1.1 The Complainant is Web Entertainment Limited of Las Vegas, United States of America, represented by Randazza Legal Group, United States of America.
1.2 The Respondent is Whois Agent, Whois Privacy Protection Service, Inc. of Kirkland, United States of America / Nguyen Huu Hoc of Lang Son, Viet Nam. 2. The Domain Name and Registrar
2.1 The disputed domain name (the “Domain Name”) is registered with N LLC (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2015. At that time the publically available WhoIs data for the Domain Name disclosed the registrant of the Domain Name to be “Whois Privacy Protection Service, Inc”.
3.2 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 8, 2015, the Registrar transmitted by email to the Center its verification response, in which it identified the underlying registrant of the Domain Name to be “Nguyen Huu Hoc”. The Center sent an email communication to the Complainant on March 9, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 14, 2015.
3.3 The Center verified that the Complaint together with the amended 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”).
3.4 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 16, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 5, 2015. The Respondent did not submit any formal response.
3.5 The Center appointed Matthew S. Harris as the sole panelist in this matter on April 10, 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
4.1 The Complainant, although giving an address in the United States for the purposes of these proceedings, appears to be a company based, or at least incorporated, in Hong Kong, the People’s Republic of China. It provides online video games, virtual reality games, and other entertainment services to its users from a website operating from the domain name . These services were first provided from that domain name in or around late 2006.
4.2 Currently the Complainant’s website is one of the most popular Internet websites for video and virtual reality games in the world. According to the Alexa Internet list of the most popular websites for global website traffic, it is ranked at number 1,420.
4.3 The Complainant is the owner of various registered trade marks that comprise or incorporate the term “Y8”. They include:
(i) Community Trade Mark no. 009412255 filed on September 30, 2010 (and published on May 18, 2011) for Y8 as a word mark in classes 35 and 41; and
(ii) United States registered trade mark no. 4,130,791, filed on April 11, 2011 for Y8 as a standard character mark in class 41.
4.4 The Domain Name was registered on October 11, 2010.
4.5 The Respondent would appear to be an individual with an address in Viet Nam.
4.6 Internet archive print outs show that the Domain Name has been used since registration for a website that offers services very similar, if not identical, to those of the Complainant. The website at least initially adopted a layout which is very similar to that of the Complainant’s site. More recently the layout of the website operating from the Domain Name has changed, but it continues to offer a selection of video games to Internet users. 5. Parties’ Contentions A. Complainant
5.1 The Complainant claims that by reason of its activities it is, in addition to its registered trade marks, the owner of common law trade mark rights in the term “Y8” since 2006. It refers in this respect to the decision in Web Entertainment, LLC v. Privacy Protection Service Inc. d/b/a PrivacyProtect/Anastasios Tsiligiannis,WIPO Case No. D2014-0632, in which the panel held that common law rights had been established in the term “Y8” by at least 2010.
5.2 The Complainant contends that the Domain Name is confusingly similar to its trade marks, arguing that the Domain Name comprises the term “Y8” in combination with the number “3” and a non-distinctive Top Level Domain (“TLD”).
5.3 The Complainant maintains that the Respondent’s use of the Domain Name, which incorporates the Complainant’s mark, to provide a competing service to the Complainant is not legitimate. Such use is said not to provide a right or legitimate interest for the purpose of the Policy. This is said to be particularly so given that the Y8 mark is one with no inherent meaning. The Complainant also refers to advertisements appearing on the website operating from the Domain Name. The Complainant contends that these advertisements show that the activity on this site is not “noncommercial”.
5.4 The Complainant further contends that the Respondent’s registration and use of the Domain Name amounts to registration and use in bad faith. It contends that the nature of the Complainant’s mark and the nature of the website that has operated from the Domain Name are such that it is inconceivable that the Respondent was not aware of Complainant’s mark when the Domain Name was registered. Alternatively, it contends that the Respondent had constructive knowledge of the Complainant’s trade mark.
5.5 The Complainant contends that although it does not need to show actual confusion between the websites operating from the Domain Name and that of the Complainant, the similarities between the Domain Name and its trade mark and the fact that the Respondent is offering similar services to that of the Complainant mean that actual confusion is likely to have occurred. In this respect it also refers to the fact that no disclaimer appeared on the website operating from the Domain Name. B. Respondent
5.6 The Respondent did not file any Response in this case but it sent an email to the Center on March 16, 2015. This read as follows:
“Dear!
please pay me 10 thousand dollars I will complete the domain transfer for you. it is a domain name that I've had it for a long time. I do not dispute anything with anyone. I work on my base.
thanks a lot”
5.7 Later that day the Complainant sent an email to the Center, making the following statement and request:
“The complainant respectfully requests that Mr. Nguyen’s email be added to the case file for consideration by the Panel, and that the Panel please note the Complainant’s position that Mr. Nguyen’s offer to sell the domain for $10,000 is further evidence of bad faith registration and use.” 6. Discussion and Findings
6.1 It is incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. The Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.2 The Panel will separately address each of these requirements of the Policy. A. Identical or Confusingly Similar
6.3 The Complainant is clearly the owner of two word marks comprising the term “Y8”. The Panel accepts that the Domain Name incorporates that term in its entirety. Given that the test of confusing similarity is usually seen as a standing or threshold requirement, that is frequently sufficient. As this Panel stated in Research in Motion Limited v. One Star Global LLC,WIPO Case No. D2009-0227:
“… in most cases where a domain name incorporates the entirety of a trade mark, then the domain name will for the purposes of the Policy be confusingly similar to the mark. The Complainant has cited a number of cases that are said to support that proposition. However, this Panel would prefer not to endorse this as a hard and fast rule. Are the domain names or (to adopt American spelling) really confusingly similar to a mark for the word ‘heat’? Each case must be judged on its own facts, and the assessment will always depend on the specific mark and the specific domain name.”
6.4 In this case the trade mark comprises just two letters. Therefore, it is not difficult to conceive of domain names that might incorporate the mark in its entirety and yet not be confusingly similar to the Complainant’s mark. Nevertheless, the Panel concludes that in this case the Domain Name is “confusingly similar” to the Complainant’s marks for the purposes of the Policy.
6.5 There are two reasons for this. The first is the Complainant’s undisputed contention that the term “Y8” is one that has no descriptive or generic meaning. Although it is difficult to give any meaning to the term “3y8” it is not fanciful to suggest that they would be read and understood as involving some reference to the term “Y8” embodied in the Complainant’s marks.
6.6 The second reason is that the actual use made of the Domain Name in this case suggests that the Respondent adopted the term “Y8” in the Domain Name because of its association with the Complainant’s business and marks. Normally, determining whether there is confusing similarity involves an objective comparison between relevant mark and relevant domain name alone. The content of the respondent’s website is not usually relevant. However, as this Panel recorded in RapidShare AG and Christian Schmid v. majeed randi, WIPO Case No. D2010-1089, a respondent’s intent can sometimes provide evidence as to how the domain name is objectively understood by others. This is such a case.
6.7 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
6.8 For the reasons that are set out in greater detail under the heading of “Registered and Used in Bad Faith” below, the Complainant has persuaded the Panel that the Domain Name was registered and has been held because it incorporates the Complainant’s Y8 mark. The Panel also concludes that this was done with a view to unfairly drawing Internet users to the Respondent’s website, which competes with the website of the Complainant. Such activity does not involve a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. In the circumstances, the Panel concludes that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
6.9 The Panel accepts the Complainant’s contention that at the time the Domain Name was registered the Respondent would have known of the Complainant’s use of the Y8 mark. As the Complainant contends, and is not disputed, the term “Y8” is not a descriptive or generic one for the services that the Complainant and the Respondent offers. Accordingly, the only sensible explanation of the Respondent’s registration of a domain name that incorporates the “Y8” term is because of its association with the Complainant.1
6.10 Further, there is the remarkable similarity between the Respondent’s website and that of the Complainant, shortly after the Domain Name was registered. The obvious impression one gets when looking at a screenshot of the Respondent’s website at that time is that it was designed at the very least to emulate the site of the Complainant.
6.11 The Complainant also contends (and this is not denied) that the website operating from the Domain Name has hosted advertisements. Given this, the Panel concludes that the Domain Name has been registered and used to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that web site. Such activity falls within the scope of paragraph 4(b)(iv) of the Policy.
6.12 The Panel’s finding is one of actual rather than constructive knowledge. Indeed, the Panel is sceptical that claims of constructive knowledge assist the Complainant in this case (see paragraph 3.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition). However, it is not necessary to consider this issue further.
6.13 Further, as the Complainant rightly contends in its Complaint, the examples of bad faith registration and use set out in paragraph 4(b) of the Policy are non-exhaustive. Regardless of whether the Respondent’s activities strictly fall within the scope of paragraph 4(b)(iv) of the Policy, it is sufficient for a finding of bad faith registration and use that the Domain Name has been registered and used to take unfair advantage of the Complainant’s trade mark rights (see M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230). The Panel accepts that this is the case here.
6.14 A particular additional factor that points in that direction is the Respondent’s offer to transfer the Domain Name for USD 10,000 after receiving the Notification of Complaint. There is nothing per se illegitimate in offering to sell a domain name to someone else. But the magnitude, circumstances and timing of that offer nevertheless support the Complainant’s case. This was an odd way for the Respondent to have responded to the Complaint, if the Domain Name had been registered and/or was being used with some legitimate purpose in mind.
6.15 Accordingly, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
7.1 For 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.
Matthew S. Harris
Sole Panelist
Date: April 13, 2015
1 As far as the Panel can tell the Community Trade Mark relied upon by the Complainant and identified in paragraph 4.3 of this decision, although filed before the Domain Name was registered, was not published until after the Domain Name was registered (and as to the significance of publication so far as rights against others is concerned, see Article 9(3) of the Community Trade Mark Regulation). It may be that this is one of the reasons why the Complainant also seeks to rely upon alleged pre-existing common law rights. However, in the opinion of the Panel this does not matter where, as here, the complainant has used the relevant sign in a trade mark sense prior to the domain name’s registration and the domain name has been registered with the intention of taking advantage of any trade mark rights that may subsequently arise (see, for example, United Phosphorus Limited v. Monagro Sp.z o.o. WIPO Case No. D2014-1561).
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