WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Zynga Game Network, Inc. v. Hancu Bogdan Case No. D2009-1536 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 Hancu Bogdan of Bacau, Romania. 2. The Domain Name and Registrar
The disputed domain name is 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 name. 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 18, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 8, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 9, 2009.
The Center appointed Gökhan Gökçe as the sole panelist in this matter on December 14, 2009. 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 name on April 16, 2009. 5. Parties' Contentions A. Complainant
In accordance with paragraph 4(b)(i) of the Policy, the Complainant requests that the domain name 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.
Furthermore the Complainant owns a federal trademark registration for the mark ZYNGA and design 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 G to the Complaint.
The Complainant submits that the disputed domain name is confusingly similar to the Complainant's registered trademark and contains the mark in its entirety. The disputed domain name consists of the Complainant's trademark and the word “chips”, which is directly connected to one of 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 name. The Respondent is not commonly known by the disputed domain name and the Complainant has not authorized or granted a license to the Respondent to use the mark.
The Respondent previously used the disputed domain name to resolve to a website that was buying and selling “chips” for Internet users to use in Zynga games, therefore in connection and direct competition with services provided by the Complainant without the Complainant's authorisation or approval. Furthermore, the Respondent was advertising and selling these “chips” using the ZYNGA mark stating “We sell Zynga Poker chips that can be used on Facebook Chips, Bebo Chips, Hi5 Chips, MySpace Chips and other websites that use Zynga Chips for Texas Hold'em Poker at extremely low prices and safer than other websites”, as evidenced in the screenshot submitted at Annex I to the Complaint. The Complainant notes that by placing pay-per-click or sponsored search listings on multiple pages of its website with the intention of diverting to the Respondent's site Internet traffic intended for the Complainant, primarily for the purpose of generating revenue from “chips” sales and pay-per-click advertising on the Respondent's site, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers.
The Complainant submits that the disputed domain name currently resolves to a plain white page with text stating “[t]his website is temporarily unavailable, please try again later” as evidenced in the screen shot at Annex H to the Complaint and therefore the Respondent is currently making no use of the disputed domain name at all. The Complainant contends the Respondent has never used, nor is preparing to use, the disputed domain name in connection with a bona fide offering of goods or services. Registered and Used in Bad Faith
The Complainant avers 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 registered the disputed domain name primarily for the purpose of disrupting the Complainant's business by intentionally attempting to attract, for commercial gain, Internet users searching for the Complainant's website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service offered on such website.
The Complainant contends that registering a domain name knowing it reflects someone else's trademark without good reason is bad faith registration. The Complainant states that the word ZYNGA is unique and fanciful so could not be devised by the Respondent and that addition of the generic term “chips” weighs in favour of a finding of bad faith. 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 contends that the Respondent registered the disputed domain name in order to prevent the Complainant, as the owner of the trademark or service mark, from reflecting the mark in a corresponding domain name B. Respondent
The Respondent did not reply to the Complainant's contentions, however there was certain correspondence between the parties prior to these proceedings.
On or about May 31, 2009 the Complainant's representative sent e-mail communication to the registrant of informing it of the Complainant's trademark rights in the ZYNGA mark and requesting that the registrant cease selling unauthorized Zynga Poker “chips” from the website as evidenced in Annex K to the Complaint. On or about June 4, 2009, the Complainant's representative sent the same e-mail to the registrant of and on or about June 8, 2009 sent another e-mail to the registrant of requesting removal of the infringement referenced in his e-mail dated June 4, 2009.
On or about June 14, 2009, the Complainant's representative received a response to his e-mail from an individual named “Nicu” from the Respondent's email address apologising for the delayed “removal of all domains and web hosting”, and further indicated the entire content, domains, and hosting of , , , , and had been removed. Within the e-mail Nicu admitted he made a mistake and expressed his regret.
On or about June 16, 2009, the Complainant's representative sent an e-mail to the Respondent requesting the transfer of disputed domain name as well as any other domains through which the Respondent was offering Zynga Poker “chips” for sale.
The Respondent did not reply or otherwise contact the Complainant following the June 16, 2009 email. Evidence of the e-mail chain is submitted at Annex L to the Complaint.
Other than this communication the Respondent did not file a Response to the Complaint. 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 his own examination of the Respondent's website against 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 name of the Respondent be transferred to the Complainant:
(a) the disputed domain name is 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 name; and,
(c) the disputed domain name has been registered and is being used in bad faith.
Pursuant to paragraph 15(a) of the Rules, the Panel shall decide a 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), 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
Paragraph 4(a)(i) of the Policy simply requires the Complainant to demonstrate that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
Although the Respondent registered the disputed domain name prior to the Complainant's trademark registration, this does not prevent a finding of identity and/or confusing similarity. The Panel follows the consensus view of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 1.4, that “[r]egistration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity. The UDRP makes no specific reference to the date of which the owner of the trade or service mark acquired rights.”
The consensus view of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 1.1 states “[i]f a complainant owns a registered trademark then it satisfies the threshold requirement of having trademark rights.” The Panel recognises the Complainant's rights in the mark ZYNGA and is satisfied that the Complainant is the registered owner of the trademark ZYNGA.
Furthermore, the Complainant relies on rights in the trademark on the basis that it has established wide recognition and submits that the mark ZYNGA is widely-known globally and that it has established unregistered rights in the mark, Jeanette Winterson v. Mark Hogarth,WIPO Case No. D2000-0235. Based on the evidence presented, and in the absence of any contrary argument, the Panel finds that the Complainant has established pre-existing unregistered rights in the ZYNGA mark.
The Panel finds that the addition of the generic term “chips” does not distinguish the Respondent's disputed 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, Veuve Clicquot Ponsardin v. Net-Promotion, Inc.,WIPO Case No. D2000-0347.
Furthermore the generic term “chips” is directly related to the Complainant's business and the addition of a generic word is especially confusing where the generic word bears an obvious relationship to the Complainant's business.
The Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark as the disputed domain name wholly incorporates the Complainant's trademark which is sufficient to establish identity or confusing similarity, Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.
In view of the foregoing, the Panel finds that the disputed domain name is confusingly similar 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 name. Although the Policy states that the 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 become 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 to rebut this showing. The Policy at paragraph 4(c) provides various ways in which a respondent may demonstrate its rights or legitimate interests in the domain name.
The Complainant contends that the Respondent is not making legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain or to misleadingly divert consumers. The Complainant notes that although the disputed domain name currently resolves in an inactive website, it previously resolved to a website generating pay-per-click revenue and offering chips for Internet users to purchase for use in the Complainant's online games. In the absence of any other evidence the Panel relies on the evidence of screen shots provided by the Complainant at Annexes I and J to the Complaint. The screenshots display statements that the host is a “Cheap Zynga Poker Chips Supplier”, a search engine, and a number of links.
Although the screen shots provided at Annexes I and J to the Complaint are evidence of the Respondent's previous use, in light of the fact that the Respondent changed use of the disputed domain name after receipt of the e-mail communication from the Complainant's representative evidenced at Annex L to the Complaint, the Panel has considered this evidence as it demonstrates the Respondent's actual intended use of the disputed domain name. Furthermore, pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating, before any notice to it of the dispute, the Respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Therefore the Panel has considered the Respondent's use prior to the Complainant's e-mails notifying the Respondent of its infringing use of the Complainant's trademarks and requesting transfer of the disputed domain name.
It is clear to the Panel that the Respondent's previous and intended use of the disputed domain name is not in connection with a bona fide offering of goods or services, and is in fact to disrupt the Complainant's business and mislead Internet users for commercial gain, Cloer Elektrogeräte GmbH v. Motohisa Ohno,WIPO Case No. D2006-0026; Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912. The Panel finds the Respondent's use of the disputed domain name is reliant on the fame of the Complainant's mark to collect revenue by misleadingly diverting Internet users. Furthermore, registering a domain name incorporating a well-known trade mark and using it to misdirect Internet users to websites offering competing products and services, 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 name. This evidence suggests that the Respondent's registration of the disputed domain name was to benefit 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, AT&T Knowledge Ventures, L.P. v. Kurt Briers, Interxis Technologies Bvba, WIPO Case No. D2007-1245.
There is nothing in the record to suggest that the Respondent, or any business operated by it, is commonly known by the disputed domain name and in the absence of evidence there is nothing to suggest that the Respondent has rights or legitimate interest in the disputed domain name.
Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the disputed domain name. The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. As the Respondent failed to submit a Response and rebut the allegations made against him the Panel accepts the Complainant's contentions as true, De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005. 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 name.
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 name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant's trademark ZYNGA was being used for at least 2 years before the Respondent's registration of the disputed domain name and had become recognised across the world by online gamers and those using social networking sites such as MySpace and Facebook. The disputed domain name was being used to promote goods and services that are in direct competition with the Complainant, thus it is most likely that the Respondent was aware of the trademark of the Complainant, its reputation, and the goods and services offered under its trademark. In light of the aforementioned, the Panel finds that at the time of registration the Respondent must have been aware that any commercial use of the disputed domain name could potentially result in a violation of the Complainant's trademark rights, suggesting that there was never an intention of good faith use, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
There is no reply from the Respondent. While this not conclusive of bad faith it is a consideration to be taken into account to support the Complainant's contentions of bad faith. The Panel finds there is clear evidence that the Respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor. The Respondent used the disputed domain name to resolve to a website that offers goods and services in direct competition with the Complainant. Therefore, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to an on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or other location.
The Complainant also submits evidence that the Respondent is not actively using the disputed domain name at the present time. The Respondent apparently changed use of the disputed domain name upon receipt of an e-mail communication from the Complainant's representative, evidenced at Annex L to the Complaint. Within this communication an individual communicating from the Respondent's e-mail address states that all content related to the Complainant has been removed from a number of sites, including the disputed domain name. The Complainant's representative then requested transfer of the disputed domain name to which the Complainant received no reply. The Respondent's actions indicate bad faith and demonstrate an intention to mislead the Panel which further suggests the Respondent's bad faith, Maplin Electronics Limited v. Lee Jeongsoon,WIPO Case No. D2006-0011.
The Panel visited the site and it currently remains inactive and is not being used. The fact that the domain is currently inactive does not prevent a finding of bad faith. Passive holding of a domain name can constitute bad faith where the domain name incorporates the complainant's mark and there is no obvious possible justification for the selection of the domain name, Sony Kabushiki Kaisha v. , WIPO Case No. D2000-1074. Furthermore, as evidenced at Annex H to the Complaint, the disputed domain name resolved to a blank page displaying the statement “This website is temporarily unavailable, please try again later.” This statement suggests that the Respondent intends to re-active the website at some later date, however there is nothing in the record to suggest that the Respondent, or any business operated by him, is commonly known by the disputed domain name.
As in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and Ladbroke Group Plc v. Sonoma International LDC,WIPO Case No. D2002-0131, after examining all circumstances surrounding the registration and use of the disputed domain name, the Panel finds that the Respondent registered and is using the disputed domain name 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 name be transferred to the Complainant.
Gökhan Gökçe
Sole Panelist
Dated: January 4, 2010
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