Playworld Systems, Inc. v. Domain Manager / Giant Distributors Inc.
Claim Number: FA1504001613470
Complainant is Playworld Systems, Inc. (“Complainant”), represented by Michael A. Doctrow of McNees Wallace & Nurick LLC, Pennsylvania, USA. Respondent is Domain Manager / Giant Distributors Inc. (“Respondent”), represented by Matthew H. Swyers of The Trademark Company, PLLC, Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <playworld.com>, registered with Wild West Domains, LLC.
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.
Francine Siew Ling Tan as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 8, 2015; the Forum received payment on April 8, 2015.
On April 8, 2015, Wild West Domains, LLC confirmed by e-mail to the Forum that the <playworld.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 9, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 29, 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@playworld.com. Also on April 9, 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.
A timely Response was received and determined to be complete on April 29, 2015.
A timely Additional Submission was submitted by Complainant and received on May 1, 2015.
On May 11, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Francine Siew Ling Tan 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant manufactures and sells commercial-grade playground, recreation and fitness equipment. The trade name “Playworld Systems” was used since 1971. Its PLAYWORLD SYSTEMS trademark was first used in Canada and in the U.S. in 1993 and 1988, respectively; registrations of the mark were secured in Canada in 2008, and in the U.S. in 1989.
The PLAYWORLD trademark was first used by Complainant in Canada and in the U.S. in 1993 and 2004, respectively; registrations of the mark were secured in Canada in 2009, and in the U.S. in 2008.
Complainant owns and maintains the domain name <playworldsystems.com> which was registered on June 11, 1996.
As a result of continuous and pervasive use, the PLAYWORLD and PLAYWORLD SYSTEMS marks have become well known.
The disputed domain name was registered on October 30, 1997, almost a decade after Complainant’s first use of the PLAYWORLD SYSTEMS trade mark.
The disputed domain name is confusingly similar to Complainant’s PLAYWORLD SYSTEMS trade mark and identical to its PLAYWORLD trade mark.
Respondent has no rights or legitimate interests in the disputed domain name and this is supported by the following facts:
(i) Respondent is not commonly known by the disputed domain name. The WHOIS records indicate that Respondent is “Domain Manager” at “Giant Distributors Inc.”.
(ii) Respondent is not associated with any business or individual with a name containing the disputed domain name or Complainant’s PLAYWORLD marks.
(iii) Respondent has not been authorized by Complainant to use the disputed domain name or Complainant’s PLAYWORLD marks.
(iv) Respondent’s use of the disputed domain name is not a bona fide offering of goods or services, nor is its use a legitimate noncommercial or fair use. Respondent’s website to which the disputed domain name resolves is a parked website that contains links to the websites of third-party businesses, some of which are playground equipment manufacturers and distributors offering goods and services that compete with Complainant’s. Respondent likely receives click-through fees from Internet users who clicks on these links.
(v) A generic offer to sell the disputed domain name is displayed on the Respondent’s website.
Respondent has registered and is using the disputed domain name in bad faith. Between October 2014 and March 2015, Complainant and Respondent engaged in discussions regarding the disputed domain name. Respondent stated that it was not willing to accept an offer less than US$120,000 for the disputed domain name. Complainant refused to pay the amount demanded, after which Complainant noticed that Respondent parked the disputed domain name with Sedo, and more recently, SmartName. The domain parking provider operates the resolving website, which contains links misdirecting visitors to a variety of Complainant’s competitors. A cease and desist letter was sent to Respondent by Complainants in March 2015, with a demand for Respondent to remove from its website any links leading to third-party sites offering goods or services identical to or closely related to those sold by Complainant. No response was received.
Respondent is therefore knowingly and intentionally unfairly competing with Complainant and trying to compel Complainant to purchase the disputed domain name. The offer for sale of the disputed domain name for far more than the out-of-pocket costs of registering and maintaining the domain name demonstrates bad faith. Respondent has also acted in bad faith in falsely representing through its registration and renewal that the disputed domain name will not infringe on the rights of any third party (per paragraph 2 of the Policy).
B. Respondent
No submissions were made in relation to paragraph 4(a)(i) of the Policy.
Respondent has rights or legitimate interests and has not registered the disputed domain name in bad faith. Respondent owned 45% shares in a company known as Playworld Network Corporation (“PNC”) which began operations in late 1996 or early 1997. It began developing online animated characters for use in connection with a cybermall and online theme park for kids in the toy industry. In July 1996, PNC registered the domain <playworld.net>. In 1997, the disputed domain name was used to redirect traffic to the site at www.playworld.net. By December 1998, PNC was selling toys online.
In 2002, PNC decided to cease operations and take its primary website down. Around 2002 to 2003, Respondent learned about Complainant and contacted them to inquire if they would like to buy the disputed domain name. Complainant allegedly expressed no interest. Between 2008 and 2010, a third party contacted Respondent and offered $80,000 for the disputed domain name. Respondent declined the offer, with the intention of starting a new business in the future. Around November 2014, Complainant contacted Respondent regarding the purchase of the disputed domain name and offered only $30,000. Respondent declined the offer, after which it posted the domain name with a parking service whilst it considered what business it would like to proceed with. It was the decision of the parking service to place text link advertisements for third-party advertisers.
Complainant’s claims should be barred by the doctrine of laches. For a period of 17 years, Complainant delayed in bringing forward the proceeding.
C. Additional Submissions
Complainant’s claims are not barred by the doctrine of laches as it does not generally apply under the Policy. In any event, there is no evidence that any purported delay was unreasonable or that Respondent suffered because of it.
Respondent, as the owner of the disputed domain name, is responsible for the activities on the resolving site. The discovery of this bad faith use by Complainant was in March 2015
Complainant is not aware of the alleged contact Respondent made between 2002 and 2003 to Complainant.
(a) The disputed domain name is identical to the PLAYWORLD trade mark and confusingly similar to the PLAYWORLD SYSTEM trade mark, both of which marks Complainant has rights in.
(b) Respondent has no legitimate rights or interests in respect of the disputed domain name.
(c) The disputed domain name has been registered and 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 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.
The Panel is satisfied that Complainant has established it has trademark rights in PLAYWORLD and PLAYWORLD SYSTEMS and agrees that the disputed domain name is identical and/or confusingly similar to Complainant’s marks. It is a well-established principle that the generic top-level domain should be disregarded when considering whether a domain name is identical or confusingly similar to a trade mark. As Complainant’s PLAYWORLD mark is incorporated in its entirety in the disputed domain name and the omission of the word “systems” in relation to the PLAYWORLD SYSTEMS mark does not remove the confusion with Complainant’s marks, the Panel finds that paragraph 4(a)(i) of the Policy has been established.
It has been established by many previous UDRP panel decisions under that a complainant is required to establish a prima facie case of the respondent’s lack of rights or legitimate interests in the domain name at issue, after which the burden shifts to the respondent to show with evidence that it does have rights or legitimate interests. [See Hanna-Barbera Prods., Inc. v. Ent’mt Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sep. 25, 2006).]
Panel finds, without reference to Respondent’s response, that a prima facie case has been established by Complainant. Following from this, the burden is on Respondent to demonstrate it has rights or legitimate interests.
The Panel notes that for at least five years after registration, Respondent used and operated the disputed domain name in connection with its business. There is therefore some evidence that at that point in time, Respondent had rights or legitimate interests in the disputed domain name. The question then is whether the fact that rights or legitimate interests in a domain name may have existed initially or at one point in time, whether it precludes any finding of a lack of rights or legitimate interests further down the road, in this case, almost 20 years later. The Panel is of the view that such a finding is not precluded.
Paragraph 4(c) of the Policy sets out examples of circumstances, which if found by the Panel to exist, to demonstrate a respondent’s rights to and legitimate interests in a domain name:
“(i) before any notice to you of the dispute, your use of, or 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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”.
Respondent does not appear to have any substantive use of the disputed domain name, whether in connection with a business or otherwise, since around 2003. Although Respondent claims to have had an intention to start a business “in the future” (and presumably to use the disputed domain name in connection with that), no evidence of demonstrable preparations to use the domain name in connection with a bona fide offering of goods of services has been produced by Respondent. This gap spans over a term of about 10 years. Instead, around 2002/2003 and again in 2014, according to Respondent’s own account, it took steps to try to sell the disputed domain name to Complainant. In addition, after Complainant declined Respondent’s demand for $120,000 for the transfer of the disputed domain name, the latter parked it with a domain parking service which provided links from the resolving webpage misdirecting visitors to a variety of Complainant’s competitors. It is common knowledge that these services operate by providing the domain name registrant with “click through” revenue whenever an Internet user clicks on a sponsored link on the parking page. Whilst such practices are common and there is nothing inherently illegitimate about them, the activity of profiting from the deliberate linking of a parking page with the websites of competitors of a trademark owner does not demonstrate any legitimate interest in the domain name under the Policy (paragraph 4(c)(iii)). Neither has Respondent shown that it is “commonly known” by the disputed domain name.
The Panel accordingly finds that Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(a)(ii) of the Policy has been established.
Paragraph 2 of the Policy provides that:
“By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights.” (Emphasis added.)
Respondent has the said obligations with each renewal or with each request to the Registrar to maintain the disputed domain name. Prior to March 2015, Complainant had no objection to Respondent’s registration of the disputed domain name. The Complaint was filed only after Complainant discovered Respondent had parked the disputed domain name with the website displaying pay-per-click advertisements for competitors and the latter ignored and/or chose not to respond to Complainant’s demand for the removal of the offending links from the parking page.
The Panel finds that there is evidence of bad faith registration and use in the circumstances of this case. The bases for this finding follow.
The renewal of a domain name is, by reference to paragraph 2 of the Policy, equivalent to a new registration in certain circumstances (see paragraph 3.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“the WIPO Overview”)). The Policy provides clearly that there is a responsibility that a domain name registrant has, namely to determine whether the domain name registration infringes or violates someone else’s rights. The violation of Complainant’s rights in its trade marks was clearly in issue here and brought to Respondent’s attention by Complainant. Respondent did not deny having received Complainant’s letter of demand. Further, Respondent was, by 2002/2003, aware of Complainant and its interests in the PLAYWORLD and PLAYWORLD SYSTEMS marks. Respondent sought to extract a huge sum of money from Complainant for the disputed domain name; and after Complainant refused to pay the sum, the domain name was parked with a domain name parking service which operated the pay-per-click links to webpages of competitors of Complainant.
The Panel is of the view that by placing the disputed domain name with the domain name parking service, Respondent was deliberately trying to attract, for commercial gain, Internet users to the webpage created by the domain name parking service by “by creating a likelihood of confusion with [Complainant's] mark”. Pursuant to paragraph 4(b)(iv) of the Policy, this conduct constitutes bad faith registration and use under the Policy.
Respondent states that it was the decision of the parking service to place text link advertisements for third-party advertisers. The Panel is skeptical that Respondent is blameless or that it had no influence over the type of advertising that would appear. The amount of “click through” revenue that is generated is affected by the keywords that are associated with a domain name. In the absence of any explanation from Respondent as to how the links in this case were generated, the Panel accepts that Respondent had some involvement or influence in the selection process.
The Panel accordingly finds that Respondent has registered and is using the disputed domain name in bad faith.
Paragraph 4(a)(iii) of the Policy has been established.
The Panel is of the view that the doctrine of laches is not an applicable defense under the Policy (see Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum, February 13, 2006) and paragraph 4.10 of the WIPO Overview). What is relevant is Complainant has established a case on the merits under the requisite three elements of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <playworld.com> domain name be TRANSFERRED from Respondent to Complainant.
Francine Siew Ling Tan, Panelist
Dated: May 21, 2015
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