The Complainant is Jogos Atividades de Internet Ltda. of São Paulo, Brazil represented by Momsen, Leonardos & Cia, Brazil.
The Respondent is Bennie Eeftink, Spil Games Intangibles B.V. of Hilversum Noord, Netherlands, represented by Houthoff Buruma, Netherlands. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with MarkMonitor Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2012. On February 29, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 5, 2012, the Registrar 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 March 8, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 28, 2012. The Response was filed with the Center on March 26, 2012.
The Center appointed John Swinson as the sole panelist in this matter on April 3, 2012. 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 Jogos Atividades de Internet Ltda. (formerly Clickfoo Atividades de Internet Ltda.), a Brazilian company.
The Respondent, Mr. Bennie Eeftink, is the Chief Strategy Officer of Spil Games Intangibles B.V., a Dutch company which is part of the Spil Games group of companies. Mr. Eeftink is also a co-founder of Spil Games.
The Disputed Domain Name was registered with the Registrar on September 10, 2004. 5. Parties’ Contentions A. Complainant
The Complainant makes the following submissions. Identical or Confusingly Similar
The Complainant registered the domain name on July 7, 2004. The Respondent registered the Disputed Domain Name only a few months after this. The Disputed Domain Name is composed of the same expressions, including the Portuguese word “jogos”.
The Complainant applied for the registration of the device trade mark CLICKJOGOS (Reg. No. 829.339.850) in class 41 for online games services with the Brazilian Patent and Trademark Office on October 10, 2007 (the “Trade Mark”). The Trade Mark was registered on December 15, 2009.
The Complainant is the owner of the domain name and the Trade Mark. The Disputed Domain Name is identical to the Trade Mark and illegally reproduces it. Rights or Legitimate Interests
The Complainant is the owner of the domain name and the Trade Mark. The Complainant did not authorize the Respondent to use the Trade Mark as a domain name. As the Respondent’s web site was created and started being used after the Complainant’s web site, it appears that the Respondent was aware that the Complainant was already using the domain name to provide online games. Registered and Used in Bad Faith
The Respondent started to use the Disputed Domain Name after the Complainant started to use the domain name. The web site at the Disputed Domain Name offers the same products (online games) as the Complainant.
The Respondent’s web site used the English language until November 2007. Since then, the web site has been in Portuguese.
The Respondent expressly states on its web site that the Disputed Domain Name is used in Brazil, where the Trade Mark is registered.
In light of the above, it is assumed that the Respondent is attempting to mislead Internet users and to divert the Complainant’s customers for commercial gain. This evidences bad faith under paragraph 4(b)(iv) of the Policy. B. Respondent
The Respondent makes the following submissions.
The Respondent is a multinational social gaming company offering localized online games in Europe, South America (including Brazil), North America, the Middle East and Asia. It mainly offers the games using domain names containing the word “games” and/or a local translation thereof (e.g., , , , , and ).
The Respondent’s mission is “to unite the world in play through a localized global network of online social-gaming platforms tailored to girls, teens and families”. These platforms are localized in at least 19 languages and are used by 188 million unique visitors monthly. The Respondent’s current portfolio contains 4,000 games, developed in house and in partnership with top-tier game developers. The Respondent is also present on mobile devices through browser-based and native application versions of its platforms.
The Disputed Domain Name means “click games”. It is being used for the Respondent’s online gaming web site of the same name. The web site is targeted at Portuguese-speaking people.
Defence of laches
The Disputed Domain Name was registered on September 10, 2004. The Complainant has waited almost eight years to bring the Complaint. The Complainant should be barred from bringing the Complaint due to this lengthy delay. A defence of laches should apply for the benefit of the Respondent.
The Respondent recognizes that this defence does not generally apply under the Policy and that delay in bringing a complaint does not itself prevent filing a complaint, or from being able to succeed under the Policy.
UDRP panels have noted that delay may make it more difficult for a complainant to establish a case on its merits, particularly in relation to the second and third elements of paragraph 4(a) (see e.g., Megajogos Entretenimentos Ltda. v. Vertical Axis, Inc.,WIPO Case No. D2011-2026). UDRP panels have also started to acknowledge the possible application of a defence of laches where the facts so warrant (see e.g., The New York Times Company v Name Administration Inc. (BVI), NAF Claim No. 1349045).
The facts and circumstances here support the conclusion that the Complainant has forfeited its rights to file a complaint against the Disputed Domain Name. The Complainant contacted the Respondent for the first time on June 29, 2011, seven years after the registration of the Disputed Domain Name. Nine months after this, on March 8, 2012, the Complainant filed the Complaint.
The Respondent notes that even after applying for the Trade Mark on October 10, 2007 (publication date of application January 29, 2008), the Complainant waited for several years before bringing the Complaint. Identical or Confusingly Similar
The Complainant cannot derive any relevant rights from its Trade Mark registration as to the descriptive and non-distinctive words “click jogos”. Further, the Trade Mark was filed and published three years after the registration and use of the Disputed Domain Name.
The Complainant does not own, nor has it asserted that it owns, any trade mark rights, in Brazil or elsewhere, for a word mark “CLICKJOGOS”. The Trade Mark is figurative. The Trade Mark would have been deliberately registered as a figurative trade mark as an application for a word mark would have been denied on the grounds of descriptiveness and lack of distinctiveness.
The Trade Mark consists of a logo containing the terms “click” and “jogos” in a stylized font. The Trade Mark is descriptive of the services it has been registered for (online games) and lacks distinctiveness. The words “click” and “jogos” are generic (see e.g., Corbis Corporation v. RegisterF/Whois Protection Service/surf advertising company/Joseph, Graham,WIPO Case No. D2006-0546) and as such cannot comprise any trade mark rights. As the Trade Mark has not acquired any distinctiveness the rights that can be derived from the registration are limited to the specific design elements.
Many domain names comprising the words “click” and “jogos” have been registered and are used. A Google search of “click jogos” returns 13 million results, with the top results relating to online games.
The fact that the Complainant is the registered owner of the domain name does not create any trade mark rights under the UDRP.
The Complainant does not offer any web site itself under the domain name. Users are redirected to a web site under belonging to a third party, UOL, a Brazilian online publisher and Internet provider. Rights or Legitimate Interests
The Respondent has rights and legitimate interests in respect of the Disputed Domain Name, as the Respondent has been using the Disputed Domain Name for the bona fide offering of services, being the offering of online games, since before the Complainant gave notice of the dispute.
The Respondent uses the Disputed Domain Name for the offering of the web site “www.”. In 2011, the web site received on average over 2.2 million unique visitors per month.
The Disputed Domain Name was registered in 2004 and was used prior to the registration of the Trade Mark. The Complainant delayed (as outlined above) in contacting the Respondent regarding its registration of the Disputed Domain Name.
Common and generic terms are subject to registration on a “first come, first served” basis (see e.g., Zero International Holding GmbH & Co. Kommanditgesellschaft v. Beyonet Services and Stephen Urich,WIPO Case No. D2000-0161). In this context, the registration and use of the Disputed Domain Name are based on a legitimate interest.
The Respondent has registered other domain names containing dictionary words (see WIPO Overview, paragraph 2.2, which provides that this is a factor to be considered). It uses these in connection with a purpose relating to its generic or descriptive meaning, being the offering of online games. Therefore, the Respondent has a legitimate interest in the registration and use of the Disputed Domain Name for its descriptive meaning.
Further, the Respondent’s business is commonly known by the Disputed Domain Name. Registered and Used in Bad Faith
The Disputed Domain Name has not been registered and is not being used in bad faith. The Complainant has not provided any evidence to the contrary.
The Disputed Domain Name was registered in 2004 and was used prior to the registration of the Trade Mark. The Complainant delayed (as outlined above) in contacting the Respondent regarding its registration of the Disputed Domain Name. In light of this, the Respondent disputes that it was aware or should have been aware of the Complainant.
As the trade mark rights on which the Complainant bases its Complaint did not exist when the Disputed Domain Name was registered, the registration cannot be considered to be registered in bad faith nor to be used in bad faith (see WIPO Overview, paragraph 3.1).
The legitimate registration of domain names comprising common words and descriptive terms is not in bad faith (see Zero International Holding GmbH & Co. Kommanditgesellschaft v. Beyonet Services and Stephen Urich,WIPO Case No. D2000-0161). The registration of a domain name comprising two dictionary words cannot in itself constitute bad faith (Megajogos Entretenimentos Ltda. v. Vertical Axis, Inc.,WIPO Case No. D2011-2026).
The Complainant delayed in bringing the Complaint and has provided no explanation for the lengthy delay. UDRP panels has previously expressed that where there has been a delay, it may be difficult for a complainant to establish bad faith (see e.g., Francine Drescher v. Stephen Gregory,WIPO Case No. D2008-1825; HRB Royalty, Inc. v. Asif Vadaria,WIPO Case No. D2007-1658). 6. Discussion and Findings
For the Complaint to succeed, the Complainant must establish that each of the three conditions under the Policy, paragraphs 4(a)(i), (ii) and (iii) are satisfied:
(i) the Disputed Domain Name of the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name of the Respondent has been registered and is being used in bad faith. A. Preliminary Issues
Although the Complaint has been brought against Mr. Eeftink, the Response has been filed on the basis that the Respondent is Spil Games Intangibles B.V. The Complaint does not appear to distinguish between Mr. Eeftink and his company. Accordingly, the Panel will consider that the Respondent is both Mr. Eeftink and Spil Games Intangibles B.V. and, for clarity, any references to the Respondent within this judgment are to Spil Games Intangibles B.V.
The Respondent has argued that the defence of laches be applied due to the lengthy delay between the registration of the Disputed Domain Name and the Complaint.
Panels have recognized that this defence does not generally apply under the Policy (see WIPO Overview 2.0, paragraph 4.10). However, delay in filing a complaint will normally make it harder for the Panel to confirm bad faith registration.
The Panel is aware the decision in The New York Times Company v. Name Administration Inc. (BVI), NAF Claim No. FA 1349045 where it was held that laches is “a valid defense in any domain dispute where the facts so warrant”.
While the Panel acknowledges that there has been a lengthy delay in bringing the Complaint, the facts here do not warrant the application of the defence of laches. The Complainant’s delay will be considered in determining whether the Disputed Domain Name was registered and used in bad faith. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Complainant asserts that it owns the Trade Mark and has provided evidence of ownership. The Panel accepts that the Complainant owns the Trade Mark. The Panel notes that the fact that the Complainant is the registered owner of the domain name does not of itself create any trade mark rights under the Policy.
The certificate of the Trade Mark includes the explicit (translated) disclaimer as “granted without exclusive right of the use of the word ‘games’”. Consequently, the Trade Mark does not grant the Complainant any exclusive rights in relation to the word element “jogos” and only gives exclusive rights to the Complainant in relation to the figurative elements of the Trade Mark (which consist of a fancy font) and the word element “click” in combination with “jogos”. The Panel notes that there has been little discussion regarding whether figurative elements of a trade mark can be considered confusingly similar to a domain name (see e.g., Megajogos Entretenimentos Ltda. v. Vertical Axis, Inc.,WIPO Case No. D2011-2026; Brisbane City Council v. Warren Bolton Consulting Pty Ltd,WIPO Case No. D2001-0047).
As the figurative elements of the Trade Mark are slight, being limited to a fancy font, the Panel is prepared to find that the Disputed Domain Name is confusingly similar to the Trade Mark. C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
On the facts provided to the Panel, it appears that the Respondent has been using the Disputed Domain Name for the bona fide offering of services, being the offering of online games. However, the Panel does not need to decide this issue due to the finding below in relation to the third element. D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Complainant relies on paragraph 4(b)(iv) of the Policy which provides that if a domain name is “used to intentionally attract, for commercial gain, Internet users to a web site or other online location, by creating a likelihood of confusion with the complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of that web site or location or of a product or service on that web site or location”, this is evidence of bad faith registration and use.
The Panel finds that, based on the evidence presented, the Disputed Domain Name was not registered in bad faith. The Complainant has a difficult burden to prove bad faith registration in 2004, particularly due to the period of time passing between the registration of the Disputed Domain Name and the filing of the Complaint. The Complainant did not own a trade mark registration in 2004. Thus, the Complainant must rely on common law and/or unregistered trade mark rights that it had prior to September 2004. No such evidence was presented.
It is believable that the Respondent was not aware of the Complainant and the Complainant’s web site when the Respondent registered the Disputed Domain Name in September 2004. This is particularly so because the Disputed Domain Name comprises two dictionary words, and there was only a period of a few months between when the Complainant started to use CLICKJOGOS and when the Respondent registered the Disputed Domain Name.
Consequently, it can be assumed that the registration of the Disputed Domain Name was not in bad faith because the Respondent “could not have contemplated the Complainant’s then non-existent rights”. An exception to this would be if the Complainant could prove that the Respondent was aware of the Complainant’s use of “clickjogos” (Megajogos Entretenimentos Ltda. v. Vertical Axis, Inc.,WIPO Case No. D2011-2026). The Complainant has provided no evidence of such knowledge, and the Panel is not prepared to infer such knowledge in this case.
The Disputed Domain Name does not incorporate a distinctive trade mark. It is comprised of the dictionary words “click” and “jogos”. Consequently, the Panel does not consider that the Respondent knew or should have known that the Trade Mark was being used by the Complainant.
In light of the above, the Panel finds that the Disputed Domain Name was not registered and is not being used in bad faith as defined in paragraph 4(b)(iv) of the Policy. 7. Decision
For all the foregoing reasons, the Complaint is denied.
John Swinson
Sole Panelist
Dated: April 13, 2012
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