WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Web Entertainment, LLC v. WhoIsguard Protected, Inc./Tom Howe

Case No. D2014-0159

1. The Parties

The Complainant is Web Entertainment, LLC of Las Vegas, Nevada, United States of America, represented by Randazza Legal Group, United States of America.

The Respondent is WhoIsguard Protected, Inc. of Panama/Tom Howe of Harpenden, Hertfordshire, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <y8.net> (the “Domain Name”) is registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 3, 2014. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 4, 2014, 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 the Complainant on February 10, 2014 providing the registrant and contact information disclosed by the Registrar and invited the Complainant to amend the Complaint. The Complainant filed an amended Complaint on February 18, 2014.

The Center verified that the amended Complaint (hereafter, 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 19, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was March 11, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 12, 2014.

The Center appointed Nicholas Smith as the sole panelist in this matter on March 19, 2014. 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 paragraph 7 of the Rules.

4. Factual Background

The Complainant is the operator of a website located at “www.y8.com” (the “Complainant’s Website”). The Complainant’s Website provides online video games, virtual reality games, and other entertainment services to its users. The Complainant has operated the Complainant’s Website since 2006. The Complainant’s Website uses a grey, white and red colour scheme and, below and to the right of the website’s menus, features a number of squares, consisting of screenshots of the various games offered on the Complainant’s Website.

The Complainant is the owner of a word trade mark for Y8 with registration number 4,130,791 (the “Y8 Mark”), registered on April 24, 2012, covering “entertainment services, namely, providing online video games and virtual reality games, providing temporary use of non-downloadable electronic games and virtual reality games, providing a website featuring games and puzzles”.

The Domain Name <y8.net> was created on September 25, 1999 and, as evidenced in the annexes to the Complaint, transferred to the present Respondent at some point after May 2013. It currently resolves to an Internet site (the “Respondent’s Website”) which offers the provision of online video games, using a black, white and red colour scheme and, below and to the right of the website’s menus, features a number of squares, consisting of screenshots of the various games offered on the Respondent’s Website. It also contains a description of the Respondent’s Website that includes the phrase “As always, all our Y8 games are free to play as many times as you want! Play similar games to y8.com free.”

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

(i) that the Domain Name is identical or confusingly similar to the Complainant’s Y8 Mark;

(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

The Complainant is the owner of the Y8 Mark. It owns a trade mark for the Y8 Mark in the United States.

The Domain Name consists of the Y8 Mark in its entirety with the addition of .net, and is thus identical to Y8 Mark.

There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known by the Domain Name, nor does the Respondent have any authorization from the Complainant to register the Domain Name. The Respondent is using the Domain Name to provide online video game services closely related, if not identical, to the services offered by the Complainant on the Complainant’s Website and under the Y8 Mark. Such use does not grant the Respondent rights or legitimate interests in the Domain Name.

The Domain Name was registered and is being used in bad faith. The Respondent was aware of the Complainant’s Y8 Mark at the time he registered the Domain Name as the Y8 Mark as well as the Complainant’s Website predates the registration of the Domain Name by the Respondent. The Respondent is obtaining commercial gain by redirecting visitors to the Domain Name to the Respondent’s Website. The Respondent’s Website offers services that are either related to or directly compete with the services that the Complainant already offers under the Y8 mark, demonstrating that the Respondent both desires to disrupt the Complainant’s business and to divert web traffic away from the Complainant’s Website and has intentionally attempted to attract, for commercial gain, Internet users to its website or other, by creating a likelihood of confusion with the Y8 Mark. The Respondent’s conduct amounts to registration and use of the Domain Name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.

The Complainant is the owner of the Y8 Mark, having registrations for Y8 as a trade mark in the United States. As the “.net” generic Top Level Domain may be discarded in considering the identity or confusing similarity between a domain name and a mark, the Domain Name is identical to the Y8 Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a 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 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.” (Policy, paragraph 4(c)).

The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the Y8 Mark or a mark similar to the Y8 Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. The Respondent is using the Domain Name to operate a website that, without the permission of the Complainant, makes reference to the Complainant (by stating “Play similar games to y8.com free”) and appears to offer online gaming services in direct competition with the Complainant, from which the Respondent is likely to receive some revenue (as the Respondent’s Website contains prominent advertising. Such use is not a bona fide offering of goods or services.

The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

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 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 owners of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or

(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trade mark 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) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.” (Policy, paragraph 4(b)).

Although the Domain Name was first registered in 1998, the Panel finds that the relevant date, for the purposes of finding bad faith, was May 2012 or later, when the Respondent first acquired the Domain Name. Under the UDRP, a change of registrant or transfer of a domain name constitutes a new registration. See Dreamgirls, Inc. v. Dreamgirls Ent., WIPO Case No. D2006-0609; HSBC Finance Corp. v. Clear Blue Sky and Domain Manager, WIPO Case No. D2007-0062; Alpine Ent. Group, Inc. v. Walter Alvarez, WIPO Case No. D2007-1082. See also the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) at 3.7 which states that “The transfer of a domain name to a third party does amount to a new registration”.

The Panel finds that it is likely that the Respondent was aware of the Complainant and its reputation in the Y8 Mark at the time the Respondent registered the Domain Name. The Respondent’s Website offers services that directly compete with the Complainant and make reference to the Complainant. The registration of the Domain Name in awareness of the Y8 Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.

The Respondent was using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Y8 Mark as to the source, sponsorship, affiliation or endorsement of its website. The Respondent’s Website offers online gaming services that compete with the Complainant, makes references to the Complainant’s Website and is of a similar design to the Complainant’s Website. The Respondent’s Website also contains prominent advertising, suggesting that the Respondent receives revenue from the site. It appears both from the Domain Name itself and from the Respondent’s Website that it highly likely that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s Website by creating a likelihood of confusion with the Y8 Mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s Website. The Panel finds that such use amounts to use in bad faith.

Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under 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 Domain Name, <y8.net> be transferred to the Complainant.

Nicholas Smith
Sole Panelist
Date: March 24, 2014