Twitch Interactive, Inc. v. xie huijie
Claim Number: FA1501001599255
Complainant is Twitch Interactive, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is xie huijie (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <twtich.tv>, registered with 1API GmbH.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 12, 2015; the National Arbitration Forum received payment on January 12, 2015.
On January 14, 2015, 1API GmbH confirmed by e-mail to the National Arbitration Forum that the <twtich.tv> domain name is registered with 1API GmbH and that Respondent is the current registrant of the name. 1API GmbH has verified that Respondent is bound by the 1API GmbH 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 January 14, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 3, 2015 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@twtich.tv. Also on January 14, 2015, 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 February 9, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 name be transferred from Respondent to Complainant.
A. Complainant
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the TWITCHTV mark. Respondent’s domain name is confusingly similar to Complainant’s TWITCHTV mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <twtich.tv> domain name, and that Respondent registered and uses the domain name in bad faith.
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 uses the TWITCHTV mark in connection with its business as a leading live video platform and community for gamers. Complainant owns the TWITCHTV mark through its trademark registrations with the USPTO. (e.g., Reg. no. 4,087,877, registered January 17, 2012). Such registrations are sufficient to establish rights in the TWITCHTV mark pursuant to Policy ¶ 4(a)(i) requirements, even though Respondent reportedly resides in China. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Accordingly, the Panel finds that Complainant’s USPTO registrations satisfy the requirements of Policy ¶ 4(a)(i).
Complainant contends that the <twtich.tv> domain name, which was registered on October 23, 2012, is confusingly similar to Complainant’s TWITCHTV mark, because Respondent has simply transposed the letters “t” and “I”, while also adding a period to the mark. Simply transposing two letters in a mark is not a significant enough change to avoid a classification of confusingly similar, and that the addition of punctuation is an irrelevant change under Policy ¶ 4(a)(i). See Delta Corporate Identity, Inc. v. SearchTerms, FA 590678 (Nat. Arb. Forum Dec. 14, 2005) (concluding that the <dleta.com> domain name was confusingly similar to the complainant’s DELTA mark); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"). As such, the Panel finds that the <twtich.tv> domain name is confusingly similar to Complainant’s TWITCHTV mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
It is Complainant’s position that Respondent lacks rights and legitimate interests in the <twtich.tv> domain name. Complainant alleges that Respondent is not commonly known by the disputed domain name. Further, Complainant urges that it has neither licensed nor authorized Respondent to use the TWITCHTV mark for any purpose. The WHOIS information for Respondent lists “Xie Huijie” as the registrant of the disputed domain name. Given the lack of evidence to conclude otherwise, the Panel finds that Respondent is not commonly known by the <twtich.tv> domain name pursuant to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Complainant also argues that Respondent does not provide any bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. Complainant urges that Respondent uses the disputed domain name to display fake error messages that warn users to download upgrades to their software, but when the Internet users click on the upgrades they are warned of the possibility of malware. Such conduct, attempting to download malware onto unsuspecting Internet users computers, demonstrates a lack of rights and legitimate interests in a disputed domain name. See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Nat. Arb. Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”). Thus, the Panel finds that Respondent’s attempts to place malware on Internet users’ computers does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant makes a variety of different arguments in support of its assertion that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii). First, Complainant argues that Respondent uses the disputed domain name to attract Internet users to its own website for its own commercial gain. Specifically, Complainant argues that Respondent commercially benefits from its promotion of downloads and unrelated offers on its website. Bad faith under Policy ¶ 4(b)(iv) has been found under similar circumstances. See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. 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)). The Panel agrees with Complainant’s argument and finds that Respondent has engaged in bad faith under Policy ¶ 4(b)(iv).
Second, Complainant has shown that Respondent uses the disputed domain name to download malware onto the computers of unsuspecting Internet users. Such conduct is evidence of bad faith under Policy ¶ 4(a)(iii). See Victoria’s Secret Stores Brand Mgmt., Inc. v. PrivacyProtect.org, FA 1357512 (Nat. Arb. Forum December 17, 2010) (finding that a domain name attracting Internet users to a resolving website that attempts to download malicious software onto their computers to steal personal information “indicates bad faith registration and use according to Policy ¶ 4(a)(iii)”). As a result, the Panel finds that Respondent’s attempts to download malware on the computers of visitors to its website constitutes a finding of bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent has engaged in typosquatting, which is further evidence of Respondent's bad faith. Bad faith under the Policy ¶ 4(a)(iii) exists where a respondent registers a domain name by introducing typographical errors or misspellings with the purpose of confusing Internet users. See Indep. Ins. Agents & Brokers of Am., Inc. v. Liqian, FA 1582252 (Nat. Arb. Forum Nov. 10, 2014) (“Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name wishing and hoping that Internet users will inadvertently type the malformed string . . . Respondent’s typosquatting is, in itself, evidence of Policy ¶ 4(a)(iii) bad faith.”). The Panel agrees that such behavior amounts to typosquatting pursuant to Policy ¶ 4(a)(iii). Moreover, such typosquatting demonstrates that Respondent had actual knowledge of Complainant’s mark. See also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration)."
The Panel finds Complainant has 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 <twtich.tv> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 12, 2015
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