WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Zynga Game Network, Inc. v. Emil Boc Case No. D2009-1535 1. The Parties
The Complainant is Zynga Game Network, Inc. of San Francisco, California, United States of America, represented by Keats McFarland & Wilson, LLP, United States.
The Respondent is Emil Boc of Bucharest, Romania. 2. The Domain Names and Registrar
The disputed domain names and are both registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2009. On November 16, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain names. On November 16, 2009, GoD, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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”).
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 November 30, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 20, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 21, 2009.
The Center appointed Gökhan Gökçe as the sole panelist in this matter on January 5, 2010. 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
The Complainant, Zynga Game Network, Inc. is a leading social gaming company providing a network of gaming applications consisting of classic games such as inter alia, online poker games, word games, board games and party games including Zynga Poker, Mafia Wars, YoVille, Vampires, Street Racing, Scramble and Word Twist. The Complainant's games are found on social networks like Facebook, MySpace, Bebo, and Hi5, among others. The Complainant has enjoyed widespread success since it began and boasts 129 million monthly active users across its portfolio of more than 30 games. The Complainant's revenue is well over $100 million per year and is generated largely from sales of virtual items in its online games as well as advertisements.
One of the Complainant's most popular online social games Zynga Poker (formerly known as Texas Hold'Em Poker), has gained worldwide recognition as a premier online poker application since its launch in June 2007. Users play Zynga Poker online against other players around the world, using virtual “chips” to compete against one another. When users sign up to play the Game, they receive a certain number of virtual “chips”. Players can increase their total number of “chips” by winning and can also purchase “chips” from the Complainant. Every day, approximately 150 million hands are dealt in Zynga Poker, which is more than ten times as many hands as are dealt on an average day in Las Vegas.
The Complainant has used the mark ZYNGA in commerce since June 2007. The Complainant owns a federal trademark registration for the mark ZYNGA and design, registered on September 22, 2009.
The Respondent registered the disputed domain names on December 17, 2008, and on April 1, 2009. 5. Parties' Contentions A. Complainant
In accordance with paragraph 4(b)(i) of the Policy, the Complainant requests that the domain names and be transferred to the Complainant.
The Complainant submits the grounds for these proceedings are listed in paragraph 4(a) of the Policy. Identical or Confusingly Similar
The Complainant submits that it has achieved common law rights in the mark ZYNGA by the Complainant's extensive use of the mark since 2007 and the secondary meaning it has acquired in the marketplace. The Complainant offers evidence of the wide usage of Zynga Poker in the form of a media excerpt in Annex E to the Complaint. The Complainant further notes that the public association between the word “zynga” and the Complainant is evident in the search results produced from search engines which display in their first three pages of links references to the Complainant, as evidenced at Annexes F and G to the Complaint.
In addition to the common law rights acquired through the Complainant's extensive use of its ZYNGA mark and the secondary meaning it has acquired, the Complainant owns a federal trademark registration for the mark ZYNGA in International Class 9 for downloadable computer game software for use on wireless devices and computers and International Class 41 for entertainment services, namely, providing online computer games as evidenced in Annex H to the Complaint.
The Complainant also draws attention to the fact that it has invested in the promotion of its reputation and has heavily promoted its ZYNGA mark developing tremendous goodwill. It alleges that ZYNGA has become well known and is widely recognised as a source identifier of Zynga Games. The Complainant relies on previous URDP decisions, Zynga Game Network Inc. v. Alexandru Mihalache,WIPO Case No. D2009-0716 and Zynga Game Network Inc. v. Vasilica Ionescu,WIPO Case No. D2009-0606, as further evidence of the Complainant's rights in its mark.
The Complainant submits that the disputed domain names are confusingly similar to the Complainant's registered trademark as they contain the mark in its entirety. With reference to disputed domain name the Complainant contends that the addition of the word “chips” does not add any distinctiveness and is not sufficient to minimise or remove confusion as the word “chips” is directly connected to one the Complainant's most popular online social games for which the ZYNGA mark was registered. Rights or Legitimate Interests
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is not commonly known by the disputed domain names and the Complainant has not authorized or granted a license to the Respondent to use the mark. Furthermore, the Respondent has never used, nor is preparing to use, the disputed domain names in connection with a bona fide offering of goods and services.
The Complainant contends that the Respondent is not using the disputed domain names for a legitimate noncommercial or fair use without intent for commercial gain or to misleadingly divert consumers or to tarnish the trademark or service mark at issue, as the Respondent registered the disputed domain names with the intention of creating a parking page with commercial links. The Complainant notes the Respondent is using the disputed domain names as parking pages that display by pay-per-click advertising links or sponsored search listings, and therefore alleges that the Respondent is misleadingly diverting Internet users searching for the Complainant's website, as evidenced in the screen shot at Annexes I and J to the Complaint.
The Complainant submits there is no legitimate noncommercial or fair use of the disputed domain names and the use being made is, in effect, illegitimate and unfair by diverting Internet traffic intended for the Complainant to the Respondent's site primarily for the purpose of generating revenue from pay-per-click advertising. Registered and Used in Bad Faith
The Complainant contends that the Respondent was well aware of the Complainant's goodwill and that the mark ZYNGA is recognised and relied on by online gaming consumers globally. Therefore, the Respondent had actual or constructive knowledge of the Complainant's mark at the time of registration.
The Complainant states that the word “zynga” is unique and fanciful so could not be devised by the Respondent and that use of such a distinctive mark is indicative of bad faith and this notion is not altered by the addition of the generic term “chips”.
It is submitted that the Respondent acted in bad faith as it knew at the time of registration that it could not make legitimate commercial use of a domain name incorporating a famous mark without infringing the trademark owner's rights.
The Complainant asserts that the Respondent has acted in bad faith by registering the disputed domain names has prevented the Complainant from fully exploiting the commercial nature of the mark. Furthermore, the Complainant's right to use its mark is lessened as Internet users searching for Zynga or Zynga chips are mistakenly diverted to the Respondent's site.
The Complainant contends the Respondent, by registering the disputed domain names, is intentionally attempting to attract, for commercial gain, Internet users, searching for the Complainant's website and by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's websites or locations or of a product or service offered on those websites. B. Respondent
The Respondent did not reply to the Complainant's contentions. Pursuant to paragraph 5(e) of the Rules, if a respondent does not submit a response, in the absence of exceptional circumstances, the panel shall decide the dispute based upon the complaint.
However, failure to respond in a Policy proceeding does not constitute an admission of any pleaded matter. The Panel will proceed to evaluate the Complainant's evidence and conduct his own examination of the Respondent's website in light of the requirements of paragraph 4(a) of the Policy, Stanworth Development Limited v. E Net Marketing Ltd.,WIPO Case No. D2007-1228 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three elements which the Complainant must prove, during the administrative proceedings, to merit a finding that the domain names of the Respondent be transferred to the Complainant:
(a) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and,
(c) the disputed domain names have been registered and are being used in bad faith.
Pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In the absence of a reply from the Respondent the Complainant must still establish the elements of paragraph 4(a) of the Policy, The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064. Additionally, the Panel may accept as true factual allegations in the Complaint, ThyssenKrupp USA, Inc. v. Richard Giardini,WIPO Case No. D2001-1425. A. Identical or Confusingly Similar
The Policy paragraph 4(a)(i) simply requires the Complainant to demonstrate that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights.
Although the Complainant's trademark registration was subsequent to the Respondent registering the disputed domain names this does not prevent a finding of identity and/or confusingly similar. The Panel follows the consensus view of the Overview of WIPO Panel Views on Selected UDRP Questions paragraph 1.4, which states that the UDRP makes no specific reference to the date on which the owner of the trade or service mark acquired such rights and that registration of a domain name before a complainant acquires trademark rights does not prevent a finding of identity or confusing similarity.
The Complainant states that the word “zynga” has acquired secondary meaning as a distinctive identifier of the goods or services which have been offered by the Complainant since 2007. It is accepted that a secondary meaning may be established, for example, by evidence of the length and volume of sales under the mark, the nature and extent of advertising, consumer surveys, and media recognition. The Complainant has provided evidence of the extensive use and recognition of its mark ZYNGA in the form of articles, statistics and search results produced from Google search engine at Annexes D, E, F and G to the Complaint.
The Panel accepts that the mark ZYNGA has gained distinctiveness through the Complainant's extensive use and therefore the Complainant has acquired rights in the trademark on the basis that it has established wide recognition, WIPO Overview of WIPO Panel Views on Selected UDRP Questions paragraph 1.7, and cases cited therein. The Panel recognises the Complainant's pre-registration rights in the mark ZYNGA and is satisfied that the Complainant is the owner of both the registered and unregistered trademark ZYNGA.
In relation to the disputed domain name the Panel finds the generic term, “chips” is directly related to the Complainant's business and that the addition of a generic word is especially confusing where the generic word bears an obvious relationship to the Complainant's business. The Panel concludes that the addition of the generic word “chips” does not distinguish the Respondent's domain name from the Complainant's trademark as it is well-established under the Policy that a domain name composed of a trademark coupled with a generic term may still be found to be confusingly similar to the trademark, Jafra Cosmetics, S.A. de C.V. v. Spiral Matrix,WIPO Case No. D2006-0716.
In relation to the disputed domain name the Panel finds the addition of a ccTLD suffix is irrelevant when determining whether a disputed domain name is confusingly similar to the Complainant's trademark, PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2009-0009. It has been stated in several decisions by other UDRP panels that the incorporation of a trademark in its entirety into a domain name may be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark, Bayerische Motoren Werke AG, Sauber Motorsport AG v. Petaluma Auto Works,WIPO Case No. D2005-0941.
In view of the foregoing, the Panel finds that the disputed domain name is confusingly similar to and the disputed domain name is identical to a trademark in which the Complainant has rights, and therefore, the Complainant has succeeded on this first element under the Policy. B. Rights or Legitimate Interests
In accordance with paragraph 4(a)(ii), the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain names. Although the Policy states that a complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative and it has therefore been generally accepted under the Policy that, once a complainant has presented a prima facie case of a respondent's lack of rights or legitimate interests in a domain name, the burden shifts to the respondent. The Policy at paragraph 4(c) provides various ways in which a respondent may demonstrate rights or legitimate interests in the domain name.
The Complainant contends that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain or to misleadingly divert consumers.
The Panel visited the disputed domain names and both resolved to websites containing several advertisements, links and a search engine. The Panel finds that registering a domain name incorporating a widely-known trade mark and using it to misdirect Internet users to websites with the apparent intention of earning click-through revenue does not by itself give rise to a legitimate interest and constitutes commercial use of the disputed domain names. Other panels have accepted that such use may in certain circumstances, be legitimate provided that a respondent does not use the disputed domain names in order to disrupt the complainant's business or to mislead Internet users for commercial gain, Owens Corning v. NA,WIPO Case No. D2007-1143; Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912. In this dispute it is clear to the Panel that the Respondent is relying on the fame of the mark to collect financial revenue by misleadingly diverting Internet users by benefitting from the goodwill in the Complainant's mark, and the Panel is of the opinion that such use cannot be considered a bona fide use, or fair or noncommercial use, Express Scripts, Inc. v. Windgather Investments Limited/Mr Cartwright, WIPO Case No. D2007-0267.
The Complainant has established a prima facie case that the Respondent lacks a right or legitimate interest in the disputed domain names. There is nothing in the record to suggest that the Respondent, or any business operated by him, is commonly known by the disputed domain names and in the absence of evidence or a Response from the Respondent there is nothing to suggest the Respondent has rights or legitimate interests in the disputed domain names. As the Respondent failed to submit a response and rebut the allegations made against him in the Complaint, the Panel accepts the Complainant's contentions as true, Diebold, Incorporated v. Paul Terwilliger,WIPO Case No. D2003-0416.
The Panel therefore concludes that the Respondent has not satisfied paragraph 4(c) of the Policy and concludes that the Respondent has no rights or legitimate interests in the disputed domain names, Red Bull GmbH v. Jack Weintraub / INET Live TV, WIPO Case No. D2009-1307.
The requirements of 4(a)(ii) are fulfilled and consequently the Panel finds in favour of the Complainant on the second element of the Policy. C. Registered and Used in Bad Faith
Finally, the Complainant must show that the disputed domain names have been registered and are being used in bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant's trademark ZYNGA was being used for at least 1.5 years before the Respondent's registration of the disputed domain names and by that time the Complainant's mark already enjoyed global recognition amongst online gamers and those using social networking sites such as MySpace and Facebook. The Complainant's mark was being widely used on online social networks during that time.
In light of the aforementioned, the Panel finds that at the time of registration the Respondent must have been aware of the Complainant's mark and wide recognition and that any commercial use of the disputed domain names would result in a violation of the Complainant's trademark rights, suggesting that there was never an intention of good faith use, Cellular One Group v. Paul Brien,WIPO Case No. D2000-0028. It is obvious to the Panel that the Respondent is using both websites to generate revenue from advertisements and links and therefore finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's trademarks, Deutsche Telekom AG v. WWW Enterprise Inc.,WIPO Case No. D2004-1078.
There is no reply from the Respondent and while this not conclusive of bad faith, this Panel finds it is a consideration to be taken into account to support the Complainant's contentions of bad faith.
The Panel finds that the Respondent registered and is using the disputed domain names in bad faith. Accordingly the Panel finds in favour of the Complainant on the third element of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names and be transferred to the Complainant.
Gökhan Gökçe
Sole Panelist
Dated: January 19, 2010
Full & Egal Universal Law Academy