WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gamestop, Inc. v. Domain Admin, Whois Privacy Corp.
Case No. D2020-1860
1. The Parties
The Complainant is Gamestop, Inc., United States of America, represented by Kelley Drye & Warren, LLP, United States of America (“United States”).
The Respondent is Domain Admin, Whois Privacy Corp., Bahamas.
2. The Domain Name and Registrars
The disputed domain name <newgamestop.com> is registered with Internet Domain Service BS Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2020. On July 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 20, 2020, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 10, 2020. Emails were sent by a third party claiming to be the owner of the disputed domain name, on July 22, 2020; July 31, 2020; and August 6, 2020.
The Center appointed Adam Taylor as the sole panelist in this matter on August 21, 2020. 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
Since the mid-1990’s, the Complainant has operated as a retailer of computer, video and electronic games, consumer electronics, wireless services, accessories, and related goods and services, all offered under the mark “Gamestop”.
The Complainant operates over 5,000 retail stores including throughout the United States, Canada, Australia, New Zealand, and Europe, and it has attracted some 10 million followers on social media.
The Complainant owns a number of trade marks for GAMESTOP worldwide including United States trade mark no. 1,707,460, filed August 2, 1991, registered August 11, 1992, in class 42.
The disputed domain name was registered on September 11, 2018.
As of July 7, 2020, the disputed domain name resolved to a website branded “New Games Top”, offering a range of online computer games playable on a personal computer.
5. Parties’ Contentions
A. Complainant
The following is a summary of the Complainant’s contentions:
The Complainant has generated “hundreds of millions” in revenue as a result of its sales under its mark.
The mark has become famous in the United Sales and worldwide by virtue of the Complainant’s extensive advertising and publicity.
The Complainant owns many domain names incorporating its mark including “www.gamestop.com”.
The disputed domain name is confusingly similar to the Complainant’s mark in that it incorporates the entirety of the Complainant’s mark and differs only by addition of the term “new”, which exacerbates rather than dispels the likelihood of confusion.
The Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant has not authorised the Respondent to use its mark.
The Respondent is not commonly known by the disputed domain name, which is not its company or trade name.
The Respondent has not used the disputed domain name for a bona fide offering of goods or services. Instead, the Respondent is using the disputed domain name to profit by diverting Internet users seeking the Complainant to the Respondent’s website which offers competing goods and services.
The Respondent’s website includes unauthorised or derivative versions of third party games including titles such as “Spongebob Shave Time” “Disney Princesses Barbie Show” and “Minion Real Haircuts”, which infringe third party intellectual property rights. Such offerings do not constitute legitimate use.
The Respondent has registered and used the disputed domain name in bad faith.
There is no doubt that the Respondent was aware of the Complainant, given that the Complainant’s
long-standing marks have a strong reputation worldwide.
The Respondent has intentionally attempted to attract visitors to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark.
The Respondent has set out to disrupt the Complainant’s business by using the disputed domain name to offer goods or services competing with those of the Complainant.
The Respondent’s use of its website to offer infringing versions of third party games is further evidence of bad faith.
The Respondent is infringing the Complainant’s trade marks.
B. Respondent
The following is a summary of the Respondent’s contentions:
There is no likelihood of confusion between the Respondent’s website and the Complainant. The Complainant sells games for consoles and home appliances whereas the Respondent provides HTML5 online computer games that can be played on any browser. The Respondent’s products are different to those of the Complainant and the Respondent’s website is not a retail or online store. It provides a trial period for Internet users to familiarise themselves with the games, following which they can subscribe for continued access to the games.
The disputed domain name was not intended to attract Internet users searching for the Complainant’s websites. From the date of its registration, the disputed domain name has been prohibited from indexing by search engine robots, so the Complainant’s customers would not be able to find the site in search results or anywhere else and confuse it with the Complainant’s website.
The Respondent has not infringed the Complainant’s trade mark, which the Respondent does not mention on its website and which the Respondent has never used.
The Respondent uses the name “New Games Top”, whereas the Complainant is called “Game Stop”. The meanings of these terms are completely different and show that the disputed domain name cannot have been registered or used in bad faith. The Respondent had an agreed subscription service with a Polish mobile operator called “NewGames” and needed to register a new domain name for its service. The Respondent visited a website at <namelix.com>, which automatically generated the disputed domain name for the Respondent.
The Complainant cannot claim the disputed domain name as it does not own a registered trade mark for that term.
The Respondent provides its services only to customers located in former countries of the USSR, including Lithuania, Latvia, Poland, Ukraine and Kazakhstan, where no one has ever heard of the Complainant’s brand or retail stores. The Respondent does not provide services in any countries in which the Complainant operates.
The Complainant’s many websites are unavailable including “www.gamestop.com” which brings up an “access denied” error.
As alleged infringement of third party rights, the Respondent provides all of its games legally by agreement with the developers of those games.
The Respondent did not register the disputed domain name to capitalise on the Complainant’s fame. The Respondent was not aware of any GameStop trade mark until it received notice of this claim.
6. Discussion and Findings
Under the Policy, the Complainant is required to prove on the balance of probabilities that:
- the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith.
A. Identity of the Respondent
Following service of the Complaint, the Center received a number of emails from an Alexey Pisarev who claimed that he was the owner of the disputed domain name and has responded in detail to the Complaint (see section 6B below).
While Mr Pisarev has not explained his relationship with the named Respondent, the Panel thinks it reasonable under the circumstances to infer that Mr Pisarev is indeed the ultimate owner of the disputed domain name and that he used the named Respondent as a privacy service to register the disputed domain name. Accordingly, references below to the Respondent should be treated as including Mr Pisarev except where stated otherwise.
B. Informal Response
The Response is in the form of an email to the Center which does not comply with the formal requirements set out in paragraph 5 of the Rules. For example, there is no statement of truth. The Panel has nonetheless decided to admit the Response in accordance with its powers under paragraph 10(d) of the Rules.
C. Identical or Confusingly Similar
The Complainant has established rights in the mark GAMESTOP by virtue of its registered trade marks as well as unregistered trade mark rights deriving from the extensive and long-standing use of that name.
Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) makes clear that, where the relevant trade mark is recognisable within the disputed domain name, the addition of other terms, whether descriptive or otherwise, would not prevent a finding of confusing similarity under the first element.
Here, the Complainant’s trade mark is readily recognisable within the disputed domain name and, accordingly, the addition of the term “new” is insufficient to avert a finding of confusing similarity.
For the above reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
D. Rights or Legitimate Interests
As explained in section 2.1 of WIPO Overview 3.0 , the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests in the disputed domain name.
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.
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.
E. Registered and Used in Bad Faith
The Panel is not convinced by the Respondent’s version of events, as summarised in section 5B above, for the following reasons:
1. Even if is true, as the Respondent asserts, that the Respondent’s products are different to those of the Complainant, namely online games playable on personal computers rather than games for consoles and similar devices, nonetheless the parties are in broadly the same industry and it seems unlikely that the Respondent was unaware of the Complainant, which has been trading since the mid-1990’s and has established a substantial reputation, both in the United States and globally.
2. The Respondent has provided no evidence of its alleged contract with a Polish mobile operator called “NewGames”. Nor has it explained why, even if there was such a contract, it was necessary for the Respondent to incorporate the name of that operator into its own trading name – or why the Respondent otherwise considered that this particular formulation was an appropriate name to use for its business. The phrase “New Games Top” does not seem like a natural form of words to choose for a trading name, unlike say “Top New Games”. Instead, the Panel considers that, on the balance of probabilities, the name is a defensive move designed to try to enable the Respondent to claim that it is different from the Complainant’s trade mark while at the same time reproducing the Complainant’s trade mark in its entirety.
3. There is no evidence supporting the Respondent’s claim that its services are provided only to customers located in the former countries of the USSR, where the Complainant is allegedly unknown. For example, the Respondent has not supplied statistics or other supporting evidence demonstrating that all, or at least the majority, of the Respondent’s customers emanate from that region. Furthermore, having visited the Respondent’s website, the Panel notes that its default language is English, with an American flag located next to the “English” button, and that, in addition to Polish and Russian, the website is also offered in Arabic. These language options cast further doubt on the credibility of the Respondent’s assertion as regards the limited geographical scope of its business.
4. The Respondent has not provided any evidence in support of its claim that it obtained licences from the developers of the games on its website that the Complainant asserts are likely to infringe third party intellectual property rights: “Spongebob Shave Time”, “Disney Princesses Barbie Show” and “Minion Real Haircuts”.
5. Generally, the Respondent has not supplied evidence supporting any of its assertions.
6. Furthermore, as explained in section 6B above, the Respondent has not filed its Response in the correct form, including a statement of truth.
For all of the above reasons, the Panel finds that, on the balance of probabilities, the Respondent selected the disputed domain name because of its similarity to the Complainant’s trade mark and with a view to profiting therefrom.
The Panel concludes that paragraph 4(b)(iv) of the Policy applies. By using the disputed domain name in connection with products relating to the Complainant’s industry, 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.
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 <newgamestop.com> be transferred to the Complainant.
Adam Taylor
Sole Panelist
Date: September 4, 2020
