The Complainant is Zynga Inc. of San Francisco, California, United States of America, represented by Keats McFarland & Wilson LLP, United States of America.
The Respondent is David Cahill of Bundaberg, Queensland, Australia. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Aust Domains International Pty Ltd dba Aust Domains, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2011. On January 31 and February 2, 2011, the Center transmitted by email to Aust Domains International Pty Ltd dba Aust Domains, Inc. a request for registrar verification in connection with the Domain Name. On February 3, 2011, Aust Domains International Pty Ltd dba Aust 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.
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 February 3, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 23, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 24, 2011.
The Center appointed Steven A. Maier as the sole panelist in this matter on March 16, 2011. 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 is a video gaming company. It is based in the United States of America and has a significant online presence.
The Complainant is the owner of the United States registered trademark number 3685749 for ZYNGA registered on September 22, 2009 in international classes 9 and 41.
The Respondent registered the Domain Name on February 21, 2010. 5. Parties’ Contentions Complainant
The Complainant states that it is a leading social gaming company providing, inter alia, online poker games, word games, board games, role playing games and party games, including but not limited to, Zynga Poker, Café World, YoVille, Vampires, FarmVille, CityVille, Scramble and Word Twist. Its games are available on Facebook, MySpace, Yahoo!, the iPhone and iPod Touch, among others.
The Complainant first used the name and mark ZYNGA in commerce in June 2007.
The Complainant has enjoyed widespread success since it began use of the ZYNGA mark. By January 2008, its games had been installed over 10 million times and reached almost 700,000 unique game players every day. Less than two years later, the Complainant boasts 129 million monthly active users across its portfolio of more than 30 games. Its revenues, which come largely from sales of virtual items in its online games as well as advertisements, are well over USD 100 million per year.
The mark ZYNGA has therefore acquired secondary meaning in the social gaming marketplace. Evidence of the secondary meaning of the ZYNGA mark and the public’s association between the mark ZYNGA and the Complainant is replete on the Internet. If an Internet user types “Zynga World” into either the Google or Yahoo! search engines, every link on the first three pages references the Complainant.
The Complainant enjoys unregistered trademark rights in the mark ZYNGA by virtue of the above. In addition, it is the owner of the United States registered trademark number 3685749 for ZYNGA registered on September 22, 2009 in international classes 9 and 41.
The Complainant’s rights in the mark ZYNGA have been recognised in five recent UDRP decisions, including namely Zynga Game Network Inc. v. Alexandru Mihalache,WIPO Case No. D2009-0716 and others.
The Respondent’s Domain Name incorporates the entirety of the Complainant’s mark. The Respondent registered the Domain Name on February 21, 2010 over two and a half years after the Complainant had begun use of its mark.
The Respondent has no rights or legitimate interest in the Domain Name and has registered it in bad faith. In addition, the Respondent is currently using the Domain Name to profit financially. Specifically, the Respondent directs the Domain Name to a website which is a parked pay-per-click or sponsored search portal, which features links to other websites selling or advertising other products and services. The Respondent monetizes the Domain Name by placing category links on its landing page. Anytime a Zynga game player ends up at the Domain Name, the player is able to click on the sponsored listings. Upon information and belief, the Respondent is paid for each click on a search result or sponsored listing, thus profiting from consumer confusion.
On or about August 12, 2010, the Complainant’s counsel sent via electronic mail, a letter informing the Respondent of the Complainant’s trademark rights in the mark ZYNGA and requesting transfer of the Domain Name. On or about September 6, 2010, the Complainant’s counsel sent via electronic mail, an additional letter requesting transfer of the Domain Name.
A. Identical or Confusingly Similar
Through its use of its mark and based upon its federal trademark registration, the Complainant has acquired trademark rights in and to the ZYNGA mark. As a result, the Domain Name is likely to confuse consumers as to its connection with Zynga. Indeed, the Domain Name includes the entirety of the Complainant’s mark. Numerous courts and prior UDRP panels have recognized that the incorporation of a trademark in its entirety in a domain name may be sufficient to establish that the domain name is identical or confusingly similar to the complainant’s registered mark.
The Domain Name uses the ZYNGA mark in conjunction with “world”, a word related to the popular online social games for which the ZYNGA mark was registered. For example, the Complainant’s game “Café World” (subject to the United States Federal Trademark Registration No. 3840264) uses the word “world” in its title. In addition, the Complainant’s slogan featured prominently on its website and in connection with its online social games is “connecting the world through games”. The Respondent’s addition of the word “world” to the Domain Name does not serve to distinguish the Domain Name from the Complainant’s mark. Rather, this combination creates the impression that the Domain Name is related to the Complainant.
Based on the Complainant’s clear rights to the ZYNGA mark and the public’s overwhelming association of the ZYNGA mark with the Complainant’s online games, the Respondent’s registration and use of the Domain Name is likely to cause consumer confusion and initial interest confusion. As such, the Respondent’s Domain Name is confusingly similar to the Complainant’s mark.
B. Rights or Legitimate Interests
The Respondent is not commonly known by the Domain Name and it is not authorized or licensed by the Complainant to use its mark. In addition, prior to the Respondent’s registration of the Domain Name, the Respondent had never used, nor was it preparing to use, the Domain Name in connection with a bona fide offering of goods or services. As such, pursuant to paragraph 4(c) of the Policy, the Respondent has no rights or legitimate interests in the Domain Name.
Moreover, the Respondent is not making a legitimate noncommercial or fair use of the Domain Name without intent of commercial gain to misleadingly divert consumers pursuant to paragraph 4(c)(iii) of the Policy. Rather, the Respondent monetizes the Domain Name by directing the Domain Name to parked pay-per-click or sponsored listings websites. Multiple UDRP decisions have held that registrants that monetize domain names using redirecting services have not made a bona fide offering of goods or services giving rise to rights or legitimate interests in a disputed domain name.
The use of the Domain Name comprising the Complainant’s mark proves the Respondent’s intent to divert consumers. It is clear that the Respondent registered the Domain Name with the ZYNGA mark in mind and with the intention of diverting to his site Internet traffic intended for the Complainant, primarily for the purpose of generating revenues from the pay-per-click or sponsored listings on his sites. This use is neither legitimate nor fair.
C. Registered and Used in Bad Faith
The Complainant first made use of the ZYNGA mark in connection with social gaming and, in particular, Zynga Poker in June 2007. The Respondent did not register the Domain Name until February 21, 2010. The Respondent was well aware of the valuable goodwill and reputation represented by the ZYNGA mark; the mark is recognized and relied upon by online gaming consumers throughout the world to identify and distinguish the Complainant’s games and services from the goods and services of others. As such, the Respondent’s subsequent registration of the Domain Name is sufficient to satisfy the bad faith requirement.
In addition, because the word “zynga” is arbitrary and fanciful and sufficiently unique, it is unlikely that the Respondent devised it on its own. Such trademark uniqueness, together with the Respondent’s wholesale incorporation of the ZYNGA mark with the generic term “world,” creates a confusingly similar domain name and weighs in favor of finding bad faith.
Furthermore, based upon the likelihood of confusion and confusing similarity between the Domain Name and the ZYNGA mark, the Respondent can make no good faith use of the Domain Name. UDRP panels have held that registration and use of a domain name incorporating a famous mark was necessarily in bad faith since the respondent knows at the time of the registration that it cannot make any actual use of the registered domain name without infringing on the trademark owner’s rights.
Moreover, as a result of the Respondent’s registration of the Domain Name that incorporates the Complainant’s ZYNGA mark, the Complainant is precluded from fully commercially exploiting its ZYNGA trademark, and the public is confused by the Respondent’s registration of the Domain Name and is being diverted to the Respondent’s website. In this case, the Complainant’s right to use its ZYNGA trademark is substantially lessened because Internet users searching for Zynga games are likely to mistakenly visit the Respondent’s website at “www.”.
Furthermore, by registering and using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his websites or of a product or service on his website. Links to unauthorized Zynga services or sponsored listings are designed to attract customers for commercial gain. As a result, Internet users are being attracted to the Respondent’s website by a likelihood of confusion regarding the source or sponsorship of the website.
In conclusion, based on the circumstances enumerated above, it is clear that the Respondent registered and is using the Domain Name in bad faith and in violation of the Policy. The Respondent registered a domain name that is identical and confusingly similar to the Complainant’s ZYNGA trademark and the Respondent has no legitimate interest in the Domain Name, demonstrating that the Respondent is a cybersquatter preventing the Complainant from commercially exploiting its mark on the Internet.
The Complainant requests a transfer of the Domain Name. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to prove that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Panel observes that, although the Respondent has failed to file a Response, it is still for the Complainant to prove its case. Further, while the factual assertions made by the Complainant may be uncontradicted by the Respondent, the Panel must nevertheless examine the circumstances that are apparent from the Complaint itself in arriving at its conclusions. A. Identical or Confusingly Similar
The Complainant is the owner of the United States registered trademark ZYNGA for (inter alia) video games and has also established to the satisfaction of the Panel that it has unregistered trademark rights in the name ZYNGA in that field.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s registered trademark ZYNGA. The Complainant has established that (ignoring the formal suffix) the Domain Name comprises the Complainant’s mark ZYNGA with the addition of the term “world”, which is generic and does not serve to distinguish the Domain Name from the Complainant’s mark. On the contrary, in the view of the Panel it suggests a connection with that mark.
There is no evidence that the Domain Name has any meaning or significance independent of the Complainant’s mark.
In the circumstances, the Panel finds that the Domain Name is confusingly similar to a mark in which the Complainant has rights. B. Rights or Legitimate Interests
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. Other than by its use of the Domain Name itself for the purpose of a parking page, there is no evidence that the Respondent has ever traded under the Domain Name or a name similar to it or that it has rights in any such name. Nor is there any evidence that the Complainant has ever licensed or authorised the Respondent to use its mark ZYNGA or the Domain Name.
While the use of a domain name for a parking page is not illegitimate per se, it will not represent a right or legitimate interest in circumstances where Internet users are drawn to the page as the result of the Respondent taking unfair advantage of the Complainant’s trademark and/or goodwill. In this case, the Panel finds that the name and mark ZYNGA is an invented term and that it has gained no significance or meaning independent of the Complainant’s mark. The addition of the term “world” will not dispel the connection between the Domain Name and the Complainant’s mark in the mind of Internet users. In these circumstances the Panel finds that the Respondent is using the Domain Name in a manner that is liable to cause “initial interest confusion”, i.e., that Internet users will be drawn to the Respondent’s site in the expectation that it is a website operated or authorised by, or in some way affiliated with, the Complainant. By its receipt of pay-per-click revenue, the Respondent is liable then to gain a financial advantage on the back of the Complainant’s goodwill. C. Registered and Used in Bad Faith
There is a significant area of overlap between the question of “rights or legitimate interest” and that of registration and use in bad faith.
The Panel accepts the Complainant’s evidence that the Respondent is using the Domain Name to resolve to a website unconnected with the Complainant from which it derives click-through revenue. The Respondent has offered no explanation for his registration and use of the Domain Name. The Panel infers from the distinctiveness of the Complainant’s invented mark and the Respondent’s choice of the Domain Name for a parking page that the Respondent was more likely than not to have been aware of the Complainant’s mark at the date of registration. In the circumstances, the Panel finds that the Domain Name has been registered and used in bad faith, namely, that by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service on that website or location.
The Panel therefore finds that the Respondent registered and has used the Domain Name in bad faith. 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 domain name be transferred to the Complainant.
Steven A. Maier
Sole Panelist
Dated: March 21, 2011
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