Gamestop, Inc. v. A Kiansu
Claim Number: FA1204001441429
Complainant is Gamestop, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is A Kiansu (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <gamestp.com> and <gmestop.com>, registered with Dotregistrar 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 27, 2012; the National Arbitration Forum received payment on April 27, 2012.
On April 30, 2012, Dotregistrar LLC confirmed by e-mail to the National Arbitration Forum that the <gamestp.com> and <gmestop.com> domain names are registered with Dotregistrar LLC and that Respondent is the current registrant of the names. Dotregistrar LLC has verified that Respondent is bound by the Dotregistrar 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 April 30, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 21, 2012 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@gamestp.com and postmaster@gmestop.com. Also on April 30, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 24, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant
1) Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its GAMESTOP.COM mark (e.g., Reg. No. 2,489,084 registered September 11, 2001).
2) Complainant operates as a video game retailer, with retail and online stores across the world, and publishes a video game publication.
3) Respondent registered the <gamestp.com> and <gmestop.com> domain names on or around January 2, 2002.
4) Both of the disputed domain names resolve to empty pages with no substantive content.
5) Respondent’s disputed domain names are confusingly similar to Complainant’s GAMESTOP.COM mark.
6) Respondent’s registration of the disputed domain names constitutes typosquatting.
7) Respondent is not commonly known by either of the disputed domain names.
8) Respondent is not sponsored by, or affiliated with, Complainant and has not been given permission to use Complainant’s mark in any way.
9) Respondent has had previous adverse decisions issued against it under the UDRP.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Gamestop, Inc., operates as a video game retailer, with retail and online stores across the world, and publishes a video game publication.
Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its GAMESTOP.COM mark (e.g., Reg. No. 2,489,084 registered September 11, 2001).
Respondent, AKiansu, registered the <gamestp.com> and <gmestop.com> domain names on or around January 2, 2002. Both of the disputed domain names resolve to empty pages with no substantive content.
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant claims to own trademark registrations with the USPTO for its GAMESTOP.COM mark (e.g., Reg. No. 2,489,084 registered September 11, 2001). The panels in United Way of Am. v. Zingaus, FA 1036202 (Nat. Arb. Forum Aug. 30, 2007), and Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005), held that a complainant’s registration of a mark with a trademark authority demonstrates rights in the mark under Policy ¶ 4(a)(i). The Panel finds that Complainant’s registration of its mark is sufficient to show rights in its GAMESTOP.COM mark under Policy ¶ 4(a)(i). Complainant is not required to register its mark in the country where Respondent lives and/or operates for the purposes of Policy ¶ 4(a)(i). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant alleges that the <gamestp.com> and <gmestop.com> domain names are confusingly similar to its GAMESTOP.COM mark, arguing that both domain names use commonly misspelled versions of the mark. Complainant points out that the <gamestp.com> domain name removes the letter “o” from the mark and the <gmestop.com> domain name removes the letter “a” from the mark, which Complainant claims results in confusing similarity to the GAMESTOP.COM mark. The Panel finds that the disputed domain names are both confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
The WHOIS information identifies “A Kiansu” as the registrant. A respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii) when the WHOIS information and other information provided on the record do not indicate that the respondent is commonly known by the domain name, and the complainant gave no authorization to the respondent to register the domain using its mark. See United Way of Am. v. Zingaus, FA 1036202 (Nat. Arb. Forum Aug. 30, 2007) (stating that the WHOIS information suggests that the respondent was known as “Alex Zingaus,” which did not suggest that the respondent was commonly known by the disputed domain name).
Respondent uses the <gamestp.com> and <gmestop.com> domain names to host empty websites. Passive use cannot be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel concludes that using a domain name to host an empty website is not 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). See Bloomberg L.P. v. SC Media Servs. & Info., FA 296583 (Nat. Arb. Forum Sep. 2, 2004) (finding that passive holding of a domain name that is identical to the complainant’s mark does not demonstrate a bona fide offering of goods or services, or a legitimate noncommercial or fair use of a domain name).
Respondent’s disputed domain names are a classic example of typosquatting behavior. The Panel concludes that taking advantage of Internet users’ common spelling mistakes represents typosquatting and provides evidence that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). See Lavalife Inc. v. St Kitts Registry, FA 1011427 (Nat. Arb. Forum Jul. 31, 2007) (holding that the disputed domain name was essentially the complainant’s mark with a typographical error, because it omitted one letter of the mark, and was evidence of the respondent’s lack of rights and legitimate interests in the domain name).
Complainant alleges that Respondent has a record of adverse UDRP decisions against it, and submits evidence of two previous decisions against Respondent where Respondent registered multiple domain names that the UDRP panels transferred to the respective complainants. See Overstock.com, Inc. v. A. Kiansu, FA1142092 (Nat. Arb. Forum March 12, 2008); see also Hot Topic, Inc. v. A. Kiansu, FA1323039 (Nat. Arb. Forum June 8, 2010). The Panel concludes that Respondent’s involvement in previous UDRP proceedings is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
Complainant argues that Respondent is not making an active use of the <gamestp.com> and <gmestop.com> domain names and that non-use constitutes bad faith. In Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000), the panel stated that “merely holding” a disputed domain name without active use can be evidence of bad faith. The Panel finds that Respondent’s failure to use the disputed domain names shows bad faith registration and use under Policy ¶ 4(a)(iii).
Complainant argues that the <gamestp.com> and <gmestop.com> domain names are typosquatted versions of its GAMESTOP mark and that registration of typosquatted names is evidence of bad faith. The Panel concludes that taking advantage of common misspellings of a mark in a domain name is considered typosquatting and is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to 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 <gamestp.com> and <gmestop.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 7, 2012
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