WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Twitch Interactive, Inc. v. Whois privacy protection service, Internet Invest, Ltd. dba Imena.ua

Case No. DTV2015-0002

1. The Parties

The Complainant is Twitch Interactive, Inc. of San Francisco, California, United States of America, represented by Richard Law Group, United States of America.

The Respondent is Whois privacy protection service, Internet Invest, Ltd. dba Imena.ua of Kiev, Ukraine.

2. The Domain Names and Registrar

The Disputed Domain Names <twilch.tv> and <twiltch.tv> are registered with Key-Systems GmbH dba domaindiscount24.com (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 19, 2015. On February 19, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On February 20, 2015, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on March 4, 2015. An email was received from the Respondent on March 6, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 24, 2015. No official Response was received from the Respondent.

The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on April 14, 2015. 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.

The Panel finds that it was properly constituted and appointed in accordance with the Rules and the Supplemental Rules. The Panel shall issue its decision based on the Complaint, the Policy, the Rules and the Supplemental Rules.

4. Factual Background

The Complainant owns the domain name <twitch.tv> and operates Twitch, the world's leading live video platform and community for gamers at <twitch.tv>.

The Complainant officially launched its Twitch service in June 2011 at the Electronic Entertainment Videogame Trade Show and today more than 60 million visitors gather on Twitch every month to watch and talk about video games with more than 1.1 million broadcasters.

The website "www.twitch.tv" is the eighty-fifth most viewed website in the United States, the one-hundred and seventy-third most viewed website globally, and the number one most viewed website in the games category, according to the public statistics offered by Internet site ranking company Alexa Internet, Inc. Twitch is frequently mentioned in mainstream press and publications, such as the New York Times, Wall Street Journal, CNET, PC Magazine, etc. Thus, through longstanding use, promotion and substantial commercial success, the TWITCH and TWITCHTV marks have become well-known and famous.

The Complainant is the owner of the trademarks TWITCH and TWITCHTV (the "Trademarks") in numerous countries and jurisdictions, including, but not limited to, the United States Registrations Nos. 4230874, 4230878 and 4275948, which were obtained as early as January 2012.

The Disputed Domain Names <twilch.tv> and <twiltch.tv> were registered with the Registrar on December 1, 2014 and on January 5, 2015 respectively.

5. Parties' Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:

(i) The Disputed Domain Names are confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant asserts that the Disputed Domain Names are identical to the Complainant's registered TWITCHTV trademark except that <twiltch.tv> adds a letter "l" before the "t", <twilch.tv> substitutes an "l" for the "t", and both of the domains add a period before "TV" to make TV a country code Top-Level Domain names ("ccTLD").

Further, the Complainant asserts that substituting one letter, adding one letter or adding a period to the Complainant's well-known trademark does not distinguish the Disputed Domain Names.

In addition, the Complainant also argues that the Disputed Domain Names <twilch.tv> and <twiltch.tv> were chosen by the Respondent precisely because they are confusingly similar to and easily mistaken for the Complainant's Trademarks and domain name <twitch.tv>.

As such, the Complainant contends that Paragraph 4(a)(i) of the UDRP, requiring that the Disputed Domain Names be "identical or confusingly similar to a trademark or service mark in which the complainant has rights", is satisfied.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.

The Complainant asserts that the Respondent has not used the Disputed Domain Names in connection with a bona fide offering of goods or services; the Respondent is not making a noncommercial or fair use of the disputed domain names; and the Respondent has never been known as or referred to as "Twitch", "Twitchtv", or any variation thereof. As a result, the Respondent does not have a right or legitimate interest in the Disputed Domain Names, as legitimate interests are defined in paragraphs 4(c)(i)-(iii) of the UDRP.

The Complainant asserts that the Respondent is neither commonly known by the Complainant's TWITCH or TWITCHTV trademarks nor is it affiliated with the Complainant in any way nor has it been licensed by the Complainant to use the Complainant's TWITCH or TWITCHTV marks.

The Complainant also alleges that the Respondent is not an authorized vendor, supplier, or distributor of the Complainant's goods or services.

The Complainant further contends that the website resolved to by the Disputed Domain Names <twilch.tv> and <twiltch.tv> displays a fake version of the Complainant's home page, including the Complainant's Trademarks.

Finally, the Complainant argues that the Respondent's use of the Complainant's registered Trademarks and a fake version of the Complainant's website are calculated and likely to lead visitors to believe that the Respondent's site originates with or is endorsed by the Complainant. Thus, the Complainant asserts this constitutes passing off and is not a legitimate use.

Therefore, the Complainant contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

(iii) The Disputed Domain Names are registered and are being used in bad faith

The Complainant asserts that at the time that the Respondent registered the Disputed Domain Names, the Complainant's Twitch service already had tens of millions of users and was well-known, and the Respondent's landing pages display the Complainant's Twitch logos and purport to be the Complainant's genuine website. The Respondent registered the Disputed Domain Names with knowledge of the Complainant's rights and intended to attract Internet users who mistype the Complainant's URL. Thus, the Complainant alleges that the Respondent's registration and use of the Disputed Domain Names is in bad faith with regard to Paragraph 4(a)(iii) of the Policy.

The Complainant further alleges that the Respondent's incorporating the Complainant's famous trademark into the Disputed Domain Names, and using the Complainant's trademarks, logos and other distinctive content at the corresponding websites, which creates the false impression of sites that originate with or are sponsored by the Complainant, is conduct falling under paragraph 4(b)(iv) of the Policy, and thus, is evidence of the Respondent's bad faith in registration and use of the Disputed Domain Names.

Furthermore, the Complainant also asserts that the Respondent has engaged in the practice of typo-squatting by intentionally registering multiple domain names that are misspellings of the Complainant's TWITCH and TWITCHTV trademarks, with the intent to divert Internet users – presumably for commercial gain.

Consequently, the Complainant upholds that the Disputed Domain Names were registered and are being used by the Respondent in bad faith.

B. Respondent

On March 6, 2015, the Respondent sent an email which stated in Russian that it is in receipt of the Notification of Complaint and informed the Center that one of the two Disputed Domain Names <twilch.tv> was registered on behalf of a client, who has been made aware of the Complaint. Apart from this email communication, the Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

A. Procedural issues

(i) Jurisdictional Basis for the Administrative Proceeding

Considering the facts that Tuvalu has adopted the UDRP for its domain name dispute policy ("www.wipo.int/amc/en/domains/cctld") and the Disputed Domain Names comprise the Top-Level Domain ccTLD ".tv" for Tuvalu, the Panel finds that this dispute is properly within the jurisdiction of the Policy.

(ii) Language of the Proceeding

The Complaint was filed in the English language on February 19, 2015. On February 20, 2015, the Registrar informed that the language of the Registration Agreements for both Disputed Domain Names is Russian. As the Complaint was filed in English, the Center, in its notification dated February 24, 2015, invited the Complainant to submit either (i) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English, or (ii) a translation of the Complaint into Russian, or (iii) a supported request for English to be the language of the administrative proceeding. On February 24, 2015, the Complainant sent an email to the Center confirming that the request for English to be the language of the administrative proceeding was already included as Section 7 of the Complaint filed on February 19, 2015.

According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

Similar to previous UDRP decisions, the Panel finds that the spirit of paragraph 11(a) is to ensure fairness in the selection of language by giving full consideration to the parties' level of comfort with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors (see e.g., Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679).

In the present case, the Panel finds that the websites resolved to by the Disputed Domain Names are fully presented in English, and from this it can be inferred that the Respondent has an ability to understand and communicate in English. Further, in consideration of the lack of substantive replies from the Respondent to the Complaint, including to the request for English to be the language of the administrative proceeding stated therein, for the purpose of easy comprehension of the Complainant of the Panel's decision without any necessity of translations, and in the interest of fairness to both parties as well as the Panel's obligation under paragraph 10(c) of the Rules, which provides that "The Panel shall ensure that the administrative proceeding takes place with due expedition", the Panel hereby decides, under Paragraph 11(a) of the Rules, that the Panel accepts the Complainant's request for English to be the language of the administrative proceeding and shall render its decision in English.

(iii) The Respondent's Failure to Respond

The Respondent's failure to file a substantive response does not automatically result in a decision in favor of the Complainant (see e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413 and M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent's default.

In accordance with paragraph 4(a) of the Policy, in order to decide on the remedy sought by the Complainant, the Panel will examine whether each the following three elements are present:

(i) the Disputed Domain Names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and

(iii) the Disputed Domain Names have been registered and are being used in bad faith.

Consequently, the Panel shall further analyze the eventual concurrence of these three grounds in the present case.

B. Identical or Confusingly Similar

The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the Disputed Domain Name is identical or confusingly similar to its trademark.

First, the Panel finds that the Complainant has sufficiently evidenced that it has trademark rights in and to the TWITCH and TWITCHTV trademarks, which were registered before registration of the Disputed Domain Names. In addition, it is evidenced that the Complainant has a wide use of its Trademarks for its Twitch service, a live video platform and community for gamers.

Second, the Panel finds that the Disputed Domain Names differ from the Complainant's Trademarks by merely a substitution of the letter "t" by the letter "l" with regard to <twilch.tv>, or an addition of the letter "l" between the letters "i" and "t" with regard to <twiltch.tv>. This substitution or addition does not make the Disputed Domain Names distinguishable from the Complainant's Trademarks. In the Panel's view, "twilch" and "twiltch" are almost identical with/confusingly similar to the Complainant's Trademarks in terms of structure, presentation and pronunciation.

This is a typical case of a deliberate misspelling of a mark (so-called "typo-squatting"), by adding, deleting, substituting or reversing the order of letters in a mark, where numerous panels in the past have found similarity to be present, see, inter alia, Yurtici Kargo Servisi A.S. v. Yurticicargo Yurticikargo, WIPO Case No. D2003-0707; CareerBuilder, LLC v. Azra Khan, WIPO Case No. D2003-0493; The Sportsman's Guide, Inc. v. Vipercom, WIPO Case No. D2003-0145; Neuberger Berman Inc. v. Alfred Jacobsen, WIPO Case No. D2000-0323.

Further, the Panel finds, similarly to previous UDRP panel decisions, that the addition of a gTLD or ccTLD to the Disputed Domain Names does not adequately distinguish them from a registered mark (See e.g., World Wrestling Fed'n Entm't, Inc. v. Rapuano, WIPO Case No. DTV2001-0010). Therefore, in this present case, the addition of the ccTLD ".tv", which is an Internet address identifier for Tuvalu, does not constitute an element to avoid confusing similarity for purposes of the Policy. In fact, the use of the ccTLD ".tv" makes the Disputed Domain Names much closer to the Complainant's domain name <twitch.tv> in terms of presentation and structure.

Based on the foregoing findings, the Panel finds that the Disputed Domain Names are confusingly similar to the Complainant's Trademarks, and paragraph 4(a)(i) of the Policy is established.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent's rights or legitimate interests in the Disputed Domain Names for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:

"When you receive a complaint, you should refer to paragraph 5 of the Rules of Procedure in determining how your response should be prepared. 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 Panel finds that the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent did not refute the Complainant's contentions.

Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainant's asserted facts, that no license, permission or authorization of any kind to use the Complainant's trademarks has been granted to the Respondent. There is no evidence available that the Respondent holds any registered or unregistered trademark rights in any country in the world. Thus, the Panel finds that the Respondent has no rights in the trademarks TWITCH and TWITCHTV.

The Panel finds that before the date of notice to the Respondent of the dispute and as of the date of this decision, the Disputed Domain Names resolve to websites, which serve as live video platforms and communities for gamers, where the Complainant's Trademarks are prominently displayed. In the Panel's view, it may be possible to characterize this use as a "resale" of the Complainant's service.

In this regard, the Panel proceeds with the test in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (Oki Data) as follows:

Normally, a reseller or distributor can be making a bona fide offering of goods and services, and thus have rights or legitimate interests in the domain name if its use meets certain requirements, which are described in the Oki Data decision:

- the respondent must actually be offering the goods or services at issue;

- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);

- the site itself must accurately disclose the respondent's relationship with the trademark owner; and

- the respondent must not try to "corner the market" in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.

The Panel finds, similarly to other UDRP panels, that the Oki Data criteria are appropriate even when the respondent is not an authorized reseller (see, e.g., National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin' Connection, Inc., WIPO Case No. D2007-1524).

However, in this particular case, the Panel finds that the use of the Disputed Domain Names do not fulfill the Oki Data criteria.

The Respondent, via the websites resolved to by the Disputed Domain Names, provides a service of live video platforms and communities for gamers, which is similar to and directly competes against the Complainant's Twitch service. Further, the Panel finds on the websites under the Disputed Domain Names no disclosure as to the Respondent's relationship with the Complainant. On the other hand, the Panel finds that by displaying and using the Complainant's Trademarks on the websites under the Disputed Domain Names, without any evidence on consent or permission by the Complainant, the Respondent intended to mislead the consumer into believing that either the Respondent's sites originate with, or are endorsed by the Complainant, or that there is an association or relation otherwise between the Respondent and the Complainant, where in fact no such connection exists.

For these reasons, the Panel finds that the Respondent's use of the Disputed Domain Names cannot be considered a bona fide offering of goods or services under the Oki Data criteria.

Moreover, the Panel finds that the Disputed Domain Names are registered using the privacy service of Whois Privacy, and nowhere in the websites under the Disputed Domain Names does the Panel find any information about the websites' owners or operators. Hence, there is no evidence that would suggest that the Respondent, as an individual, business, or other organization, has been commonly known by the Disputed Domain Names.

The Panel further finds that no evidence has been presented that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Names. In fact, as it appears following the Complainant's assertions and evidence with regard to the Respondent's registration of the Disputed Domain Names and the appearance of the website resolved to by the Disputed Domain Names, the Respondent had full knowledge of the Complainant's Trademarks and had an intention to gain profit by riding on the good reputation of the Complainant.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names, and the second element under paragraph 4(a)(ii) of the Policy is established.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:

"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location".

Each of the four circumstances in paragraph 4(b) of the Policy, if found, is evidence of "registration and use of a domain name in bad faith".

The Panel finds that the Complainant has put forth sufficient evidence that the Respondent has registered and used the Disputed Domain Names in bad faith. The Respondent did not reply to the Complainant's contentions and, therefore, did not refute the Complainant's contentions.

Registration in bad faith

The Panel finds that the Complainant's Trademarks, which were registered in the United States in 2012 and 2013 respectively, and domain name <twitch.tv>, which was registered in 2009, well predate the registrations of the Disputed Domain Names. "Twitch" is, in the mind of a reasonable person, neither descriptive nor generic in respect of any products or services.

Further, the Panel finds that at the time that Respondent registered the Disputed Domain Names, the Complainant's Twitch service already had tens of millions of users and was well-known.

The Complainant also owns and operates the website under the domain name <twitch.tv>, to which the Disputed Domain Names are almost identical.

Moreover, in the Panel's views, the websites resolved to by the Disputed Domain Names are currently displaying the Complainant's Trademarks and purport to be the Complainant's genuine websites.

These facts show that the Respondent did not register the Disputed Domain Names in a fortuity. The Respondent knew or should have known of the Complainant and the Complainant's Trademarks and domain name <twitch.tv> before its registration of the Disputed Domain Names, and the Panel considers the registration an attempt by the Respondent as to take advantage of the Complainant's goodwill.

In addition, the Panel also finds that in this present case, the Respondent has registered the Disputed Domain Names incorporating the slightly modified TWITCH and TWITCHTV trademarks of the Complainant and the Disputed Domain Names direct to webpages providing similar services reproducing the Complainant's Trademarks. The Panel thus considers that the Respondent has sought to take advantage of Internet users' typing an incorrect address when seeking to access the Complainants' websites, a practice known as "typo-squatting" as mentioned in paragraph 6.B above, and condemned in a number of UDRP panel decisions. Hence, similarly to previous UDRP panels, the Panel finds that such typo-squatting of the Respondent constitutes bath faith registration of a domain name pursuant to the Policy (See, Longs Drug Stores Cal., Inc. v. Shep Dog, WIPO Case No. D2004-1069, Lexar Media, Inc. v. Huang, WIPO Case No. D2004-1039, Wal-Mart Stores, Inc. v. Longo, WIPO Case No. D2004-0816).

Use in bad faith

The Panel finds that, in addition to adoption of marks that are almost identical to the Complainant's Trademarks in the Disputed Domain Names, the Respondent also used the Complainant's Trademarks in the corresponding websites for providing services competing with those of the Complainant.

Therefore, the Panel finds that the Respondent intentionally used the Disputed Domain Names to mislead consumers into believing that the websites under the Disputed Domain Names are associated with, or connected to or endorsed or recommended by the Complainant. In absence of the Respondent's arguments to the contrary, the Panel infers that the Respondent's purpose in using the Disputed Domain Names is to capitalize on the reputation and goodwill of the Complainant's Trademarks, and thus generate unjustified revenues. Such behavior is indicative of bad faith within the meaning of paragraph 4(b)(iv) of the Policy, on the part of the Respondent.

Taking into account all of the above, the Panel finds that the Disputed Domain Names were registered and are being used by the Respondent in bad faith under paragraph 4(b)(iv) of the Policy, and the third element under paragraph 4(a)(iii) of the Policy is established.

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 Names, <twilch.tv> and <twiltch.tv> be transferred to the Complainant.

Pham Nghiem Xuan Bac
Sole Panelis
Date: April 24, 2015