Gamestop, Inc. v. Above.com Domain Privacy
Claim Number: FA1207001452581
Complainant is Gamestop, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <agamestop.com>, <bamestop.com>, <bgamestop.com>, <ebgamees.com>, <ebgamrs.com>, <ebgamse.com>, <ebgeames.com>, <gamedstop.com>, <gamemstop.com>, <gameptop.com>, <gamesotop.com>, <gamesrtop.com>, <gamest0p.com>, <gamestaop.com>, <gamesto0p.com>, <gamestomp.com>, <gamestorp.com>, <gamestsop.com>, <gamestup.com>, <gamestyop.com>, <gamesytop.com>, <gametstop.com>, <gamewtop.com>, <gamezstop.com>, <gamkestop.com>, <gampstop.com>, <gamtstop.com>, <ganmestop.com>, <gsamestop.com>, <gzmestop.com>, <tgamestop.com>, <wgamestop.com>, <wwgamestop.com> and <ygamestop.com>, registered with Above.com Pty Ltd.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 10, 2012; the National Arbitration Forum received payment on July 10, 2012.
On Jul 11, 2012, Above.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <agamestop.com>, <bamestop.com>, <bgamestop.com>, <ebgamees.com>, <ebgamrs.com>, <ebgamse.com>, <ebgeames.com>, <gamedstop.com>, <gamemstop.com>, <gameptop.com>, <gamesotop.com>, <gamesrtop.com>, <gamest0p.com>, <gamestaop.com>, <gamesto0p.com>, <gamestomp.com>, <gamestorp.com>, <gamestsop.com>, <gamestup.com>, <gamestyop.com>, <gamesytop.com>, <gametstop.com>, <gamewtop.com>, <gamezstop.com>, <gamkestop.com>, <gampstop.com>, <gamtstop.com>, <ganmestop.com>, <gsamestop.com>, <gzmestop.com>, <tgamestop.com>, <wgamestop.com>, <wwgamestop.com> and <ygamestop.com> domain names are registered with Above.com Pty Ltd and that Respondent is the current registrant of the names. Above.com Pty Ltd has verified that Respondent is bound by the Above.com Pty Ltd 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 July 12, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 1, 2012 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@agamestop.com, postmaster@bamestop.com, postmaster@bgamestop.com, postmaster@ebgamees.com, postmaster@ebgamrs.com, postmaster@ebgamse.com, postmaster@ebgeames.com, postmaster@gamedstop.com, postmaster@gamemstop.com, postmaster@gameptop.com, postmaster@gamesotop.com, postmaster@gamesrtop.com, postmaster@gamest0p.com, postmaster@gamestaop.com, postmaster@gamesto0p.com, postmaster@gamestomp.com, postmaster@gamestorp.com, postmaster@gamestsop.com, postmaster@gamestup.com, postmaster@gamestyop.com, postmaster@gamesytop.com, postmaster@gametstop.com, postmaster@gamewtop.com, postmaster@gamezstop.com, postmaster@gamkestop.com, postmaster@gampstop.com, postmaster@gamtstop.com, postmaster@ganmestop.com, postmaster@gsamestop.com, postmaster@gzmestop.com, postmaster@tgamestop.com, postmaster@wgamestop.com, postmaster@wwgamestop.com, and postmaster@ygamestop.com. Also, on July 12, 2012, 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 August 7, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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 names be transferred from Respondent to Complainant.
A. Complainant’s Contentions
1. Complainant owns a trademark registration for the GAMESTOP mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No.1,707,460 registered Aug. 11, 1992) and a trademark registration for the GAMESTOP.COM mark with the USPTO (Reg. No. 2,489,084 registered Sept. 11, 2001). Complainant also owns trademark registrations for the EBGAMES.COM mark with the USPTO (e.g., Reg. No. 3,114,518 registered July 11, 2006) (collectively referred to as Complainant’s Marks”).
2. Complainant does business worldwide, including in Australia.
3. The <agamestop.com>, <bamestop.com>, <bgamestop.com>, <ebgamees.com>, <ebgamrs.com>, <ebgamse.com>, <ebgeames.com>, <gamedstop.com>, <gamemstop.com>, <gameptop.com>, <gamesotop.com>, <gamesrtop.com>, <gamest0p.com>, <gamestaop.com>, <gamesto0p.com>, <gamestomp.com>, <gamestorp.com>, <gamestsop.com>, <gamestup.com>, <gamestyop.com>, <gamesytop.com>, <gametstop.com>, <gamewtop.com>, <gamezstop.com>, <gamkestop.com>, <gampstop.com>, <gamtstop.com>, <ganmestop.com>, <gsamestop.com>, <gzmestop.com>, <tgamestop.com>, <wgamestop.com>, <wwgamestop.com> and <ygamestop.com> disputed domain names (the “Disputed Domain Names”) are confusingly similar to Complainant’s Marks.
4. The Disputed Domain Names are examples of typosquatted versions of Complainant’s Marks.
5. Respondent has not been commonly known by the Disputed Domain Names.
6. Respondent is not affiliated with Complainant in any way.
7. Complainant has not given Respondent permission to use Complainant’s Marks.
8. Respondent is using the Disputed Domain Names to redirect Internet users to websites featuring generic links to third-party websites.
9. Respondent is presumably receiving pay-per-click fees from these linked websites and is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use.
10. Respondent registered the Disputed Domain Names on February 13, 2008, which was significantly after Complainant’s registration of GAMESTOP on August 11, 1992 and after Complainant’s registration of EBGAMES.COM on July 11, 2006.
11. The Disputed Domain Names were registered and are used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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 has presented evidence of its trademark registrations with the USPTO for its marks: GAMESTOP (Reg. No.1,707,460 registered Aug. 11, 1992) and GAMESTOP.COM (Reg. No. 2,489,084 registered Sept. 11, 2001) (the “Gamestop Marks”). Based on this submission of evidence, the Panel finds that Complainant has established rights in the Gamestop Marks pursuant to Policy 4(a)(i) through its trademark registrations with the USPTO. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). To establish rights in a mark, a complainant need not register the mark in the country in which the respondent resides or operates. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant asserts that the Disputed Domain Names are confusingly similar to the Gamestop Marks. The Panel observes that the following domain names, <gameptop.com>, <gamesotop.com>, <gamesrtop.com>, <gamest0p.com>, <gamestaop.com>, <gamesto0p.com>, <gamestomp.com>, <gamestorp.com>, <gamestsop.com>, <gamestup.com>, <gamestyop.com>, <gamesytop.com>, <gametstop.com>, <gamewtop.com>, and <gamezstop.com>, add or replace a letter in the “STOP” section of Complainant’s GAMESTOP.COM mark and replaces or adds either a letter or number. The Panel further notes that the following domain names, <agamestop.com>, <bamestop.com>, <bgamestop.com>, <gamedstop.com>, <gamemstop.com>, <gamkestop.com>, <gampstop.com>, <gamtstop.com>, <ganmestop.com>, <gsamestop.com>, <gzmestop.com>, <tgamestop.com>, <wgamestop.com>, <wwgamestop.com> and <ygamestop.com>, add additional letters to the GAME section of Complainant’s Marks. The trivial addition or substitution of letters or numbers to a complainant’s mark is insufficient to distinguish a disputed domain name from that mark. See Oxygen Media, LLC v. Primary Source, D2000-0362 (WIPO June 19, 2000) (finding that the domain name <0xygen.com>, with zero in place of letter “O,” “appeared calculated to trade on Complainant’s name by exploiting likely mistake by users when entering the url address”); see also Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark). See also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”). Therefore, these disputed domain names are confusingly similar to Complainant’s GAMESTOP.COM mark under Policy ¶ 4(a)(i).
Complainant also asserts ownership of EBGAMES.COM (Reg. No. 3,114,518 registered on July 11, 2006). However, U.S. Trademark Office records show that mark to be owned by Elbo, Inc., with a security interest granted to Bank of America. Complainant has failed to produce an assignment from Elbo, Inc. to Complainant, even after being permitted the further opportunity to do so by Interlocutory Order. Thus, Complainant has therefore not established rights to the mark EBGAMES.COM, which is the basis for its objection to the <ebgamees.com>, <ebgamrs.com>, <ebgamse.com> and <ebgeames.com> domain names.
Thus, Complainant has satisfied Policy ¶ 4(a)(i) with respect to the <agamestop.com>, <bamestop.com>, <bgamestop.com>, <gamedstop.com>, <gamemstop.com>, <gameptop.com>, <gamesotop.com>, <gamesrtop.com>, <gamest0p.com>, <gamestaop.com>, <gamesto0p.com>, <gamestomp.com>, <gamestorp.com>, <gamestsop.com>, <gamestup.com>, <gamestyop.com>, <gamesytop.com>, <gametstop.com>, <gamewtop.com>, <gamezstop.com>, <gamkestop.com>, <gampstop.com>, <gamtstop.com>, <ganmestop.com>, <gsamestop.com>, <gzmestop.com>, <tgamestop.com>, <wgamestop.com>, <wwgamestop.com> and <ygamestop.com> domain names (the “Gamestop Domains”).
However, Complainant has not satisfied Policy ¶ 4(a)(i) with respect to the domains <ebgamees.com>, <ebgamrs.com>, <ebgamse.com> and <ebgeames.com> .
The WHOIS information for Respondent shows that Respondent is not known as an entity under the Gamestop Domains. The Panel notes that Respondent has not provided any other evidence that it is commonly known by the Gamestop Domains. Based on this analysis and submission of evidence, the Panel finds that Respondent is not commonly known by the Gamestop Domains under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
This Panel finds that Respondent is not making a bona fide offering of goods or services or making a legitimate noncommercial fair use of the Gamestop Domains. All of the Gamestop Domains resolve to websites containing links to Complainant’s competitors. Complainant contends, and the Panel accepts, that these links are pay-per-click links from which Respondent financially benefits. The Panel finds that Respondent’s use of the Disputed Domain Names to feature pay-per-click links for competing products of third parties does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use interest under Policy ¶ 4(c)(iii). See Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was 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 pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
Thus, Complainant has satisfied Policy ¶ 4(a)(ii) with respect to the Gamestop Domains.
Respondent is using the confusingly similar Gamestop Domains to attract Internet users to sites featuring pay-per-click links. This constitutes bad faith use pursuant to Policy ¶ 4(b)(iv).
Further, Respondent’s behavior in registering the Gamestop Domains is typosquatting, which is, by itself, evidence of bad faith use and registration. Previous panels have found that intentional misspelling of a given mark in a respondent’s disputed domain name goes to show that a respondent intended to diverge Internet traffic to its own page based on the customer’s confusion with the misspelled version of a complainant’s mark. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). Based on this evidence, the Panel finds that Respondent registered and is using the Gamestop Domains in bad faith.
Thus, Complainant has satisfied Policy ¶ 4(a)(iii) with respect to the Gamestop Domains.
Having established all three elements required under the ICANN Policy with respect to the Gamestop Domains, the Panel concludes that relief shall be GRANTED with respect to said domains.
Accordingly, it is Ordered that the <agamestop.com>, <bamestop.com>, <bgamestop.com>, <gamedstop.com>, <gamemstop.com>, <gameptop.com>, <gamesotop.com>, <gamesrtop.com>, <gamest0p.com>, <gamestaop.com>, <gamesto0p.com>, <gamestomp.com>, <gamestorp.com>, <gamestsop.com>, <gamestup.com>, <gamestyop.com>, <gamesytop.com>, <gametstop.com>, <gamewtop.com>, <gamezstop.com>, <gamkestop.com>, <gampstop.com>, <gamtstop.com>, <ganmestop.com>, <gsamestop.com>, <gzmestop.com>, <tgamestop.com>, <wgamestop.com>, <wwgamestop.com> and <ygamestop.com> domain names be TRANSFERRED from Respondent to Complainant.
However, not having established all three elements required under the ICANN Policy with respect to the <ebgamees.com>, <ebgamrs.com>, <ebgamse.com> and <ebgeames.com> domains, the Panel concludes that relief shall be DENIED with respect to those domains.
Accordingly, it is Ordered that the <ebgamees.com>, <ebgamrs.com>, <ebgamse.com> and <ebgeames.com> domain names REMAIN WITH Respondent.
David A. Einhorn, Panelist
Dated: September 4, 2012
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