Complainant is Web Entertainment Limited of Las Vegas, Nevada, United States of America ("USA") represented by Randazza Legal Group, USA.
Respondent is Giorgi Kapanadze of Tbilisi, Georgia. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with eNom (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 4, 2015. On March 4, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 4, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 23, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 12, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on April 13, 2015.
The Center appointed Clive Elliott QC as the sole panelist in this matter on April 27, 2015. 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
As confirmed by the Registrar, the Domain Name was registered on October 9, 2013. 5. Parties' Contentions A. Complainant
Complainant states that it owns the trademark rights for Y8 and Y8 Y8.COM and uses those marks for the operation of its website "" ("Y8 website"). The Y8 website provides online video games, virtual reality games, and other entertainment services to its users. Complainant says that in providing its services, it has made significant use of the Y8 and Y8 Y8.COM trademarks, such that it has acquired both registered rights with the United States Patent and Trade Mark Office (the "USPTO") and significant and extensive common law rights with regard to the marks. Complainant submits that its registered rights accrued on September 30, 2010, and common law rights accrued in, at the latest, 2006.
Complainant advises it also owns two European Community Trademark ("CTM") registrations for the Y8 mark, filed in 2010 for the Y8 word mark and in 2011 for the Y8 figurative mark.
Additionally, it is asserted that the USPTO granted Complainant two registrations for the Y8 marks as follows: Y8 Y8.COM (U.S. Registration No. 4,130,792, filed April 11, 2011) for entertainment services, namely providing online video games and virtual reality games, providing temporary use of non-downloadable electronic games and virtual reality games, providing a website featuring games and puzzles; and Y8 (U.S. Registration No. 4,130,791, filed April 11, 2011) for entertainment services, namely providing online video games and virtual reality games, providing temporary use of non-downloadable electronic games and virtual reality games, providing a website featuring games and puzzles.
Complainant asserts that its registrations are prima facie evidence of exclusive rights, with the effective date of Complainant's registered rights being September 30, 2010 at the earliest, and April 11, 2011 at the latest.
Complainant further submits that it acquired extensive common law rights in the Y8 and Y8 Y8.COM marks before the Respondent's registration of the Domain Name, and Complainant began using the Y8 and Y8 Y8.COM marks in international commerce for the provision of entertainment services on the World Wide Web, at the latest in 2006.
Complainant's predecessor-in-interest acquired the domain name in November of 2006. The Wayback Machine, located on "" shows that the domain name began displaying the message "Welcome to Y8.com. Y8 is coming soon..." on or about October 30, 2006. By December 5, 2006, the format of Complainant's website looked largely as it does today – containing Complainant's distinctive and trademarked logo and online non-downloadable video games.
Complainant states that when Respondent initially registered the Domain Name in late 2014, Complainant had been using its Y8 marks in commerce for nearly seven years, and that Respondent used the Domain Name to offer services that directly competed with Complainant's shortly upon registration.
Complainant asserts that is one of the most popular Internet websites today for video and virtual reality games in the world and according to Alexa Internet, it falls in the 1,500 most popular websites for global website traffic, currently ranked at number 1,420.
Complainant submits that previous panels have previously recognized Complainant's rights in the Y8 mark. In Web Entertainment, LLC v. Privacy Protection Service Inc. d/ b/ a PtivagProtect/Anastasios,WIPO Case No. D2014-0632 the panel found that Complainant's common law rights in the Y8 marks were so well established by 2010 that Respondent's registration of the domain at issue there in 2010 was in bad faith. Further, the panel in Web Entertainment, LLC v. WhoIsguard Protected, Inc./Tom Howe, WIPO Case No. D2014-0159 found that a respondent operating a website similar to Complainant's and registered in 2012, knew of Complainant's rights in the Y8 marks and was in violation of the Policy.
Complainant asserts that the Domain Name is identical or confusingly similar to its Y8 and Y8 Y8.COM marks as the Domain Name contains the entirety of Complainant's Y8 mark, adding only a hyphen and the word "com", as well as the ".net" top-level domain ("TLD"). Complainant submits that the addition of a generic top-level domain does not create a distinct mark capable of overcoming a claim of identical or confusing similarity.
Complainant submits that Respondent is not using the Domain Name for a legitimate purpose, as it contains the entirety of Complainant's Y8 mark and offers services virtually identical to, and therefore competitive with, Complainant's services.
Complainant claims that "y8" is a term with no inherent meaning and submits that Respondent has no rights or legitimate interests in the Domain Name and would be incapable of good faith use of the Domain Name. Complainant also claims that Respondent is intentionally profiting from the goodwill that Complainant has established in its Y8 and Y8 Y8.COM marks.
Complainant believes that Respondent has attempted to attract Internet users to its website by creating a likelihood of confusion between Complainant's services and the services offered by Respondent. Because Complainant had used the Y8 marks in connection with a gaming website for several years and Respondent offered services that are highly competitive with, if not identical to, Complainant's services, it is inconceivable that Respondent was not aware of Complainant's mark when Respondent registered the Domain Name.
Complainant notes that from a side-by-side comparison of its "" website and Respondent's "www." website shows, aside from sharing a similar layout, Respondent's website also displays a logo that is similar in both font and color scheme to the logo on Complainant's website. The Wayback Machine shows that Respondent began using this similar logo on its "www." website shortly after registering the Domain Name. Complainant suggests that this is proof that Respondent registered the Domain Name with full knowledge of Complainant's Y8 marks.
Complainant suggests that since the Domain Name is substantively identical to Complainant's mark, there is a high likelihood of confusion, and given that Respondent uses the Domain Name to offer links to directly competing services, suggests that confusion will occur and Complainant submits this was Respondent's intention when he registered and used the Domain Name. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant asserts that it has been using the trademarks Y8 and Y8 Y8.COM (for convenience referred to as "Complainant's Trademark") and has accrued common law rights in relation to Complainant's Trademark since in or about 2006 and has acquired relevant registered rights since in or about 2010. Complainant's business relates to online video games, virtual reality games, and other entertainment services.
The Panel is satisfied that Complainant has established rights in Complainant's Trademark in connection with a range of entertainment related services. In light of Complainant's assertions and lack of any denial by Respondent the Panel accepts that Complainant's Trademark is identified with Complainant and that an unrelated entity or person using a similar domain name is likely to lead to members of the public being confused and deceived.
Complainant argues that the Domain Name is identical or confusingly similar to Complainant's Trademark.
In this particular case the Panel finds:
a) Complainant has rights in respect of Complainant's Trademark.
b) The Domain Name is confusingly similar to Complainant's Trademark in so far as it contains the non-descriptive element Y8.
Accordingly, the Panel is satisfied that the first element of the Policy has been met. B. Rights or Legitimate Interests
The question of whether Respondent has rights or legitimate interest in the Domain Name must be assessed against Complainant's rights and assessed taking into account the manner in which Respondent uses the Domain Name. Complainant submits that Respondent is not using the Domain Name for a legitimate purpose, as it contains the entirety of Complainant's Y8 mark and offers services virtually identical to, and therefore competitive with, Complainant's services. This allegation is highly relevant in the context of this proceeding and remains unchallenged by Respondent.
Complainant further asserts that "y8" is a term with no inherent meaning and that Respondent is intentionally profiting from the goodwill that Complainant has established in its Y8 and Y8 Y8.COM marks. It asserts that Respondent is doing so by endeavouring to attract Internet users to Respondent's website by creating a likelihood of confusion between Complainant's services and the services offered by Respondent, which it asserts are similar to Complainant's services.
In the absence of any license or permission from Complainant to use Complainant's Trademark, no actual or contemplated bona fide or legitimate use of the Domain Name could reasonably be claimed or indeed inferred by the Panel. Under these circumstances it is difficult to see how Respondent's conduct could be characterized as legitimate and thus permissible.
On this basis the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
The Panel is satisfied that the second element of the Policy has been met. C. Registered and Used in Bad Faith
Having reached the view that Respondent lacks any license or permission to use Complainant's Trademark and for the reasons set out above it is reasonable to infer that Respondent wishes to take advantage of Internet users who may know of or otherwise wish to purchase Complainant's services.
In the absence of any explanation from Respondent as to how and why it chose the Domain Name the Panel finds that it registered and used the Domain Name in bad faith. That is, so as to take advantage of Internet users who know Complainant's Trademark.
The Panel thus concludes that the third element of the Policy has been met. 7. Decision
For 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 Complainant.
Clive Elliott QC
Sole Panelist
Date: May 13, 2015
Full & Egal Universal Law Academy