEO GAMES. However, it has since been confirmed by the Registrar and is also submitted by the Respondent that the Respondent was not the original registrant of the disputed domain name. The Respondent says that it acquired the disputed domain name on July 16, 2021 from the aftermarket website on which it had been listed for sale. Absent any prior relationship between the original registrant of the disputed domain name and the Respondent (which the Respondent denies and on which the Complainant is silent) the proximity of the date of registration of the disputed domain name to the Complainant’s trademark application is not of the same significance to the question of rights or legitimate interests in this particular case as it would have been had the Respondent registered the disputed domain name on its creation date.

The Complainant having established the requisite prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to bring forward evidence of any rights or legitimate interests which it might have in the disputed domain name. In the Respondent’s original case on rights or legitimate interests, its principal assertions were that the Complainant had failed to establish the corresponding prima facie case, that there were a large number of third party CGC trademarks in existence, and there was no evidence that the Respondent intended to use the disputed domain name in a manner that would suggest affiliation with the Complainant. This is the type of submission which the Panel would have expected from a respondent which had not had any prior dealings with a complainant’s affiliate of the sort which have subsequently been established by the Parties’ supplemental filings. At the time when it filed the Response, the full history of the Respondent’s prior discussions with the Complainant’s affiliate was in the Respondent’s knowledge, yet it chose to keep this from the Panel. This lack of candor on the Respondent’s part causes the Panel some concerns regarding the credibility of the remainder of the Respondent’s submissions.

The essence of the Respondent’s case on this topic is that the Respondent purchased the disputed domain name in order to use it in connection with a bona fide offering of goods and services, namely a business selling video game collectibles. However, the disputed domain name has not been used in this way and the Respondent produces nothing by way of demonstrable preparations to use the disputed domain name for such a purpose. In any event, even if it had done so, the Panel doubts that this would constitute a bona fide offering of goods and services within the meaning of the Policy when set against the background of the Respondent’s prior discussions with the Complainant’s affiliate.

There remains a dispute between the Parties as to whether the Respondent was told expressly in the prior discussions that the Complainant or its affiliate were going to brand the new arm of its business under the CGC VIDEO GAMES mark (whether as part of the acquisition of Wata Inc. or not). Nevertheless, it is clear from the wording of the Respondent’s declaration in response to Procedural Order No. 1 that the Respondent was fully aware of the Complainant’s CGC brand when it acquired the disputed domain name and likewise that it knew of the Complainant’s intentions from its discussions with the Complainant’s affiliate on January 26, 2021. Those discussions concluded less than six months before the Respondent acquired the disputed domain name.

The Respondent says that it decided that the existence of the disputed domain name for what amounts to a period of less than six months caused the Respondent to believe that the Complainant had abandoned its plans, leaving the way clear for the Respondent to acquire the disputed domain name for its proposed video game collectible business. In the Panel’s opinion, the very short period of time involved makes this an unlikely assumption for a person in the Respondent’s position to have made. More importantly, despite the prior contact between the Parties, there is no evidence that the Respondent took any steps to ascertain whether its alleged assumption was correct. It merely purchased the disputed domain name and did nothing further with it.

Against the factual background of this case, the Panel concludes that the Respondent’s alleged intended use of the disputed domain name could not have constituted a bona fide offering of goods or services within the meaning of the Policy. The Panel has asked itself in particular why the Respondent would select the letters “CGC” for such a business, if not as a reference to the Complainant or its group of affiliates, of which it was clearly aware from the prior discussions. It is noteworthy that nowhere in the Response or the Respondent’s answer to Procedural Order No. 1 does the Respondent endeavor to address this issue.

To suggest that the Respondent’s acquisition of the disputed domain name was wholly independent of its prior discussions with the Complainant’s affiliate, discussions which were initially concealed from the Panel by the Respondent until the Complainant’s investigations and supplemental filing brought them to light, stretches credulity to breaking point. In the Panel’s opinion, the Respondent cannot therefore avail itself of paragraph 4(c)(i) of the Policy on the facts of the present case, nor are paragraphs 4(c)(ii) or 4(c)(iii) applicable. The Panel cannot identify any other rights or legitimate interests which the Respondent might be regarded as possessing in the disputed domain name.

In all of these circumstances, the Panel finds that the Complainant has carried its burden with respect to paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

The question for the Panel on this topic is relatively narrow in the present case. If the Respondent acquired the disputed domain name for an unrelated business, without any knowledge of the Complainant’s rights in the CGC mark and with no intent to target these, as the Response originally suggested, then the disputed domain name may not have been registered in bad faith. However, it has subsequently come to light that the Respondent was fully aware of the Complainant’s intentions to move into the business of video game grading via its discussions with the Complainant’s affiliate, which discussions concluded less than six months before the Respondent acquired the disputed domain name. The Respondent was also aware of the Complainant’s CGC brand. The Parties are in dispute as to whether the Respondent was expressly told in the prior discussions that the Complainant proposed to use the mark CGC VIDEO GAMES, but that in itself does not determine whether or not the disputed domain name was registered and used in bad faith.

The wording of the Respondent’s declaration makes it clear to the Panel that the Respondent knew the Complainant as “CGC” when it acquired the disputed domain name. In these circumstances, it must have been aware of the CGC brand and trademark. This is not entirely surprising given the prior discussions between Mr. Eichenbaum of Certified Collectibles and the Respondent in January 2021. The Respondent’s declaration states: “The fact that [the disputed domain name] had been created and available for sale for many months led me to believe that CGC was not planning on using it.” The Respondent also states “Further, at the time I purchased [the disputed domain name], all communications between Mr. Eichenbaum and me regarding the possibility of acquiring Wata had ceased many months earlier. I thought maybe they were changing their mind about video games entirely. This is supported by the fact that the [disputed] domain [name] had been available for sale for many months, and CGC chose not to purchase it”. Both of these statements refer to the Complainant as “CGC”. The Respondent’s repeated reference to “many months” in fact indicates at most around five and a half months, specifically the period between February 5, 2021 and July 16, 2021.

The Respondent’s above statements, in a sworn declaration, relate specifically to what was in its contemplation at the time when it purchased the disputed domain name. It is clear that the Respondent had knowledge of the Complainant and indeed was thinking precisely of the Complainant, as “CGC”, when it purchased the disputed domain name. The only remaining question is whether the Respondent intended to target the Complainant or had reached the conclusion that the Complainant had abandoned its business plans. In the circumstances of the present case, the Panel sees the former possibility as more probable. The Respondent knew of the Complainant’s business plans. It had had related discussions with the Complainant’s affiliate less than six months before acquiring the disputed domain name. Furthermore, the suggestion that the Respondent inferred that the Complainant had abandoned its plans by virtue of having found the disputed domain name being offered for sale, when it was created some five months previously, does not stand up to any reasonable scrutiny.

The reference in the Respondent’s submissions to the length of time that the disputed domain name had been registered means that the Respondent must have investigated the date of creation of the disputed domain name. On the Respondent’s account, it then formed a conclusion allegedly based on the fact that the Complainant had not bought the disputed domain name itself despite it having been available for sale over a period of five and half months. However, being aware of the date of creation, the Respondent must also have been aware of the close proximity of the disputed domain name’s registration to its own discussions with the Complainant’s affiliate which concluded at the end of January 2021. Being not much more than a week apart, the closeness of these events suggests just as much, if not more so, that someone might have been targeting the Complainant by registering the disputed domain name, rather than that the Complainant had necessarily abandoned its plans.

Yet instead of reaching out to the Complainant or its affiliate if it was genuinely in any doubt, the Respondent allegedly concluded “maybe they were changing their mind about video games entirely,” then registered the disputed domain name and did nothing further beyond passively holding it. Later, when the Complaint was filed, the Respondent decided to remain silent regarding the fact that it had been aware of the Complainant’s CGC brand and mark when it registered the disputed domain name and had even conducted prior discussions with the Complainant’s affiliate about the Complainant’s business plans. The Respondent also remained silent as to why it was keen to brand its alleged new business of video collectibles with what it already knew to be the Complainant’s CGC brand and mark rather than simply to select a different name which would not conflict in any way with the Complainant or its rights. These silences do not strike the Panel as consistent with the Respondent’s submission that it is a registrant in good faith.

In all of these circumstances, the Panel finds that the Complainant has carried its burden with regard to paragraph 4(a)(iii) of the Policy.

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 disputed domain name <cgcvideogames.com> be transferred to the Complainant.

Andrew D. S. Lothian
Sole Panelist
Date: January 12, 2022

¹ The Complainant did not specifically mention its international trademark registration in the Complaint or Amended Complaint but the fact that it had made a corresponding application for an international mark in association with its United States trademark application was noted by the Panel in the entry for said United States trademark application in the Complainant’s Annex no. 5. When checking the current status of the Complainant’s said United States trademark application, the Panel also checked the status of said international application via the WIPO Global Brand Database. The Panel checked the relevant public records by way of conducting limited factual research into matters of public record (on this topic, see section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).