Zynga Inc. v. MAHESH KUMAR / ZYNGA
Claim Number: FA1906001846747
Complainant is Zynga Inc. (“Complainant”), represented by Peter Kidd of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is MAHESH KUMAR / ZYNGA (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zyngachips.net>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 6, 2019; the Forum received payment on June 6, 2019.
On June 8, 2019, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <zyngachips.net> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 13, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 3, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@zyngachips.net. Also on June 13, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 9, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a leading developer of the world’s most popular social game services including, inter alia, online card games, online word games, online board games, and online puzzle games. Complainant has rights in the ZYNGA marks through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,977,615, registered June 14, 2016). Respondent’s <zyngachips.net> is identical or confusingly similar to Complainant’s as the disputed domain name includes the ZYNGA mark in its entirety and adds the generic or descriptive word “chips” along with the “.net” generic-top level domain (gTLD).
Respondent has no rights or legitimate interest in the <zyngachips.net> as Respondent has no right to own or use the ZYNGA mark in any way nor is Respondent commonly known by the disputed domain name. Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to drive traffic to the disputed domain name for commercial gain where Respondent is selling unauthorized virtual poker chips. Respondent creates an illegitimate secondary market for Complainant’s products in violation of Complainant’s terms of service.
Respondent registered and used the disputed domain name in bad faith by facilitating the illegitimate sale and purchase of Complainant’s Zynga poker chips in hopes to disrupt Complainant’s business. Respondent also had actual knowledge of the ZYNGA mark based on Respondent’s use of mark on the resolving webpage and the international fame of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that Respondent registered the <zybgachips.net> domain name on July 28, 2018.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims to have rights in the ZYNGA mark through its registration with the USPTO other trademark agencies around the world. Registration of a mark with the USPTO or other trademark agency is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). Here, Complainant has provided the Panel with copies of its USPTO registrations for the ZYNGA mark (e.g. Reg. No. 4,977,615, registered June 14, 2016). Therefore, the Panel finds that Complainant has rights in the ZYNGA mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <zyngachips.net> domain name is identical or confusingly similar to Complainant’s ZYNGA mark as the disputed domain name includes the ZYNGA mark in its entirety and adds the generic or descriptive word “chips”. Addition of a generic word to a fully formed mark does not distinguish the domain name from a mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653178 (Forum Jan. 24, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain). Therefore, the Panel finds that Respondent’s <zyngachips.net> domain name is identical or confusingly similar to Complainant’s ZYNGA mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent lacks any rights or legitimate interests in the <zyngachips.net> domain name as Respondent has no right to own or use the ZYNGA mark in any way, nor is Respondent commonly known by the disputed domain name. WHOIS information may be used to determine whether a respondent is has rights or legitimate interest in a disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). However, where the WHOIS information indicates a respondent is known by a disputed domain name, the Panel may still find the respondent is not commonly known by the disputed domain name in the absence of affirmative evidence in support of that identity and a lack of authorization from the complainant to use the mark. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding that, although the respondent listed itself as “Jessie McKoy / Ripple Reserve Fund” in the WHOIS contact information, it did not provide any affirmative evidence to support this identity; combined with the fact that the complainant claimed it did not authorize the respondent to use the mark, the respondent is not commonly known by the domain name). The WHOIS information identifies the registrant as “MAHESH KUMAR / ZYNGA”, but Respondent has provided no affirmative evidence in support of this identity and there is no evidence in the record to indicate Respondent was authorized to use Complainant’s mark. Therefore, the Panel finds that Respondent lacks rights or legitimate interests in the <zyngachips.net> domain name per Policy ¶ 4(c)(ii).
Complainant further argues that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use of the <zyngachips.net> domain name. Complainant asserts Respondent uses the disputed domain name to drive traffic to the disputed domain name for commercial gain where Respondent is selling unauthorized virtual poker chips. Use of a disputed domain name to divert Internet users to a respondent’s website for commercial gain is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”). Additionally, use of a disputed domain name to sell products or services competitive to Complainant’s is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (“use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Here, Complainant has provided the Panel with screenshots of the resolving webpage of the disputed domain name which displays Complainant’s ZYNGA mark and offers for sale virtual poker chips, which Complainant argues competes with their business. Therefore, the Panel finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name per Policy ¶¶ 4(c)(i) or (iii).
Complainant further argues that Respondent does not use the <zyngachips.net> domain name for a bona fide offering of goods or services as Respondent creates an illegitimate secondary market for Complainant’s products. Using a disputed domain name for an unlawful purpose may not be a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Google Inc. v. Alex Dori, FA 1623672 (Forum July 13, 2015) (“Given that Respondent is using the disputed domain name to offer illegal content for download and streaming, the Panel finds that Respondent’s use of the disputed domain name does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Furthermore, use of a disputed domain name which enables Internet users to violate the terms of service of a complainant’s website may not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). Google Inc. v. Onur Koycegiz, FA1741705 (Forum Aug. 25, 2017) (finding that respondent’s use of the <10youtube.com> domain name in association with a website that enabled Internet users to download and save content from Google’s YouTube service in violation of Google’s YouTube Terms of Service did not constitute either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Complainant argues that Respondent creates an illegitimate secondary market for Complainant’s products and facilitates violation of the terms of service of Complainant’s website. The Panel agrees, and finds that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Thus, Complainant has satisfied Policy ¶4(a)(ii).
Complainant contends that Respondent registered and uses the <zyngachips.net> domain name in bad faith by diverting Internet traffic to the disputed domain name and facilitating the illegitimate sale and purchase of Complainant’s products. Use of a disputed domain name to engage in the unauthorized sale of a complainant’s products may be evidence of bad faith per Policy ¶ 4(b)(iii). See Ontel Products Corporation v. waweru njoroge, FA 1762229 (Forum Dec. 22, 2017) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iii) and (iv) through the respondent’s registration and use of the infringing domain name to reference the complainant’s products and offer competitive and/or counterfeit products). Diverting Internet users to a disputed domain name, likely for profit, can demonstrate bad faith registration and use under Policy ¶ 4(b)(iv). Here, Complainant has provided the Panel with screenshots of the resolving webpage of the disputed domain name which displays Complainant’s mark and purportedly offers for sale unauthorized versions of Complainant’s virtual products. Therefore, the Panel finds that Respondent engaged in bad faith registration and use per Policy ¶ 4(b)(iii) and/or (iv).
Lastly, Complainant argues that Respondent registered the disputed domain name in bad faith as Respondent had actual knowledge of Complainant’s rights in the ZYNGA mark. Use of a disputed domain name that incorporates a well-known and recognized mark may be evidence of actual knowledge of Complainant’s rights in the mark. See Snap Inc. v. Deepika Priyadarshinie / entsl, FA 1788600 (Forum June 21, 2018) (finding the respondent had actual knowledge of the complainant and its rights in the claimed mark due to the fame of the mark, established by the complainant’s submission of numerous articles regarding the success of the complainant’s product). Additionally, use of the mark on the resolving webpage to divert Internet users to the disputed domain name can demonstrate actual knowledge of a Complainant’s rights in the mark and evince bad faith. See Finex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Here, Complainant has provided multiple articles showing that the ZYNGA mark has be recognized and relied upon by consumers in the field of online gaming around the work. Complainant also provides screenshots of the resolving webpage of the disputed domain name which displays Complainant’s ZYNGA mark. Therefore, the Panel finds that Respondent had actual knowledge in Complainant’s rights in the ZYNGA mark and registered the <zyngachips.net> domain name in bad faith per Policy ¶ 4(a)(iii).
Thus, Complainant has also satisfied Policy ¶4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <zyngachips.net> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: July 22, 2019
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