WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Zynga Inc. v. Graytech Hosting Pty Ltd, Annette Nazarova
Case No. DAU2016-0042
1. The Parties
The Complainant is Zynga Inc. of San Francisco, California, United States of America (“United States”), represented by Kilpatrick Townsend & Stockton LLP, United States.
The Respondent is Graytech Hosting Pty Ltd, Annette Nazarova of Drancy, France.
2. The Domain Name and Registrar
The disputed domain name <zynga.com.au> is registered with TPP Wholesale Pty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2016. On October 27, 2016, the Center transmitted by email to TPP Wholesale Pty Ltd (the “Registrar”) a request for registrar verification in connection with the disputed domain name. On October 31, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details.
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 1, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was November 21, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2016.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on December 1, 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 a leading developer of popular social game services including, amongst other things, online card games, online word games, online board games, and online puzzle games. According to the Complaint, more than 1 billion people worldwide have played its games. It says that by 2010, its online games had 129 million active gamers each month and it continues to serve over 100 million active gamers each month since then. In 2015, it generated annual revenue of over USD 765 million.
It has provided evidence of registered trade marks in Australia and the United States for ZYNGA including: Australian registered Trade Mark No. 1370738 for ZYNGA for a wide range of goods in international classes 9, 25, 41 and 45, including, amongst other things, computer game software, entertainment services namely providing computer games and social networking services. Trade Mark No. 1370738 is registered from May 27, 2010.
The disputed domain name was registered on August 5, 2015.
Initially and for some time thereafter the disputed domain name resolved to a parking page which simply stated “Buy this domain. The domain zynga.com.au may be for sale by its owner!” At some point more recent, additional content has been added which the Complainant contends attempts to download malware to the Internet user’s computer. Otherwise, the offer to “buy this domain” is still prominently displayed on the landing page.
No other details are known about the Respondent, who has not filed a response.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a name, trade mark 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 or subsequently used in bad faith.
No response has been filed. The Complaint has been served, however, on the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Complaint has been properly served on the Respondent.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s name, trade mark or service mark.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a name, trade mark or service mark and, if so, the disputed domain name must be identical or confusingly similar to the name, trade mark or service mark.
The Complainant has proven that it owns the registered trade marks for ZYNGA referred to in section 4 above.
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s trade marks: see for example, GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd, WIPO Case No. DAU2002-0001. This is different to the question under trade mark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Disregarding the second domain component “.com.au” as a functional component of the domain name naming system, the disputed domain name is therefore identical to the Complainant’s trade marks: Technosystems Consolidated Corporation, Invention Submission Corporation t/a Invent Help v. Hugh Godman, Royal Computer Proprietary Ltd., WIPO Case No. DAU2007-0001.
Therefore, the Complainant has established the first requirement under the Policy.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances may be situations in which a respondent has rights or legitimate interests in a disputed domain name:
(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 trade mark 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 trade mark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Previous panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd, supra.
The Complainant states that it has not authorised the Respondent to register or use the disputed domain name or the Complainant’s trade marks. Nor is the Respondent in any way associated with the Complainant. The disputed domain name is plainly not derived from the name of the Respondent. The Complainant also relies on the fact that the disputed domain name resolves to a parking page at which the disputed domain name is offered for sale and, further, it alleges that the webpage attempts to download malware to the Internet user’s computer to demonstrate that the Respondent is not making a good faith offer of goods and services.
According to the auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDRP Overview 1.0”) at paragraph 2.6, decisions under the Policy have taken a more strict view of parking pages than applies under the Uniform Domain Name Dispute Resolution Policy (“UDRP”). According to the auDRP Overview 1.0, use of a domain name to resolve to a parking page is generally not considered a good faith offering of goods and services (emphasis supplied).
However that may be, here, the evidence shows that the disputed domain name has resolved at all times to a parking page at which there is an open invitation to make an offer to buy the disputed domain name. That is, the Respondent has been making an unsolicited offer to sell the disputed domain name. That does not qualify as noncommercial or fair use under paragraph 4(c)(iii) of the Policy.
As the Complainant points out, its trade mark is an invented term. It does not have plain meaning or significance in ordinary usage. Its only significance is as the trade mark identifying the Complainant’s goods and services. Many decisions under both the Policy and the UDRP have long recognised that registering and offering for sale a domain name which has significance only as someone else’s trade mark does not constitute a good faith offering of goods and services.
If, as the Complainant alleges, the website to which the disputed domain name resolves does in fact attempt to download malware to the Internet user’s computer, that would be an additional and powerful basis for finding that the Respondent is not making a good faith offering of goods and services.
Accordingly, the Complainant has established a strong prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent has not attempted to rebut that case.
The Complainant has therefore established the second requirement under the Policy.
C. Registered or Subsequently Used in Bad Faith
In contrast to the UDRP, the Complainant must establish only that the disputed domain name has been either registered or subsequently used in bad faith by the Respondent under the third requirement of the Policy.
Generally, this requires demonstration that the Respondent has registered or used the disputed domain name to take advantage of its significance as someone else’s trade mark.
As noted in section 5.B., above, the Complainant’s trade mark is not a plain word in common usage, but is an invented term which has significance only through its adoption and use as the Complainant’s trade mark.
Having regard to this, and bearing in mind that the Complainant’s trade mark has been registered for at least 5 years before the disputed domain name was registered and the scale of the extensive use of the Complainant’s trade mark around the world for many years, the inference is plainly open that the disputed domain name was registered in bad faith. Moreover, its resolution to a parking page at which the disputed domain name is unilaterally offered for sale, even without taking into account the Complainant’s allegations about malware distribution, is also use in bad faith. See paragraph 4(b)(i) of the Policy and paragraph 3.1A of the auDRP Overview 1.0.
Therefore, the Panel finds that the Complainant has established the third requirement under the Policy as well.
For all 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 <zynga.com.au> be transferred to the Complainant.
Warwick A. Rothnie
Date: December 14, 2016