Twitch Interactive, Inc. v. xie huijie
Claim Number: FA1502001605109
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 <twiitch.tv>, registered with 1API GmbH.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 16, 2015; the Forum received payment on February 16, 2015.
On February 20, 2015, 1API GmbH confirmed by e-mail to the Forum that the <twiitch.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 February 23, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 16, 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@twiitch.tv. Also on February 23, 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 Forum transmitted to the parties a Notification of Respondent Default.
On Mach 19, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
Twitch Interactive, Inc. (hereinafter, “Twitch” or “Complainant”) operates Twitch, the world’s leading live video platform and community for gamers.
Twitch officially launched the Twitch service in June 2011 at the Electronic Entertainment Videogame Trade Show. By the end of July 2011, just a month after its public launch, the <twitch.tv> website had over 8 million unique visitors per month. By December, 2011 the service was attracting more than 12 million unique visitors per month. See also Justin.tv, Inc. v. heshan, FA1112001418422 (Nat. Arb. Forum Jan. 16, 2012) (finding that TWITCHTV had acquired secondary meaning in 2011). By February 2014, <twitch.tv> was ranked the 4th largest website in the U.S. in terms of peak internet traffic, fortifying the TWITCH brand as an entertainment industry leader and the epicenter of social video for gamers. Today more than 60 million visitors gather on Twitch every month to watch and talk about video games with more than 1.1 million broadcasters. Overall, <twitch.tv> is the 85th most viewed website in the United States, the 173rd most viewed website globally, and the No. 1 most viewed website in the Games category, according to the public statistics offered by Internet site ranking company Alexa Internet, Inc.[1] Twitch is frequently mentioned in mainstream press and publications, such as the New York Times, the Wall Street Journal, CNET, PC Magazine, etc. Thus, through longstanding use, promotion and substantial commercial success, the TWITCH and TWITCHTV marks have become well-known and famous.
Twitch’s TWITCH and TWITCHTV trademarks are registered in various countries, including the United States. (United States Reg. No.’s 4230874, 4230878 and 4275948). “If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights”; “[t]he location of the trademark … and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Ed. See also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA0703000932344 (Nat. Arb. Forum Apr. 23, 2007) (“it is sufficient that the complainant can demonstrate a mark in some jurisdiction”).
ICANN Rule 3(b)(viii).
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)(ix).
A. CONFUSINGLY SIMILAR DOMAIN NAME (ICANN Rule 3(b)(ix)(1) and ICANN Policy ¶4(a)(i)):
The disputed domain name is identical to Complainant’s registered TWITCHTV trademark except that <twiitch.tv> adds an additional “i” and a period before “TV” to make TV a ccTLD.
Adding a single, repetitious letter and a period to Complainant’s well-known trademark is not enough to distinguish the disputed domain. See Google, Inc. v. DktBot.org, FA0406000286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶4(a)(i).”); Ashley Furniture Industries, Inc. v. Kim Bum, FA1210001467301 (Nat. Arb. Forum Nov. 27, 2012) (“Adding a single letter to a trademark to create a domain name fails to distinguish the resulting domain name from the mark”); Bed Bath & Beyond Proc. Co. Inc. v. Webb, FA1306001507603 (Nat. Arb. Forum July 28, 2013)(“the at-issue domain names are nothing less than intentional misspellings of Complainant’s trademark and are not materially distinguishable therefrom for the purposes of Policy ¶4(a)(i)”); Nat’l Academy of Recording Arts & Sciences, Inc. v. Argo Technologies LLC, FA0811001232078 (Nat. Arb. Forum Dec. 19, 2008) (“The Panel finds that adding one letter to a mark does not sufficiently distinguish a domain name from that mark”); and L’Oréal v. van der Linden, DNU2012-0001 (WIPO Feb. 15, 2012) (“It is also well established that the addition of the ccTLD denomination to a trademark is irrelevant and does not change the likelihood of confusion between a domain name and a registered trademark”).
See also Justin.tv, Inc. v. he shan, FA1303001488483 (Nat. Arb. Forum April 17, 2013) (“Respondent’s <twicth.tv> domain name is confusingly similar to Complainant’s TWITCHTV mark because it incorporates the entire mark, merely transposing 2 letters and adding the gTLD “.tv,” replacing the “TV” in Complainant’s mark); Twitch Interactive, Inc. v. xie huijie, FA1501001599255 (Nat. Arb. Forum Feb. 12, 2015) (finding <twtich.tv> confusingly similar to TWITCHTV and noting “the addition of punctuation is an irrelevant change under Policy ¶4(a)(i)”); and Justin.tv, Inc. v. heshan, FA1112001418422 (Nat. Arb. Forum Jan. 16, 2012) (finding <twich.tv> confusingly similar to TWITCHTV).
In fact, the domain name <twiitch.tv> was chosen by Respondent precisely because it is confusingly similar to and easily mistaken for Complainant’s TWITCHTV trademark and Complainant’s <twitch.tv> URL.
Under these circumstances, Paragraph 4(a)(i) of the UDRP, requiring that the domain name at issue be "identical or confusingly similar to a trademark or service mark in which the complainant has rights" is clearly satisfied.
B. NO RIGHTS OR LEGITIMATE INTERESTS IN DOMAIN NAME (ICANN Rule 3(b)(ix)(2) and ICANN Policy ¶4(a)(ii):
Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services; Respondent is not making a noncommercial fair use of the disputed domain names; and Respondent has never been known as or referred to as “TWITCH” or “TWITCHTV” or any variation thereof. As a result, Respondent does not have a legitimate interest in the disputed domain name, as legitimate interests are defined in Paragraphs 4(c)(i)-(iii) of the UDRP.
WHOIS identifies Respondent as xie huijie. Respondent is not commonly known by Complainant’s TWITCH or TWITCHTV trademarks. Respondent is not affiliated with Complainant in any way. Respondent is not licensed by Complainant to use Complainant’s TWITCH or TWITCHTV marks. Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods or services. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (finding no rights or legitimate interests where there was nothing in the record to indicate that Respondent was commonly known by the domain name); and Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶4(c)(ii) does not apply).
The landing page for <twiitch.tv> displays fake error messages that warn users to download upgrades to their software. Clicking on upgrade links generates malware warnings. The landing page for <twiitch.tv> also displays various offers and schemes.
Using a domain that is confusingly similar to Complainant’s famous TWITCH and TWITCHTV trademarks to deliver malware is not a legitimate use. See Google Inc. v. Petrovich, FA 1339345 (Nat. Arb. Forum Sep 23, 2010) (“Respondent’s failure to make an active use of the disputed domain names except for the purpose of downloading malicious computer software is not a use in connection with a bona fide offering of goods and services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii)”); Dell v. tawnya grilth c/o dellpc.us, FA 1400620 (Nat. Arb. Forum Sept. 1, 2011) (finding that use of the disputed domain name to offer downloads of software that contain malware is not a bona fide offering of goods or services under Policy ¶4(c)(ii) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶4(c)(iv)); Twitch Interactive, Inc. v. xie huijie, FA1501001599255 (Nat. Arb. Forum Feb. 12, 2015) (“Such conduct, attempting to download malware onto unsuspecting Internet users computers, demonstrates a lack of rights and legitimate interests in a disputed domain name”); and Grappone TS, Inc. v. Zhu, FA 1424557 (Nat. Arb. Forum, Feb. 29, 2012) (finding that use of a disputed domain name to host a website that contains viruses is not a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶4(c)(iii)).
Furthermore, Respondent’s use of a domain name that is confusingly similar to Complainant’s TWITCH and TWITCHTV trademarks to attract consumers to unrelated offers is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶4(c)(iii). See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum, Jan. 7, 2002)(finding no bona fide offering of goods or services where Respondent used Complainant’s mark without authorization to attract Internet users to its website); and Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)(no rights or legitimate interest found where respondent did not apply for permission or license from complainant to use mark, nor was respondent commonly known by the mark).
For the above reasons, the Respondent has no rights or legitimate interests in the disputed domain name.
C. REGISTRATION AND USE IN BAD FAITH (ICANN Rule 3(b)(ix)(3) and ICANN Policy 4(a)(iii)):
Respondent registered the disputed domain name in bad faith.
At the time that Respondent registered the disputed domain name, Complainant’s Twitch service already had millions of users and was well-known. As such, it is clear that Respondent registered the disputed domain name with knowledge of Complainant’s rights, and intended to attract Internet users who mistype Complainant’s URL. Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights is evidence of bad faith registration and use with regard to Policy ¶4(a)(iii). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002)(finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); and Skype v. Caruso, FA1202001431445 (Nat. Arb. Forum May 4, 2012)(“Respondent’s actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name further evidences Respondent’s bad faith under Policy ¶4(a)(iii)”).
Respondent’s distribution of malware using the disputed domain is further evidence of bad faith use and registration under the Policy. See Google Inc. v. Petrovich, FA 1339345 (Nat. Arb. Forum Sept. 23, 2010) (finding bad faith registration and use of a contested domain name under Policy ¶4(b)(iv) where the domain name resolved to a website that distributed malware); Microsoft Corp. v. ABK et al., FA1211001473573 (Nat. Arb. Forum Jan 21, 2013)(“Respondent is also disrupting Complainant’s business by causing the public to associate Complainant’s [sic] with Respondent’s malware warnings, potentially malicious download links, and survey/offer schemes that contain no privacy policies and lack reliable contact information”); Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (use of the disputed domain name for fraudulent purposes constituted bad faith); and Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use where it fraudulently attempted to acquire the personal and financial information of Internet users through the use of a domain name confusingly similar to a competing mark).
Furthermore, Respondent has engaged in the practice of typo-squatting by intentionally registering a domain name that is a misspelling of Complainant’s TWITCH and TWITCHTV trademarks, with the intent to divert Internet users for commercial gain. Previous Panels have found that typo-squatting constitutes bath faith registration and use pursuant to the Policy. See Yahoo, Inc.! v. Zviely, et al., FA 162060 (Nat. Arb. Forum July 24, 2003) (typosquatting constitutes bad faith registration and use); Nat’l Ass’n of Prof’l Basketball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”); and L.L. Bean, Inc. v. Cupcake Patrol, FA 96504 (Nat. Arb. Forum Mar. 12, 2001) (finding that Respondent acted in bad faith by establishing a pattern of registering misspellings of famous trademarks and names).
Furthermore, by using Complainant’s TWITCH and TWITCHTV marks to promote Respondent’s downloads and unrelated offers, Respondent has attempted to commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s trademark, and this conduct of diversion shows bad faith registration and use pursuant to Policy ¶4(b)(iv). See V Secret Catalogue, Inc. v. Bryant Little, FA 301728 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶4(b)(iv)”). See also Microsoft Corp. v. Lafont, FA1009001349611 (Nov. 9, 2009) (“intentional appropriation of Complainant’s mark to mislead Internet users and subsequently profit from them reveals bad faith registration and use under Policy ¶4(b)(iv)”); G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶4(b)(iv) where the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); and Crocs, Inc. v. Chustz, FA0706001002536 (Nat. Arb. Forum July 24, 2007) (finding bad faith where Respondent’s use of Complainant’s mark in its domain was “capitalizing on the illusion of direct affiliation with Complainant’s business and goodwill”).
Furthermore, Respondent has been previously found to have acted in bad faith in at least one prior adverse UDRP decision, and the decision involved Complainant’s TWITCHTV mark: Twitch Interactive, Inc. v. xie huijie, FA1501001599255 (Nat. Arb. Forum Feb. 12, 2015) (finding that Respondent registered <twtich.tv> in bad faith). This evidences a pattern of conduct and is further evidence of bad faith. See Provide Commerce, Inc. v. Jardimar Holdings Corp / Charingola, FA1305001502077 (Nat. Arb. Forum June 27, 2013)(“the existence of previous UDRP decisions where Respondent was found to have registered a domain name in bad faith reveals Respondent’s pattern of cybersquatting behavior”); Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cyber-squatting); and Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”).
Furthermore, Respondent has engaged in a pattern and practice of registering typo-squatted names that reflect famous online brands, e.g. YOUTUBE (<houtube.com>, <you5ube.com), GOOGLE (<googlw.co.uk>, <gogole.co.in> and TWITTER (<twittef.com>, <twitterl.com), and this is further evidence of bad faith.
Based on the foregoing, Respondent registered the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 owns the TWITCHTV mark through its registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 4,230,874, registered October 23, 2012). Complainant uses the TWITCHTV mark in connection with its live video platform and community for gamers. The registration of a mark with a governmental trademark authority is normally sufficient to establish rights in the mark pursuant to Policy ¶4(a)(i), even when Respondent does not reside in the country where the mark is registered. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶4(a)(i)); see also 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). All Complainant has to do is establish SOME rights at this point, not that Complainant’s rights are superior to Respondent’s rights. There is no reason to deviate from the general rule in this case. Complainant’s USPTO registration is sufficient evidence under Policy ¶4(a)(i).
Complainant claims the <twiitch.tv> domain name is confusingly similar to its TWITCHTV mark. The disputed domain name contains Complainant’s mark in full, adds a single character “i” to create a common misspelling, and adds a period prior to “TV” to create the ccTLD “.tv.” The ccTLD “.tv” represents Tuvalu. Generally speaking, domain names that differ by only one character from a complainant’s trademark have a high probability of confusing similarity, especially if they start with the same first couple of letters. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive). The addition of a ccTLD does not adequately distinguish the disputed domain name from the registered mark. See World Wrestling Fed'n Entm't, Inc. v. Rapuano, DTV2001-0010 (WIPO May 23, 2001) (“The addition of the country code top level domain (ccTLD) designation <.tv> does not serve to distinguish [the disputed domain] names from the complainant’s marks since ‘.tv’ is a common Internet address identifier that is not specifically associated with Respondent.”). The disputed domain name is confusingly similar under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name because the WHOIS record for the disputed domain name does not reflect any relationship between Respondent’s name and the domain name. The WHOIS information for the disputed domain name lists “xie huijie” as the registrant of record, which bears no relationship to <twiitch.tv>. Complainant never authorized Respondent to use the TWITCHTV trademark. In the absence of any evidence to the contrary, this record establishes Respondent’s lack of rights to the disputed domain name according to Policy ¶4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. 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).
Complainant claims Respondent’s lack of rights or legitimate interests in the <twiitch.tv> domain name is demonstrated by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent uses the <twiitch.tv> domain name to deliver malware through fake error messages to unsuspecting visitors, which can hardly be called a bona fide use of a domain name offering of goods or services or a legitimate noncommercial or fair use under Policy ¶4(c)(i) and Policy ¶4(c)(iii). 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)”). Under these facts, it is evident Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent has been previously found to have acted in bad faith in at least one prior adverse UDRP decision, which demonstrates bad faith registration and use under Policy ¶4(b)(ii). See Twitch Interactive, Inc. v. xie huijie, FA1501001599255 (Nat. Arb. Forum Feb. 12, 2015) (finding that Respondent registered <twtich.tv> in bad faith). This Panel disagrees. UDRP Policy ¶4(b)(ii) requires Respondent to have “registered the domain name in order to prevent the owner of the trademark … from reflecting the mark in a corresponding domain name…” . Complainant does not claim it has been prevented from obtaining a domain name incorporating Complaint’s mark. In fact, Complainant owns the <twitch.tv> domain. Any party to a proceeding is entitled to present its defense. Some defenses are better than others. Just because a party has lost in a prior UDRP proceeding does not mean they should lose in their next proceeding ipso facto.
Complainant claims Respondent has attempted to commercially benefit from a likelihood of confusion with Complainant and has used the disputed domain name to distribute malware, which is evidence of bad faith under Policy ¶4(b)(iv). Respondent uses Complainant’s TWITCHTV mark to promote Respondent’s malware downloads and unrelated offers to commercially benefit from the goodwill associated with Complainant’s trademark. The offering of unrelated services and malicious software demonstrates bad faith registration and use pursuant to Policy ¶4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness); see also Google, Inc. v. Petrovich, FA 1339345 (Nat. Arb. Forum September 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶4(b)(iv)). Respondent has engaged in bad faith registration and use under Policy ¶4(b)(iv).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <twiitch.tv> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, March 30, 2015
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