Tetris Holding, LLC v.
Tetris User Group
Claim Number: FA0610000823282
PARTIES
Complainant is Tetris Holding, LLC (“Complainant”), represented by Jeanne
Hamburg, of Norris, McLaughlin & Marcus, P.A.,
875 Third Avenue, 18th Floor, New York, NY 10022. Respondent is Tetris User Group (“Respondent”), Norde Bjoroy, 5177 Bjoroyamn
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tetris.org>, registered with Network
Solutions LLC.
PANEL
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.
Roberto A. Bianchi as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on October 19, 2006; the
National Arbitration Forum received a hard copy of the Complaint on October 23, 2006.
On October 19, 2006, Network Solutions LLC confirmed by e-mail to
the National Arbitration Forum that the <tetris.org> domain name is
registered with Network Solutions LLC and
that the Respondent is the current registrant of the name. Network
Solutions LLC has verified that Respondent is bound by the Network Solutions LLC registration agreement
and has thereby agreed to resolve domain-name disputes brought by third parties
in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On October 30, 2006, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of November 20, 2006 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@tetris.org by e-mail.
A timely Response was received and determined to be complete on November 20, 2006.
On November 27, 2006 The Forum received an Additional Submission from
Complainant. The submission was timely, pursuant to The Forum’s Supplemental
Rule # 7. Respondent did not reply to Complainant’s Additional Submission.
On November 29, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Roberto A Bianchi as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant’s summarized contentions are as follows:
-
The
Complainant Tetris Holding, LLC has rights in the world famous Tetris puzzle
video game and in the TETRIS mark. Complainant has numerous licensees who sell
the Tetris Game to consumers throughout the world in mobile phones, electronic
handheld games, video consoles, etc.
-
The
subject domain name is identical to Complainant’s TETRIS mark and registration.
-
Respondent
has no rights to or legitimate interests in the mark TETRIS. Even without
notice of this dispute Respondent was aware of Complainant and its rights.
Therefore, any preparation to use the domain name without authorization from
Complainant cannot create a legitimate right or interest in the domain name.
Respondent’s complete failure to use the domain name through the date of the
complaint is evidence of its lack of any legitimate purpose. Respondent is not
a licensee of Complainant. There is no legitimate justification for
Respondent’s registration of the disputed domain name.
-
Respondent
registered the domain name in bad faith. From Complainant’s trademark
registration and advertising and promotional efforts, Respondent had full
knowledge and was fully aware of the TETRIS mark and its fame and valuable
goodwill. One can reasonably conclude that Respondent’s application and
subsequent registration of the domain name was in bad faith. Respondent is not
currently using the subject domain name in connection with any content, and its
past use of the domain name involved the distribution of infringing TETRIS
games. In using the <tetris.org> domain name, Respondent is
unquestionably, and in bad faith, trading off the goodwill Tetris has amassed
through decades of use. In doing so, it has undoubtedly confused the public as
to its association with Tetris.
B. Respondent
Respondent’s summarized contentions are as follows:
-
Respondent
does not infringe on Complainant’s mark. U.S and Norwegian patent offices state
that trademarks protect the use of marks in commerce. Respondent never used the
mark in commerce. Respondent never received any complaints from Complainant
while there was some content posted on the <tetris.org> website,
except for a complaint last year about the phrase “www.tetris.org” appearing at
the top of the web page. That was a mistake Respondent was not aware of, and
the legend was later removed.
-
Some
students enthusiastic about the falling blocks game established the Tetris User
Group as a club in 1990. At the time the domain name was registered (1996 or
1997) it was very uncommon for commercial organizations to register “.org” addresses,
and Respondent believed that any site with the “.org” suffix would be
considered idealistic. Having the small club of fans of the Tetris game it
seemed right to Respondent to register the domain name at issue. At that time
Respondent had not heard of domain name piracy cases, and the Internet was not
a big commercial network. Until some time in the late 1990’s the Tetris
trademark was not being enforced, and there were several implementations of the
game not licensed to Elorg or The Tetris Company, including GNU versions
distributed with Linux, Bogus Software Tetris and Microsoft.
-
When The
Tetris Company began demanding licenses, most Tetris games disappeared,
Respondent’s site was not up and running. The site has never had working
content after 1998/1999. So Respondent strongly disagrees that the domain name
was registered in any bad faith, and the word Tetris seemed to be in the public
domain.
-
In 1995
Respondent was contacted by telephone by counsel for The Tetris Company.
Respondent explained counsel that it had not harmed the company’s business, and
had never intended to. It also said it would be willing to redirect the <tetris.org>
website to web sites with content accepted by The Tetris Company. Counsel
replied that this proposal would be discussed with the client.
C. Additional Submission
In its Additional Submission, Complainant contends that Respondent’s
registration of a domain name that connects to an inactive URL – moreover with
one previously linked to copyright infringements of the TETRIS video game –
confuses the public as to its association with the TETRIS marks, and is an
activity prohibited by the
FINDINGS
The Panel is satisfied that Complainant has shown that it has U.S.
trademark rights in the TETRIS mark, as evidenced per the following USPTO
trademark certificates: Reg. No. 1,657,499 (registered September 17, 1991),
covering games and playthings, etc. of International Class 28; Reg. No.
2,362,238 (registered June 27, 2000), covering video game cartridges and
software, playing video games, etc. of International Classes 9, 16 and 25, and
Reg. No. 2,362,250 (registered June 27, 2000), covering video game cartridges
and software, clothing, hand-held video games, etc. Complainant has also
submitted a detailed list of its TETRIS trademark registrations in more than 50
countries, including
Respondent registered the <tetris.org> domain name on
October 23, 1997.
Apparently in April 1999 Respondent received a demand from counsel for
Internet Communications (ICOM) of
Beginning in the fall of 2005, Tetris sent demand letters to Respondent’s
administrative contact, Mr. Bjoroy, requiring that content associated with the
<tetris.org> domain name be removed. Following these protests, Mr.
Bjoroy removed the content from the <tetris.org> website.
The Panel finds that the domain name is identical to the TETRIS mark,
that the Respondent has no rights or legitimate interest in the domain name,
and that the domain name was registered and is being used in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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 disputed domain name fully incorporates the TETRIS mark, in which
Complainant has rights. The addition of the “.org” gTLD does not suffice to
distinguish the domain name from the mark. For its part, Respondent states that
it is true that the domain name is identical to the registered TETRIS
trademark. Therefore, the first
requirement of the Policy is met.
As Complainant has made out a prima facie
showing that Respondent has no rights or legitimate interests in the disputed
domain name, Respondent must come forward with evidence that it has rights or
legitimate interests in the domain name. See Commerce LLC v. Hatcher,
FA 105749 (Nat. Arb. Forum Apr. 9, 2002).
Respondent has not contested
that its past use of the disputed domain name consisted of posting illegal
versions of the Tetris software or game on the web site. Although Respondent
argues that in those days several versions of the game were in the public
domain, Respondent had to cease in this activity in compliance with a request
from the owner of the intellectual property rights in the Tetris game. Thus,
Respondent appears to implicitly have conceded that its use of the domain name
was not legitimate. In any case, infringing intellectual property cannot be
regarded as a bona fide offering pursuant to Policy ¶ 4(c)(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”).
Respondent has not alleged that it was
“commonly known” by the domain name. The Response states that the Respondent is
a group until recently called “Tetris User Group”, because its members were
enthusiastic players of the Tetris falling blocks game. According to the
Response, the group’s name should now read “Falling Blocks Game User Group”,
due to the lack of license to use the name of the game. In observing that this
group can change its name without effort, the Panel notes that being “commonly
known” means that third parties – uncontrolled by a respondent – do in fact
know or call an individual or an entity by a certain name. There is no evidence
on the record of this fact. Accordingly, Policy ¶ 4(c)(ii) cannot apply (“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”).
As to the present use of the domain name,
there is no content posted on the website under the disputed domain name. Respondent submits that it presently is using
the domain name for legitimate, noncommercial communication purposes between
the members of the group by employing mostly the SMTP protocol. If the Panel
has understood Respondent’s pleading well, the domain name at issue is
allegedly being used in “@tetris.org” email addresses for the club members.
However Respondent also states that he is not willing to furnish the other
Party details about the members of this group for privacy reasons. In refusing
to provide concrete evidence in this proceeding, such as a list of the members
of the group with their names and email addresses allegedly containing the
domain name in dispute, the Respondent failed to prove its contention that the
group is really using the <tetris.org> domain name for their
communications. Respondent has not shown that it is “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”,
pursuant to Policy ¶ 4(c)(iii).
Nor has Respondent proven its assertion that
the word “Tetris” was in the public domain in 1996 or 1997, i.e. that the
“TETRIS” mark had become generic and, therefore, had lost protection, or that
the TETRIS mark was not being enforced at the time of the registration of the
domain name. For its part, Complainant has proven that the TETRIS mark was
registered in 1991, predating the registration of the disputed domain name, and
that the first use of the TETRIS U.S. mark was made in June 1989.
For all these reasons, the Panel concludes
that Respondent lacks rights or legitimate interests in the domain name at
issue.
It is not disputed that Respondent had full knowledge of the Tetris falling blocks game and of the “TETRIS” name and mark when it registered the domain name at issue. The Panel also notes that Complainant’s licensee The Tetris Company registered the <tetris.com> domain name on May 20, 1997, before Respondent registered the instant domain name. Thus, Respondent is likely to have known the previous registration of <tetris.com>.
Contrary to Respondent’s suggestion, one cannot automatically ascribe “idealism” or good faith to a registrant simply because it registers an “.org” domain name, instead of a “.com” or “.net” domain name. On the other hand, bad faith must consist of some objective criterion; otherwise it would suffice for every respondent to allege good faith, or for every complainant to allege bad faith.
The Policy does not contain a general definition of bad faith. It merely provides a few examples of bad faith registration and use, stating that this list is not exhaustive. Respondent’s registration and use of the domain name does not appear to fit within any of Policy ¶¶ 4(b)(i), (ii) or (iii). There is also no evidence that Respondent’s use of the domain name was “for commercial gain”. Accordingly, Policy ¶ 4(b)(iv) does not apply. However, following registration, Respondent posted illegal versions of the Tetris software on its website. Respondent has implicitly admitted this by removing all content at Complainant licensee’s demand in 1999. Independently of any subjective impression of Respondent, the instant domain name – fully incorporating Complainant’s mark TETRIS - must have attracted Internet users to Respondent ‘s website and to the illegal software posted by Respondent, apparently without cost. At least initially those users - must likely have believed they were connecting to a website owned or controlled by Complainant. In addition, there has been no allegation or evidence that a disclaimer was ever posted on Respondent’s website, warning that the site was unrelated to Complainant. Obviously all these circumstances must have been in Respondent’s mind at the time of registration.
There presently appears to exist no active content on Respondent’s website, but this does not erase the fact that infringing content was posted in the past, and that it was removed only after Complainant’s licensees so demanded. The Panel believes that knowingly posting content in violation of intellectual property of others is a bad faith use, even without a purpose of “commercial gain.”
As there is no evidence of present use, or demonstrable preparations to use, the website under the disputed domain name, its present, passive use amounts to bad faith. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding that “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”). Respondent has not established any credible basis for concluding that a future, likely use of the domain name would be different from its past bad faith use. Accordingly, the Panel finds that the domain name was registered and is being used in bad faith.
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 <tetris.org> domain name be TRANSFERRED
from Respondent to Complainant.
Roberto A. Bianchi, Panelist
Dated: December 13, 2006
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