Psyonix LLC v. Vasya Pupkin
Claim Number: FA2004001894087
Complainant is Psyonix LLC (“Complainant”), represented by Christopher M. Thomas of Parker Poe Adams & Bernstein LLP, California, USA. Respondent is Vasya Pupkin (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <psyonix.org>, registered with Registrar of Domain Names REG.RU LLC.
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.
Charles A. kuechenmeister, Panelist.
Complainant submitted a Complaint to the Forum electronically on April 29, 2020. The Complaint was submitted in English. The Forum received payment on April 29, 2020.
On April 30, 2020, Registrar of Domain Names REG.RU LLC confirmed by e-mail to the Forum that the <psyonix.org> domain name (the Domain Name) is registered with Registrar of Domain Names REG.RU LLC and that Respondent is the current registrant of the name. Registrar of Domain Names REG.RU LLC has verified that Respondent is bound by the Registrar of Domain Names REG.RU LLC 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 May 4, 2020, the Forum served the Complaint and all Annexes, including a Russian language Written Notice of the Complaint setting a deadline of May 26, 2020 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@psyonix.org. Also on May 4, 2020, the Russian language 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 June 1, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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.
PRELIMINARY ISSUE: Language of the Proceedings
The registration agreement for the Domain Name is written in Russian. Rule 11(a) provides that the language of the proceedings is the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the case. Complainant filed its Amended Complaint in English and requested that this proceeding be conducted in English. Factors which previous panels have seen as important include evidence showing that the respondent can understand the language of the complaint, the language of the domain name, the content on any web pages resolving from the domain name, prior correspondence between the parties, and potential unfairness or unwarranted delay in ordering the translation of the pleadings and the Decision. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), at ¶ 4.5.1, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language), Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
As stated above, Complainant filed its Complaint in English but the Written Notice of the Complaint, written in both Russian and English, was served upon Respondent in accordance with Rules 1 and 2. The web site to which the Domain Name resolves is written exclusively in English (Complaint Exhibits D and E), and the Domain Name itself is the name of a firm based in the U.S. It appears from this that Respondent is conversant and proficient in the English language. Inasmuch as neither Complainant nor the Panel is proficient in the Russian language, proceeding in Russian would involve substantial additional expense and time for translation. Further, Respondent has not submitted a Response or any indication that it desires to participate in this proceeding, in the Russian language or otherwise. Under these circumstances the Panel finds that the additional time and expense of proceeding in Russian would be unwarranted inasmuch as the only party who might benefit from that has declined to participate. For this reason, the Panel determines that this proceeding will be conducted in English.
A. Complainant
Complainant is an American video game developer. It has rights in the PSYONIX mark through its registration of that mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 5,584,427, registered Oct. 16, 2018). Respondent’s <psyonix.org> Domain Name is identical or confusingly similar to Complainant’s PSYONIX mark as it incorporates the mark in its entirety, merely adding the “.org” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the Domain Name. Respondent is not affiliated or associated with Complainant and Complainant has not licensed or authorized Respondent to use its PSYONIX mark. Respondent has not been commonly known by the Domain Name, and Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use because he is using it to pass off as Complainant.
Respondent registered and is using the Domain Name in bad faith. He is using it to attract Internet users to his website for commercial gain, passing off as Complainant and disrupting Complainant’s business. Additionally, Respondent had actual knowledge of Complainant’s rights in the PSYONIX mark when he registered the Domain Name.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 a Complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) the 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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. 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”), WIPO Overview 3.0, at ¶ 4.3 (“In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent’s default—a complainant has failed to prove its case.”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
Identical and/or Confusingly Similar
The PSYONIX mark was registered to Complainant with the USPTO (Reg. No. 5,584,427) on October 16, 2018 (Complaint Exhibit B). Complainant’s registration of its mark with the USPTO is sufficient to establish its rights in that mark for the purposes of Policy ¶ 4(a)(i). Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership of a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <psyonix.org> Domain Name is identical to Complainant’s PSYONIX mark as it incorporates that mark verbatim, merely adding the “.org” gTLD. This change is not sufficient to distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). ADESA, Inc. v. James Louis, FA 1736761 (Forum July 19, 2017) (“[T]he Panel finds that Respondent’s <adesa.org> domain name is identical to Complainant’s ADESA mark.”). The WIPO Overview 3.0 at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within the Domain Name.
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the PSYONIX mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to the respondent of the dispute, the respondent has used or has made 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) Respondent is not affiliated or associated with Complainant and Complainant has not licensed, authorized, or otherwise permitted Respondent to use its mark, (ii) Respondent has not been commonly known by the Domain Name, and (iii) Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use because the web site currently resolving from it passes off as Complainant’s site. These allegations are addressed as follows:
Complainant states that Respondent is not associated or affiliated with it and that it has never licensed or authorized Respondent to use its mark in any way. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
The WHOIS information furnished to the FORUM by the registrar lists the registrant of the Domain Name as “Vasya Pupkin.” This name bears no resemblance to the Domain Name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name), Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel is satisfied that Respondent has not been commonly known by the Domain Name for the purposes of Policy ¶ 4(c)(ii).
Complaint Exhibits D and E are screenshots of pages of the web site resolving from the Domain Name. The design, coloring, layout and general appearance of these pages mimic and copy that of Complainant’s <psyonix.com> site, as shown on Complaint Exhibits C and F. Complainant’s PSYONIX mark in its distinctive font is copied exactly, and the Terms of Use, are copied verbatim from Complainant’s Terms of Use shown on Complaint Exhibit F. Only the links and an email address are changed, using the “.org” gTLD instead of Complainant’s “.com” gTLD. False copyright information naming Complainant at its San Diego, California street address as the copyright holder appears in Section 19 of Respondent’s Terms and Conditions page. Respondent’s site clearly presents as that of Complainant. There is no attempt to identify Respondent or any other party as the sponsor of this site. Respondent is clearly passing off as Complainant and this is neither a bona fide offering of goods or services for the purposes of Policy ¶ 4(c)(i) or legitimate noncommercial or fair use for the purposes of Policy ¶ 4(c)(iii). ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶4(c)(i) and (iii).”).
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s 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 trademark 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 the respondent’s 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 the respondent’s web site or location or of a product of service on the respondent‘s web site or location.
The evidence of Respondent’s conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use, based upon one or more of the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, Respondent is clearly using the Domain Name to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web site. The evidence does not disclose definitively how Respondent obtains commercial gain from his web site but the Terms of Service, which are exactly the same as those offered by Complainant, state that the site sponsor licenses his customers to “install and use one (1) copy of each game” (Complaint Exhibit E), and it appears from this that Respondent is either offering Complainant’s games (or a counterfeit) or fraudulently representing that he does, eventually collecting money from the customer and then not delivering the games. Under either scenario this fits squarely within the circumstances described in Policy ¶ 4(b)(iv) and is manifest evidence of bad faith registration and use. AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)), White Oak Entertainment, LLC - DBA The Chateau at White Oak Vineyard v. Al Perkins, FA 1702045 (Forum Dec. 12, 2016) (finding the respondent’s use of the domain name to redirect users to a pornographic website constituted evidence of bad faith).
Second, Respondent is using the Domain Name and the resolving website to pass off as Complainant for commercial gain. Using a confusingly similar domain name to pass off as a complainant has been held to constitute evidence of bad faith, as this also fits within the circumstances articulated in Policy ¶ 4(b)(iv). Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)), Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”).
Complainant alleges that Respondent’s conduct also falls within the circumstances described in Policy ¶ 4(b)(iii). By using the Domain Name to attract Internet traffic to a web site which impersonates and passes off as Complainant, Respondent is clearly disrupting the business of Complainant. There is no evidence, however, that Respondent is actually a competitor of Complainant. A number of UDRP panels have found that using a confusingly similar domain name to disrupt the business of a complainant was bad faith for the purposes of Policy ¶ 4(b)(iii), even when the respondent was not a competitor. Others have essentially by-passed the competition factor, focusing instead on disruption, and have simply found bad faith under ¶ 4(b)(iii), without further discussion or analysis.[i]
Policy ¶ 4(b)(iii) reads as follows: “you [the respondent] have registered the domain name primarily for the purposes of disrupting the business of a competitor” (emphasis supplied). The concept of “competition” in the context of Policy ¶ 4(b)(iii) has been subject to various interpretations by UDRP panels. Some have interpreted that term broadly to mean someone who “acts in opposition to the complainant.” Mission KwaSizabantu v. Benjamin Rost, Case No. 2000-0279 (WIPO June 7, 2000). Others have limited the term to parties who vie commercially with each other in the same industry, offering the same or similar goods or services. Tribeca Film Center Inc. v. Lorenzo Brusasco-Mackenzie, Case No. 2000-1772 (WIPO April 10, 2000). This Panel favors the second view, concurring with the panel in Britannia Building Society v. Britannia Fraud Prevention, Case No. 2001-0505 (WIPO July 8, 2001) that to accept the interpretation first above described would “render so many parties ‘competitors’ as to dilute the Policy’s bad faith requirement beyond recognition.” Clearly, Respondent here is not vying with Complainant for customers or business in the video game industry, offering its own wares as alternatives to those offered by Complainant. He is fraudulently impersonating Complainant but he is not competing with it. In the absence of actual commercial competition between Complainant and Respondent, Respondent here cannot be considered a competitor for the purposes of Policy ¶ 4(b)(iii).
Even if Complainant and Respondent were deemed competitors for the purposes of Policy ¶ 4(b)(iii), it does not appear that Respondent registered the Domain Names primarily for the purpose of disrupting Complainant’s business. On the contrary, the evidence is fairly clear that Respondent’s primary purpose in registering the Domain Names was not to disrupt the business of a commercial adversary but instead to attract internet traffic to his web site by creating confusion as to the source, sponsorship, affiliation or endorsement of those sites, as discussed above in the context of Policy ¶ 4(b)(iv). Respondent’s conduct does not fall within the circumstances stated in Policy ¶ 4(b)(iii).
That said, using a confusingly similar domain name to attract Internet traffic to a web site which passes off as and disrupts the business of a complainant is still bad faith. Policy ¶ 4(b) recognizes that mischief can assume many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005), Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are merely illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and using a confusingly similar domain name to disrupt the business of a complainant by passing off as and impersonating that complainant is sufficient evidence of bad faith to meet the requirements of Policy ¶ 4(a)(iii). Respondent’s primary intent in registering and continuing to use the Domain Name is less important than the effect of his conduct. Respondent knew or should have known the disruptive impact its conduct would have upon Complainant’s business. Respondent went forward with his plans in spite of that and this demonstrates bad faith independently of Policy ¶ 4(b)(iii). Red Wing Shoe Company, Inc. v. wei zhang / Magdalena Jennifer / Mu Yan / Carolina Rodrigues / Fundacion Comercio Electronico, FA1911001873163 (FORUM January 3, 2020).
Finally, it is evident that Respondent had actual knowledge of Complainant and its mark when it registered the Domain Name. Complainant’s PSYONIX mark had been used by it for more than two years by that time (Complaint Exhibit B). Respondent copied it exactly into the Domain Name, and blatantly copied the content of Complainant’s web site, literally verbatim, into his own site. Again considering the nonexclusive nature of Policy ¶ 4(b), registering a confusingly similar domain name with actual knowledge of a complainant’s rights in the incorporated mark has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
For the reasons first set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <psyonix.org> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
June 3, 2020
[i] PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)), Love City Brewing Company v. Anker Fog / Love City Brewing Company, FA 1753144 (Forum Nov. 27, 2017) (Finding that Respondent disrupts Complainant’s business by pointing Internet users to an expired webpage. This may create the perception that Complainant is closed, never existed, or is not a legitimate business. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iii).).
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