The Complainant is Web Entertainment Limited of Las Vegas, Nevada, United States of America, represented by Randazza Legal Group, United States.
The Respondent is Halil Durmaz of Istanbul, Turkey. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , , , , , , , and are registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 2, 2016. On June 2, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 3, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 9, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 29, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 30, 2016.
The Center appointed David J.A. Cairns as the sole panelist in this matter on July 15, 2016. 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 the registered owner of the following trademarks for the provision of online video games, virtual reality games and other entertainment services: (i) United States Patent and Trademark Office ("USPTO") trademark registration No. 4130791 for the word mark Y8 filed on April 11, 2011, registered on April 24, 2012 and based on a first use in commerce on December 5, 2006 in international class 41; (ii) Community trademark registration No. 009412255 filed on September 30, 2010 and registered on August 25, 2011 for the word mark 'Y8' in international classes 35 and 41.
The Complainant also owns further USPTO and Community trademark registrations for a graphic mark consisting of Y8 beneath which is the wording "Y8.COM" inside a black rectangle, and utilizing the colours grey, red and black.
The Complainant also owns and operates the domain name .
The disputed domain names were registered on various dates between July 17, 2010 and December 15, 2011. There were multiple registrations of disputed domain names on January 31, 2011 (two registrations), March 10, 2011 (three registrations), and August 1, 2011 (four registrations).
The Panel entered the fifteen disputed domain names in its web browser on July 29, 2016 or August 1, 2016. Four of the disputed domain names did not lead to any website that the Panel was able to reach (; ; ; and ). The other disputed domain names all led to websites with a word motif in red, green and blue in the upper left hand corner reading "Free Online Games". Ten websites had identical motifs, while for the website associated with the motif used red, white and blue, superimposed on the word "USA" with a "stars and stripes" motif.
In various forms on the landing pages there were lists of categories at the top of the page (for example, "Action"; "Adventure"; "Defense"; "Driving"; "Fighting"; "Rhythm"; "Shooting"; "Sports"; "Strategy") leading to games. There were also further links on the landing pages to much wider range of categories. The pages share a similar layout and use of colour.
The eleven landing pages viewed by the Panel included various headings for sponsored links. In some cases these links led to games and in other cases to totally unrelated services. In one case () there were headings for sponsored links but the links did not appear to have been activated. 5. Parties' Contentions A. Complainant
The Complainant states that it owns and operates the domain , and has used this domain name for several years in connection with the provision of online video games, virtual reality games, and other online entertainment services. In providing these services it says that it has made significant use of the Y8 trademark. The Complainant states that is one of the most popular Internet sites for video and virtual reality games in the world.
The Complainant states that its rights based on its trademark registrations date from the filing of the trademark applications (referring to WorldNames, Inc., NU Domain Ltd. v. Marcel & Nora Uithoof,WIPO Case No. D2005-0480 for Community trademark registrations and Rolley v.Younghusband, 204 F.2d 209, 211 (9th Cir. 1953) for its U.S. trademark registrations). It states that 14 of the 15 disputed domain names were registered after the effective date of the Complainant's registered trademark rights. The Complainant states that in addition to its registered trademarks it has extensive common law rights in the Y8 mark that commenced well before the earliest applicable registrations of the disputed domain names, and as early as 2006. The Complainant refers to a screenshot of the website at on December 5, 2006 which contains the Complainant's distinctive and now trademarked logo, and online non-downloadable video games.
The Complainant states that the Respondent did not register any of the disputed domain names until July 17, 2010. At that point, Complainant had been using its Y8 marks in commerce for nearly four (4) years. The Complainant states that since registration the Respondent has used all the disputed domain names to offer services that directly compete with the Complainant's services. Further, a previous UDRP Panel has identified the Respondent as a cybersquatter on the Y8 trademark, referring to Web Entertainment, LLC v. Halil Durmaz, WIPO Case No. D2015-0374, March 31, 2015.
The Complainant states that the disputed domain names are all identical or confusingly similar to the Complainant's trademarks. The Complainant states that the disputed domain names all contain the entirety of the Y8 trademark with the addition of a single letter or number or common words that do not distinguish them from the Complainant's Y8 trademark. The Complainant states that where a term has no descriptive or generic meaning, adding a few letters or numbers to the term does nothing to lessen a likelihood of confusion. The Complainant states that notwithstanding the addition of the words "joy" to make "y8joy;" "like" to make "y8like;" "fight" to make "y8fight;" "usa" to make "y8usa;" "funny" to make "y8funny;" "site" to make "y8site;" "fan" to make "y8fan;" "cup" to make "y8cup;" and "go" to make both "go-y8" and "y8go," the resulting disputed domain names are all clearly confusingly similar to the Y8 trademark. Further, the addition of the term "pogo" to form "y8pogo" exploits the Complainant's registration of the trademark POG, which is used to provide the same types of services as provided pursuant to the Y8 trademark through the website "".
The Complainant states that the Respondent has neither rights nor legitimate interests in the disputed domain names. It states that the majority of the disputed domain names have been used to provide the same services as offered by the Complainant, and that capitalizing on the fame of a trademark in order to siphon off the Complainant's customers is not a bona fide offering of goods or services. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain names as it is clearly using them for a commercial purpose, by offering services identical to those offered by the Complainant and also for advertising. Finally, there is no evidence that the Respondent is commonly known by the disputed domain names.
With regard to the disputed domain name, the Complainant states that it is not a permissible "fan site" capable of conferring legitimate rights or interests as the utilization of paid advertising and links to other commercial websites removes any rights or legitimate interests. It states that the Respondent intends to profit from consumer confusion, rather than pay tribute to Complainant, in registering and operating
The Complainant states that the disputed domain names were registered and are being used in bad faith. It states that the Respondent clearly registered the disputed domain names to attempt to attract Internet users to its website by creating a likelihood of confusion between the Complainant's services and infringing services offered by the Respondent, as it designed its websites to mimic the "look and feel" of the Complainant's site. The Complainant states that the sheer number of disputed domain names that Respondent has registered tends to demonstrate bad faith. The Respondent registered the fifteen disputed domain names incorporating the Complainant's internationally registered mark, and then launched websites directly competing with the Complainant through all fifteen disputed domain names. It states that the Respondent is a serial cybersquatter.
The Complainant states that the Respondent desired to disrupt the Complainant's business and create a likelihood of confusion among the consuming public as to the source, sponsorship, affiliation or endorsement of the websites located at the disputed domain names, constituting bad faith use.
The Complainant asks that the disputed domain names be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Panel is required to decide the 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 (paragraph 15(a) of the Rules).
The Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain names are 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 disputed domain names; and (iii) that the disputed domain names have been registered and are being used in bad faith.
Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) of the Policy sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights or legitimate interests in the disputed domain name. A. Identical or Confusingly Similar
The Panel accepts that the Complainant owns the trademark registrations for the word mark Y8 referred to above.
The disputed domain names are not identical with the Complainant's Y8 trademark. The disputed domain names all incorporate the Complainant's trademark entirely, adding a short prefix or suffix, or a single letter or numeral (e.g.,; ; and ); and in two instances including a hyphen ( and ).
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2 states that "The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms [...] typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name."
In the present case, the Panel considers that on a visual comparison all the disputed domain names are confusingly similar to the Y8 trademark for the following reasons: (i) all the disputed domain names incorporate in its entirety the trademark Y8; (ii) "Y8" is an invented term without any meaning and is highly distinctive; (iii) Y8 is a widely known trademark with a particularly strong online profile; (iv) the Y8 trademark remains recognizable and distinctive within all the disputed domain names, and in fact appears distinctive as the first element of twelve of the disputed domain names; (v) many of the additions to the disputed domain names comprise short commonplace words that endorse the trademark function of Y8 (; ; ; ; ; ; ; ; and ).
Two of the disputed domain names combine the Y8 trademark with the word "pogo". The Complainant asserts that this is a reference to the trademark POG, which is also owned by the Complainant and used in respect of video games. However, in both of the disputed domain names the reference is to "pogo" and not to POG. Further, the Panel notes that there is a domain name that hosts a website for online video games. According to the WhoIs-information the domain name is owned by a third party unrelated to this proceeding. The Panel therefore concludes that the and disputed domain names combine the Complainant's trademark with the name of another online provider of video game services.
Nevertheless, in the composite domain names and the Complainant's Y8 trademark remains distinctive, as "pogo" is a short name. Both parts of the composite disputed domain names remain individually identifiable. Therefore, there is also a confusing similarity between the Y8 trademark and the and disputed domain names.
Therefore, the additional prefixes, suffixes, letters, numerals and symbols in the disputed domain names do not avoid a confusing similarity between the Y8 trademark and the disputed domain names, and so the first element required by the Policy is satisfied.
The Panel notes that a third party may also have trademark rights in the two disputed domain names and . The Panel has considered whether in these circumstances transfer or cancellation is the appropriate remedy. Transfer without prejudice to third party rights is the favoured remedy where a disputed domain name combines the Complainant's trademark with a third party trademark, as explained in Kabbage, Inc. v. Oneandone Private Registration, 1&1 Internet Inc. - / Robert Hanssen, Ridiculous File Sharing,WIPO Case No. D2015-1507. The position is not so clear where, as appears to be the case here, the Complainant and the third party are competitors, and the Complainant has not sought the third party's consent (although even in these circumstances transfer has been ordered: see F. Hoffmann-La Roche AG v. Bob,WIPO Case No. D2006-0751). There is the additional circumstance in this case that favours transfer in that the Complainant owns the trademark POG, that is also included in these two disputed domain names. In the circumstances, the Panel decides to order transfer, but explicitly without prejudice to any rights which may be asserted by a third party trademark holder in relation to these disputed domain names. B. Rights or Legitimate Interests
The Panel notes the following circumstances in relation to any possible rights or legitimate interests of the Respondent in the disputed domain names: (i) there is no evidence that the Respondent has any proprietary or contractual rights in any registered or common law trademark corresponding in whole or in part to the disputed domain names; (ii) the Respondent is not authorized or licensed by the Complainant to use the Y8 trademark or to register and use the disputed domain names; (iii) there is no evidence that the Respondent has been commonly known by any of the disputed domain names.
Paragraph 4(c) of the Policy provides a list of three circumstances, any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain names. With regard to paragraph 4(c)(i) of the Policy the Respondent cannot be considered to be using the disputed domain names in connection with a bona fide offering of goods and services because the offering relies on the deceptive use of the Y8 trademark to attract Internet users to the Respondent's websites. Further, the websites associated with the disputed domain names viewed by the Panel either displayed sponsored links or were prepared to do so, and the association of the Complainant's Y8 trademark with unrelated goods or services in this way is not a bona fide use.
The Panel was not able to enter the website, but accepts that it is not a genuine fan site. The Complainant submitted a screenshot showing a landing page for dated June 29, 2015 with the same motif and otherwise similar to those associated with the other disputed domain names. Further, the Panel relies on the Complainant's statement in the Complaint (on the basis of the certification of the accuracy of the information in the Complaint) that the website associated with "contains numerous links to websites competitive with Complainant, some of which are also operated by Respondent".
Paragraph 4(c)(ii) does not apply as there is no evidence that the Respondent is known by the disputed domain names.
With regard to paragraph 4(c)(iii) the Respondent clearly has an intent of commercial gain and to mislead Internet users, as the disputed domain names use the Complainant's widely known trademark to offer similar services, and presumptively generate revenue from sponsored links.
In these circumstances, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain names. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that a disputed domain name was registered in bad faith and also is being used in bad faith. Paragraph 4(b) of the Policy sets out the four circumstances without limitation which if found by a Panel to be present shall be evidence of the registration and use of a domain name in bad faith. However, bad faith may be established on grounds other than those set out in paragraph 4(b), as the circumstances in paragraph 4(b) of the Policy are expressed to be "in particular but without limitation".
The Policy requires both registration and use in bad faith. The evidence confirms that the Complainant enjoyed common law rights in the widely known Y8 trademarks well prior to the dates of its trademark registrations. The USPTO trademark registrations recognize use of the Y8 trademark in commerce as early as December 5, 2006, and there is also evidence of the use of the Y8 trademark at the domain name on this date. The Panel finds that the Respondent's linkage of "Y8" with the prefixes, suffixes, letters, numerals and symbols in the disputed domain names was deliberate and in full knowledge of the Complainant's Y8 trademark.
The fact that the Respondent has registered fifteen distinct domain names incorporating the Complainant's trademark in a confusing manner in this case, together with the fact that the Respondent has already been ordered to transfer five other domain names incorporating the Complainant's trademark (see Web Entertainment, LLC v. Halil Durmaz, supra) demonstrates an intention to systematically exploit the Complainant's Y8 trademark. There is a pattern of conduct in this case, aggravated by a commercial purpose, that constitutes bad faith in terms of the Policy.
In addition, the circumstances of paragraph 4(b)(iv) are present in this case as the Respondent registered and has used the disputed domain names with the intention of deceiving and taking advantage of Internet users who would expect to find a website that is affiliated to or sponsored by the Complainant at a domain name incorporating the Y8 trademark. The sponsored links on the websites, including links for unrelated services confirm on balance the objective of commercial gain.
For these reasons, the Panel finds that the Respondent has registered and is using the disputed domain names in bad faith. 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 disputed domain names , , , , , , , , , , , , and be transferred to the Complainant.
This transfer is without prejudice to any rights, which may be asserted by a third party trademark holder, with regard to the disputed domain names and .
David J.A. Cairns
Sole Panelist
Date: August 1, 2016
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