WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gamefly, Inc. v. James Martin
Case No. D2006-0236
1. The Parties
1.1 The Complainant is Gamefly, Inc., Los Angeles, California, United States of America, represented by Sheppard, Mullin, Richter & Hampton, Costa Mesa, California, United States of America.
1.2 The Respondent is James Martin, Apopka, Florida, United States of America.
2. The Domain Name and Registrar
2.1 The disputed domain name is registered with Go Daddy Software.
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2006. On February 24, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On February�24,�2006, Go Daddy Software/#3366ccRazor Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
3.2 In accordance with the Rules, Paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 9, 2006. In accordance with the Rules, Paragraph 5(a), the due date for Response was March 29, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 3, 2006.
3.3 The Center appointed Jay Simon as the sole Panelist in this matter on April�12,�2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, Paragraph 7.
4. Factual Background
4.1 Complainant offers over 3,000 videogame titles for rent via its website and, according to an independent source, had over 1.825 million unique visitors in January 2006.
4.2 Complainant registered its domain name on November�12,�2001.
4.3 Complainant has obtained trademarks, registered in the United States Patent and Trademark Office, in connection with on-line retail services in the field of videogames, Registration No. 2,746,496, issued August�5,�2003, and in connection with rental videogames, Registration No. 2,858,858, issued June�29,�2004, both for the mark GAMEFLY.
4.4 Respondent registered the disputed domain name on February 11, 2004.
4.5 At the website to which the disputed domain name resolves, Respondent offers downloadable MP3’s.
4.6 Complainant sent Respondent a cease and desist letter on October�11,�2005, requesting that the disputed domain name be transferred to Complainant. Apparently, Respondent did not respond to Complainant’s letter.
5. The Parties’ Contentions
A. Complainant
5.1 Complainant contends that the disputed domain name is identical or nearly identical to Complainant’s registered trademark, and that the gTLD suffix “.info” does not serve to distinguish the disputed domain name from Complainant’s marks.
5.2 Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name, and Complainant has not licensed or authorized Respondent to use Complainant’s marks.
5.3 Complainant further contends that there is no evidence that Respondent is commonly known by the disputed domain name, that Respondent is not making any non-commercial, or fair use of the disputed domain name, nor is Respondent offering any bona fide goods or services in connection with the disputed domain name.
5.4 Complainant contends that the disputed domain name was registered and is being used in bad faith, particularly in regard to paragraph 4(b)(iv) of the Policy. Complainant further contends that Respondent intentionally registered and used the disputed domain name to attract web users to Respondent’s site by creating a false impression of association with Complainant.
5.5 Complainant requests that the disputed domain name be transferred to Complainant.
B. Respondent
5.6 Respondent has not responded to the Complainant, is in default in these proceedings and has not otherwise actively participated in these proceedings.
6. Discussion and Findings
6.1 The Policy, as affected by the Rules and the Supplemental Rules, provides specified remedies to trademark owners against registrants of domain names where the owner of the mark (Complainant) proves each of the following elements:
(a) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(b) the registrant (Respondent) has no rights or legitimate interests in respect of the domain name; and
(c) the domain name has been registered and is being used in bad faith.
6.2 Complainant has the burden of proof, by a preponderance of the evidence, respecting each element in paragraph 6.1.
6.3 Respondent, having failed to respond in these proceedings, is in default, and in accordance with paragraph 14(b) of the Rules, “the Panel shall draw such inferences…as it considers appropriate”.
A. Identical or Confusingly Similar (Paragraph 4(a)(i) of the Policy)
6.4 The disputed domain name differs from Complainant’s marks only in respect of the gTLD suffix “.info”. Every domain name requires a gTLD or other suffix, e.g., country code, and it is well established that the suffix is not a distinguishing feature of a domain name. Thus, the disputed domain name not only incorporates the entirety of Complainant’s mark, but is in essence, Complainant’s mark. This Panel finds, therefore, that the disputed domain name is identical to or at the very least confusingly similar to marks in which Complainant has rights. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.
B. Lack of Rights or Legitimate Interests (Paragraph 4(a)(ii) of the Policy)
6.5 Paragraph 4(c) of the Policy lists three, non-exclusive methods for determining whether a respondent has rights or legitimate interests in a disputed domain name.
6.6 In respect of demonstrating a respondent’s lack of rights or legitimate interests in a disputed domain name, the burden of proof rests with the complainant. However, where a complainant has made the necessary assertions and provided evidence, it is incumbent upon the respondent to come forward with evidence of its rights or legitimate interests in the disputed domain name, the respondent being uniquely possessed of this evidence, if such evidence exists. Respondent has failed to present any evidence of its rights or legitimate interests in the disputed domain name, and such failure is tantamount to admitting the truth of Complainant’s assertions. See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624.
6.7 Of the factors listed in paragraph 4(c) of the Policy, Respondent having failed to respond to the Complainant, there is no evidence that Respondent was commonly known by the disputed domain name. Indeed, Respondent’s registration of the disputed domain name is subsequent to Complainant’s registration of its mark and well after Complainant’s registration of its domain name.
6.8 Nor is there any evidence of fair use or non-commercial use of the disputed domain name. To the contrary, Respondent is clearly profiting from the use of the disputed domain name by directing Internet users to its site under the false impression that the site is in some way authorized by Complainant. See Madonna Ciccone p/k/a Madonna v. Dan Parisi and “M”, WIPO Case No. D2000-0847.
6.9 This Panel finds, therefore, that Respondent has no rights or legitimate interests in the disputed domain name.
C. Registration and Use in Bad Faith (Paragraph 4(a)(iii) of the Policy)
6.10 Paragraph 4(b) of the Policy indicates several, non-exclusive methods for showing bad faith registration and use of a disputed domain name.
6.11 There is no question but that Respondent registered a domain name virtually identical to Complainant’s earlier registered mark. Further, the disputed domain name resolves to a website where commercial activities take place. Given the similarity between Complainant’s mark and the disputed domain name – and the fact that Respondent has defaulted in these proceedings, it is difficult for this Panel to accept that Respondent had no knowledge of Complainant’s rights.
6.12 Complainant’s activities are well known on the Internet and, while constructive notice of registered rights has not been universally adopted under the Policy – actual notice being the standard – the Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 3.4, recognizes that where a complainant has a United States registered trademark and the respondent is located in the United States, the respondent may be presumed to have notice of a complainant’s rights. See Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384.
6.13 In view of all the circumstances in this case, Complainant has made an adequate showing that the disputed domain name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy and Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website and the products offered therein.
7. Decision
7.1 For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the domain name be transferred to the Complainant.
Jay Simon
Sole Panelist
Dated: May 3, 2006
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