GameFly, Inc. v To Thi Thanh Tam
Claim Number: FA1409001579345
Complainant is GameFly, Inc. (“Complainant”), represented by CitizenHawk, Inc., California., USA Respondent is To Thi Thanh Tam (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <gamedfly.com>, <gameflay.com>, <gamefuy.com>, and <gameply.com>, registered with APRIL SEA INFORMATION TECHNOLOGY CORPORATION.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 11, 2014; the National Arbitration Forum received payment on September 11, 2014.
On September 16, 2014, APRIL SEA INFORMATION TECHNOLOGY CORPORATION confirmed by e-mail to the National Arbitration Forum that the <gamedfly.com>, <gameflay.com>, <gamefuy.com>, and <gameply.com> domain names are registered with APRIL SEA INFORMATION TECHNOLOGY CORPORATION and that Respondent is the current registrant of the names. APRIL SEA INFORMATION TECHNOLOGY CORPORATION has verified that Respondent is bound by the APRIL SEA INFORMATION TECHNOLOGY CORPORATION 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 September 23, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 14, 2014 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@gamedfly.com, postmaster@gameflay.com, postmaster@gamefuy.com, postmaster@gameply.com. Also on September 23, 2014, 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 October 21, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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. Respondent’s <gamedfly.com>, <gameflay.com>, <gamefuy.com>, and <gameply.com> domain names are confusingly similar to Complainant’s GAMEFLY mark.
2. Respondent does not have any rights or legitimate interests in the <gamedfly.com>, <gameflay.com>, <gamefuy.com>, and <gameply.com> domain names.
3. Respondent registered and uses the <gamedfly.com>, <gameflay.com>, <gamefuy.com>, and <gameply.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant’s GAMEFLY mark is used for the online sale and rental of video games. The mark is registered with the United States Patent and Trademark Office ("USPTO") (Reg. No. 2,746,496, registered Aug. 5, 2003).
Respondent registered the disputed domain names on May 3, 2004, and uses them for hyperlinked advertisements, some of which compete with Complainant’s business.
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.”).
The Panel finds that Complainant’s registration of its GAMEFLY mark satisfies the requirements of Policy ¶ 4(a)(i). In W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010), the panel agreed that USPTO registrations showcased sufficient rights to overcome the burdens of Policy ¶ 4(a)(i).
Respondent’s <gamedfly.com>, <gameflay.com>, <gamefuy.com>, and <gameply.com> domain names capitalize on a single letter misspelling of Complainant’s GAMEFLY mark. The misspellings and the addition of the generic top-level domain (“gTLD”) “.com” do not distinguish the disputed domain names from Complainant’s mark. The Panel finds that the disputed domain names are prime examples of Policy ¶ 4(a)(i) confusing similarity. See Orbitz Worldwide, LLC v. MGA LIMITED / mgaenterpriseslimited , FA 151503 (Nat. Arb. Forum Oct. 4, 2013) (“Respondent’s <cheaptiekets.com> domain name is confusingly similar to Complainant’s CHEAPTICKETS.COM mark, because the domain name merely replaces the letter ‘c’ in the word “tickets” with the letter ‘e.’”).
The Panel finds that Complainant satisfies Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has never had a name that resembles any of the disputed domain names. Complainant states that Respondent has never been authorized by Complainant to use the GAMEFLY mark. The WHOIS record lists “To Thi Thanh Tam” as the registrant of record for the disputed domain names. Thus, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant claims that the disputed domain names divert Internet users to websites featuring hyperlinked advertisements, some of which compete with Complainant’s GAMEFLY business. The Panel notes that disputed domain names resolve to websites with hyperlinks that target the keyword “gamefly.” In Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008), the panel agreed that a respondent had no rights under Policy ¶ 4(b) or ¶¶ 4(c)(i) or (iii), when the domain name housed various hyperlinked advertisements and little other content. Similarly, the Panel finds that Respondent has not made a Policy ¶ 4(c)(i) bona fide offering, or Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Complainant satisfies Policy ¶ 4(a)(ii).
Complainant claims that the presence of competing links on the websites resolving from the disputed domain names is indicative of a scheme to disrupt Complainant’s business. The Panel agrees and finds that such use of the disputed domain names constitutes bad faith under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Respondent’s use of confusingly similar domain names to generate advertising revenue for itself reveals Respondent intent to capitalize on the likelihood of confusion with Complainant’s GAMEFLY mark. In Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006), the panel held that competing hyperlinks on a disputed domain name can create a likelihood of confusion because the Internet user will be clicking on hyperlinks that generate revenue for the respondent only despite the user’s intent to do business or transact with the mark-holder. Thus, the Panel finds Policy ¶ 4(b)(iv) bad faith.
Respondent’s intent in registering the disputed domain names was to capitalize on common Internet user errors, such as hitting a wrong button on the keyboard when attempting to reach Complainant’s <gamefly.com>. This constitutes typosquatting, and thus the Panel finds further bad faith under Policy ¶ 4(a)(iii). See Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003) (holding that the practice of typosquatting “diverts Internet users who misspell Complainant’s mark to a website apparently owned by Respondent for Respondent’s commercial gain. ‘Typosquatting’ has been recognized as evidencing bad faith registration and use under Policy ¶ 4(b)(iii).”).
The Panel finds that Complainant satisfies 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 <gamedfly.com>, <gameflay.com>, <gamefuy.com>, and <gameply.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 24, 2014
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