The Complainant is Web Entertainment, LLC of Hong Kong, China, represented by Randazza Legal Group, United States of America (“US”).
The Respondent is Privacy Protection Service Inc. d/b/a PrivacyProtect/Anastasios Tsiligiannis of Queensland, Australia, and Attiki, Greece, represented by Brett Wakino, US.
The disputed domain name <y8.org> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2014. On April 16, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 16, 2014, 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 April 22, 2014 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 amended Complaint on April 24, 2014.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2014. The Response was filed with the Center on May 28, 2014.
The Center appointed Adam Taylor as the sole panelist in this matter on June 4, 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 the Rules, paragraph 7.
The Complainant filed an unsolicited supplemental filing on June 4, 2014. The Respondent filed an unsolicited supplemental filing on June 17, 2014.
The Complainant is incorporated in Hong Kong, China. Since 2006, it has offered online video games, virtual reality games and other entertainment services to its users via a website at “www.y8.com”.
The Complainant owns two US trade mark nos. 4,130,791 and 4,130,792 for Y8 and for the Y8/Y8.COM logo, respectively, each filed on April 11, 2011, in international class 41.
The Respondent acquired the disputed domain name on around October 17, 2010, and commenced using a privacy service by July 12, 2013.
The Respondent has used the disputed domain name for a website offering online video games.
The following is a summary of the Complainant’s contentions:
The Complainant possesses strong common law rights as well as registered rights.
According to Alexa.com, the Complainant’s site is within the 1,000 most popular websites in the world, being currently ranked at 616.
The disputed domain name is identical or confusingly similar to the Complainant’s trade marks.
Since at least April 28, 2011, the Respondent has used the disputed domain name for online video and virtual reality games services – exactly the same services which the Complainant has been offering for some five years.
The Respondent is incapable of using the disputed domain name for a legitimate purpose as a respondent cannot claim rights or legitimate interests in a domain name that contains the entirety of a mark.
The Respondent is clearly using the disputed domain name for a commercial purpose.
The term “Y8” has no inherent meaning. The Respondent is intentionally profiting from the goodwill in the Complainant’s marks.
The Complainant had been using its marks in commerce for over four years by the time that the Respondent acquired the disputed domain name. The Respondent has used the disputed domain name to offer services that directly compete with the Complainant. By the time of transfer to the privacy service, the Complainant possessed registered rights in addition to strong common law rights.
The Respondent attempted to attract Internet users by creating a likelihood of confusion with the Complainant’s services. It is inconceivable that that Respondent was unaware of the Complainant’s mark when the Respondent registered the disputed domain name. In any event, constructive knowledge suffices.
The Respondent is a repeat cybersquatter. See VIEW POINT BV v. Tsili, Anastasios Tsiligannis, WIPO Case No. D2009-1118.
Actual confusion is unnecessary. The reasonable potential for confusion is sufficient. Where an infringing domain is likely to cause “initial interest confusion” such that Internet users might abandon their efforts to find Complainant’s products, it is irrelevant that users eventually realize that the site they reached was not the site they were seeking.
Since the disputed domain name is substantively identical to the Complainant’s mark and is used for directly competing services without even a disclaimer, the likelihood of confusion is obvious. This was the Respondent’s intention upon using and registering the disputed domain name.
The following is a summary of the Respondent’s contentions:
The Respondent concedes that the disputed domain name is identical to the Complainant’s mark. However, the Respondent’s registration predates the Complainant’s registered trade marks. This of itself refutes the three conditions required to be proved by the Complainant.
The Respondent is a developer of numerous games websites. The Respondent chose the disputed domain name because it suggests games.
The Complainant misleads the Panel by suggesting that the Respondent registered the disputed domain name to create confusion with the Complainant’s brand. The Respondent is a Greek individual and was unaware of this Honk Kong entity, its business, or its subsequent US trade mark registrations.
The term “Y8” is being used on hundreds of unrelated games sites, both in domain names and on the sites themselves.
The Complainant is not the only exclusive user of the exact mark in various country level domains as there are third parties operating flash game sites at <y8.eu>, <y8.fm> and <y8.io>. It is clear that, internationally, the Complainant has no exclusive use of the term “Y8” and, in particular, no exclusive use in association with flash games.
The disputed domain name was registered in 2010, some two years before the Complainant’s US trade mark registration. At the time of registration, the Respondent conducted a trade mark search and discovered only a single 2006 trade mark for “Y8” in Germany for unrelated use / business. At that time, the disputed domain name was only associated with pornographic websites.
There is no bad faith because (1) the domain name registration predated the Complainant’s trade mark rights, (2) the Greek individual Respondent had no knowledge of the Complainant, its business, and the use of the mark in Hong Kong and (3) the Respondent has not used the disputed domain name to disrupt the Complainant’s business.
The Respondent has used the disputed domain name in connection with goods or services related to those registered in connection with the Complainant’s mark. But such mark is “genericized internationally”.
The Respondent did not register the disputed domain name with the intent of selling it to the Complainant and has never initiated contact with the Complainant to sell the disputed domain name.
Moreover the generic use of the mark internationally, and the four year use by the Respondent, show a want of policing by the Complainant of its alleged trade mark.
Both parties have made unsolicited supplemental filings.
Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of supplemental filings. Paragraph 10(d) states: “The Panel shall determine the admissibility, relevance, materiality and weight of the evidence”. Paragraph 12 states: “In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties”.
The principles which the Panel should apply in deciding whether or not to admit supplemental filings have been considered in many cases under the Policy. See, e.g., The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447. The principles include: that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimize prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.
The Complainant’s supplemental filing is simply a standard rebuttal of the Response. No attempt is made to justify the filing on grounds of exceptional circumstances. Accordingly, the Panel declines to admit this filing and it also rejects the Respondent’s filing which is a rebuttal of the Complainant’s filing.
The Panel would add, however, that neither supplemental filing would have made any difference to the outcome of this case.
The Complainant has rights in the mark Y8 by virtue of its registered trade marks as well as unregistered trade mark rights deriving from its use of that name.
The trade mark is identical to the disputed domain name.
The Respondent observes that the Complainant’s registered rights in particular post-date the registration of the disputed domain name. However, the date of acquisition of trade mark rights is not relevant to consideration of this factor – see paragraph 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain name to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant’s products and services. Such use of the disputed domain name could not be said to be bona fide.
In the oft-quoted case of Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847, the panel stated that:
“… use which intentionally trades on the fame of another can not constitute a "bona fide" offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.”
See also AmericaOnline, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374, (finding that “[I]t would be unconscionable to find a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the Complainant’s mark and for the same business”).
Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
The Respondent, a Greek individual, denies awareness of the Complainant when he acquired the disputed domain name on around October 17, 2010. The Respondent makes much of the fact that this predates the Complainant’s acquisition of registered trade mark rights but does not deny – or even mention – the Complainant’s prior unregistered trade mark rights dating back to 2006.
The Panel notes the following in relation to the question of the Respondent’s knowledge of the Complainant in 2010.
First, Alexa.com evidence shows that the Complainant is within the 1,000 most popular websites in the world indicates that the Complainant is a very major player indeed within its industry of online video games. The Panel places some weight on this, although the significance of this evidence is somewhat limited as it is directed to the Complainant’s current standing, not its position back in 2010.
Second, the only reason given by the Respondent for selecting the name “Y8” is that it “suggests games”. However, the Respondent does not explain this statement and to the Panel there is no obvious connection between “Y8” and games. The Panel considers that the absence of an explanation points towards a conclusion that the association with games is derived from the Complainant’s trade mark use of the term “Y8”.
Third, the structure of the Respondent’s website is very similar to that of the Complainant including a list of game categories on the left and a listing of the individual games with associated similar-sized images on the right side. It is true that the Respondent has provided evidence of a significant number of other domain names incorporating “Y8” being used for websites offering online video games services, some of which are also in a very similar format to the websites of both the Complainant and the Respondent. But there is nothing to indicate that those domain names / websites are not themselves targeting the Complainant. For example there is no evidence showing that any of these predate the Complainant. And some of those sites include logos which are strikingly similar to the Complainant’s logo.
Fourth, the Respondent has not denied – or even referred to – the Complainant’s assertion that it was found to have registered and used a domain name in bad faith in a previous UDRP case - VIEW POINT BV v. Tsili, Anastasios Tsiligannis, WIPO Case No. D2009-1118.
Weighing up all of the above, and given that the Respondent operates in exactly the same industry as the Complainant, the Panel concludes that on the balance of probabilities the Respondent was aware of the Complainant when it acquired the disputed domain name in 2010. While the Complainant is located in Hong Kong, China, and the Respondent is in Greece, not only is it clear that the Complainant’s activities are international in nature and not limited to Hong Kong, but it should be noted that of course Internet domain names and websites are not geographically restricted and as a matter of practice are accessible worldwide such that registrant locations should not necessarily be seen as a bar to knowledge of trade mark rights elsewhere.
The Panel concludes from the foregoing that the Respondent has registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy.
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 <y8.org> be transferred to the Complainant.
Date: June 18, 2014
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