DECISION

 

Psyonix Inc. v. robert gray / notpsyonix

Claim Number: FA1711001759780

 

PARTIES

Complainant is Psyonix Inc. (“Complainant”), represented by Ben Wagner of Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C., California, USA.  Respondent is robert gray / notpsyonix (“Respondent”), Colorado, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <psyonix-rocketleague.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on November 22, 2017; the Forum received payment on November 22, 2017.

 

On November 27, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <psyonix-rocketleague.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 November 28, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 19, 2017 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@psyonix-rocketleague.com.  Also on November 28, 2017, 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 December 20, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant:

1.    Complainant was founded in 2001 by Dave Hagewood, a pioneer both of the internet and of video game development. Complainant has hit games spanning over a decade, including its 2014 release of the ROCKET LEAGUE video game at the center of this Complaint. Complainant registered the ROCKET LEAGUE mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,958,871, registered May 17, 2016). See Compl. Annex 4. Complainant also has common law rights in the PSYONIX mark as Complainant has been at the center of the press worldwide since the release of its smash-hit Rocket League, selling over 10 million copies, totaling 36 million registered users and grossing over $110 million worldwide. See Compl. Annex 9 & 11. Further, a sampling of articles from 2015 to 2017 shows that the PSYONIX trademarks have been extensively used by Complainant, are associated with Complainant amongst the consuming public, and span broadly in the United States and worldwide. Id. Respondent’s <psyonix-rocketleague.com> domain name is identical or confusingly similar to Complainant’s mark as it contains both of Complainant’s marks separated only by a hyphen.

2.    Respondent has no rights or legitimate interests in the <psyonix-rocketleague.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain to host a phishing site that clones Complainant’s <rocketleague.com>, purports to be an official page of Complainant while displaying the PSYONIX logo in the top left corner of the webpage. Compare Compl. Annex 6 with Compl. Annex 7.

3.    Respondent registered and uses the <psyonix-rocketleague.com> domain name in bad faith. Respondent uses the domain name’s resolving webpage to pass off as Complainant to further a phishing scam that could be monetized for Respondent’s own gain. See Compl. Annex 7. Further, Respondent clearly had knowledge of Complainant’s rights in two marks as the registration of an arbitrary name of a video game company combined with the well-known name of its most popular game is simply impossible to happen by mere chance.

 

B.   Respondent:

1.    Respondent failed to submit a response in this proceeding.

 

FINDINGS

1.    Respondent’s <psyonix-rocketleague.com> domain name is confusingly similar to Complainant’s ROCKET LEAGUE mark.

2.    Respondent does not have any rights or legitimate interests in the <psyonix-rocketleague.com> domain name.

3.    Respondent registered or used the <psyonix-rocketleague.com> domain name in bad faith.

 

DISCUSSION

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(f), 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 (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.”).

 

Identical and/or Confusingly Similar

Complainant claims to have registered the ROCKET LEAGUE mark with the USPTO (e.g. Reg. No. 4,958,871, registered May 17, 2016). See Compl. Annex 4. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the ROCKET LEAGUE mark for the purposes of Policy ¶ 4(a)(i).

 

Complainant also claims to hold common law rights in the PSYONIX mark and does not currently hold a trademark registration. Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). Complainant claims common law rights based on having been at the center of the press worldwide since the release of its Rocket League game, selling over 10 million copies, totaling 36 million registered users and grossing over $110 million worldwide. See Compl. Annex 9 & 11. Further, Complainant provides a sampling of articles from 2015 to 2017, which shows that the PSYONIX trademarks have been extensively used by Complainant, are associated with Complainant amongst the consuming public worldwide. Id. The Panel finds that Complainant does hold common law rights in the PSYONIX mark for the purposes of Policy ¶ 4(a)(i).

 

Complainant next argues that Respondent’s <psyonix-rocketleague.com> domain name is identical and confusingly similar to Complainant’s marks as it contains both of Complainant’s marks separated only by a hyphen. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Hewlett-Packard Development Company, L.P. v. Yangxiaoyi / Qingyuan Tianheng Trading Company Ltd., FA 1625637 (Forum June 23, 2015) (“The combination of a complainant’s mark does not allow a respondent to avoid a finding of confusing similarity under Policy ¶4(a)(i).”); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). The Panel also finds that appending a generic top-level domain (“gTLD”) is irrelevant to the analysis. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel therefore finds that the <psyonix-rocketleague.com> domain name is identical or confusingly similar to both of Complainant’s marks under Policy ¶4(a)(i).

 

 

Rights or Legitimate Interests

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 (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 (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 contends that Respondent has no rights or legitimate interests in the <psyonix-rocketleague.com> domain name.  Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “robert gray / notpsyonix” as the registrant.  See Compl. Annex 14. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the marks. Panels may use these assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. Accordingly, the Panel agrees that Respondent is not commonly known by the <psyonix-rocketleague.com> domain name under Policy ¶ 4(c)(ii).

 

Complainant argues that Respondent uses the domain to host a phishing site that clones Complainant’s <rocketleague.com>, purports to be an official page of Complainant while displaying the PSYONIX logo on the resolving webpage. Passing off as a complainant to further a phishing scheme can evince a failure to provide a bona fide offering of goods or services or legitimate noncommercial or fair use. See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Google Inc. v. Pritam Singh / Pandaje Technical Services Pvt Ltd., FA 1660771 (Forum March 17, 2016) (agreeing that respondent has not shown any bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii) as the respondent used the complainant’s mark and logo on a resolving website containing offers for technical support and password recovery services, and soliciting Internet users’ personal information). Complainant provides screenshots of both its own website along with Respondent’s, which confirm Complainant’s assertions of passing off. Compare Compl. Annex 6 with Compl. Annex 7. The Panel finds that Respondent uses the domain name to host an identical webpage, potentially in furtherance of a phishing scheme, failing to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).

 

Registration and Use in Bad Faith

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which bad faith may be found.  See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).  The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another.  See, e.g., Match.com, LP v. BillZag and NWLAWS.ORG, D2004-0230 (WIPO June 2, 2004).  While Complainant has not made any arguments that would fit within the bounds of Policy ¶ 4(b) elements, the Panel therefore considers Respondent’s actions under a nonexclusive inquiry of Policy ¶ 4(a)(iii).

 

Complainant argues that Respondent registered and uses the <psyonix-rocketleague.com> domain name in bad faith as it uses the disputed domain name to engage in a phishing scheme intended to defraud users. Phishing schemes can evince bad faith registration and use. See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”). As noted previously, Complainant provides screenshots of its own webpage along with Respondent’s, which appear to be identical as to the content they display. Compare Compl. Annex 6 with Compl. Annex 7. Accordingly, the Panel agrees with Complainant’s assertions of passing off and phishing and hold that Respondent registered and uses the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).

 

Further, Complainant claims that Respondent had actual knowledge of Complainant’s marks. Actual knowledge of a complainant’s rights in a mark prior to registering a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent clearly had knowledge of Complainant’s rights in two marks as the registration of an arbitrary name of a video game company combined with the well-known name of its most popular game is simply impossible to happen by mere chance. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <psyonix-rocketleague.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  January 3, 2018