The Complainant is LDW Software, LLC of San Francisco, California, United States of America (“US”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, US.
The Respondent is Stella Chang of Hangzhou, Zhejiang, China. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 2, 2017. On March 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 3, 017, 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 March 7, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 27, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 28, 2017.
The Center appointed Nick J. Gardner as the sole panelist in this matter on April 6, 2017. 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 company controlled by Arthur Humphrey (“Humphrey”). The Panel finds the following to be undisputed facts, these facts being supported by a declaration from Humphrey.
Humphrey registered the Disputed domain Name on June 30, 1996, it being at that date one of the few remaining three-character “.com” domain names that was available. Soon thereafter, Humphrey launched a website development company using the Disputed Domain Name, which Humphrey called “Liquid Design Works” and which was commonly known and referred to as “LDW.” Humphrey specifically named the company “Liquid Design Works” and referred to it as “LDW” so that the company would have a domain name that was a relevant acronym.
In 2002, Humphrey founded a game development company called “Last Day of Work LLC,” commonly known as “LDW,” which began using the Disputed Domain Name at that time. Last Day of Work LLC was later renamed as LDW Software LLC, the Complainant in this proceeding.
The Complainant originally developed casino-style games for handheld PalmPilot devices, initially generating a few hundred dollars per month in revenue. In 2004, the Complainant developed its first non-casino game, a “virtual pet” game, which it later made available not only on PalmPilot devices but also on Windows and Macintosh computers and, following its launch in 2007 the iPhone.
Over the past 15 years, the Complainant expanded its platform of games to include simulation games, including its most popular series of games known as “Virtual Villagers”, “Virtual Sim”, “Fish Tycoon”, “Plant Tycoon”, “Little Palm Pet”, “EZ Blackjack”, “Video Poker Teacher”, “Pocket Paigow” and “Casino Strategy Pack”.
The Complainant’s most popular game, “Virtual Villagers”, has been installed by users more than 100 million times. The Complainant has licensed its games in other countries (including Japan), to retailers (including Wal-Mart) and for use on other video game platforms (including Nintendo DS). The Complainant has received numerous awards for its games, including the 2005 “Game of the Year” from Palm (makers of the PalmPilot handheld computers), a 2006 “Zeeby” casual game award for “Best Strategy & Simulation Game”, and others.
The Complainant has generated more than USD 20 million in revenue from its games, including approximately USD 4 million in the past year.
On December 5, 2016, the Complainant discovered that its website using the Disputed Domain Name was not available. Humphrey investigated and discovered that the Disputed Domain Name had been transferred, without his knowledge or consent, to the Respondent.
Upon investigation Humphrey discovered that the Disputed Domain Name had been transferred from the Complainant’s registrar, Network Solutions, to another registrar, GoDaddy, on approximately June 9, 2015, and that the email address for the Disputed Domain Name had been changed to a similar but different email address that was not associated with the Complainant or Humphrey, and that the mailing address for the Disputed Domain Name had been changed to an address that was not associated with the Complainant or Humphrey. Thereafter, the registrant of the Disputed Domain Name was disclosed to be the Respondent in this Complaint, that is, Stella Chang.
Despite the transfer of the Disputed Domain Name from one registrar to another and from the Complainant to the Respondent, the “name servers” for the Disputed Domain Name were not changed until December 5, 2016. As a result, the Complainant’s website using the Disputed Domain Name remained active and, to the Complainant’s knowledge, unaffected. Only when the name servers were changed on December 5, 2016, did Complainant learn that the Disputed Domain Name had been transferred to the Respondent.
The Disputed Domain Name is not linked to an active website.
The Complainant owns a trademark registration for the LDW Trademark in Switzerland, Reg. No. 697750, for use in connection with “computer game software; downloadable computer game software; downloadable electronic game software for use with mobile phones, portable players, pocket computers and tablet computers.” This registration was granted on January 16, 2017. 5. Parties’ Contentions A. Complainant
The Complainant’s case can be summarised as follows.
a) The Disputed Domain Name is identical to the LDW registered trademark owned by the Complainant. The Complainant also has common law rights in the term LDW by virtue of its extensive use over many years and its commercial success.
b) The Respondent does not have any rights or legitimate interests in the Disputed Domain Name.
c) The Respondent obtained the transfer of the Disputed Domain Name by fraud. This amounts to registration and use in bad faith. The Complainant submits detailed argument and references to previous UDRP cases in support of this submission. Where applicable these are discussed below. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Panel notes that no communication has been received from the Respondent. However given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar then the Panel again adopts the approach set out in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) namely, “once the WIPO Center has notified the complaint to the WhoIs-listed contact information (especially where confirmed by the registrar) for the domain name registrant, this would normally satisfy the requirement in paragraph 2(a) of the UDRP Rules to employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see e.g., Verner Panton Design v. Fontana di Luce Corp,WIPO Case No. D2012-1909). A. Identical or Confusingly Similar
The Complainant has submitted detailed evidence that it is the owner of a trademark consisting of the letters “ldw” (the LDW trademark”). Although the date of registration of this trademark postdates the date that the Respondent registered the Disputed Domain Name this does not matter. The date of trademark registration is irrelevant with respect to Paragraph 4(a)(i) of the Policy. As stated in paragraph 1.1 of WIPO Overview 2.0:
“If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights. The location of the trademark, its date of registration (or first use)…, and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP”.
In any event the Panel would also accept the Complainant’s submissions that the extent of its activity under the term “LDW” (see above) establishes common law rights in that term that predate the Respondent’s registration of the Disputed Domain Name.
The Panel holds that the Disputed Domain Name is identical to the above trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled. It is well established that the specific top-level domain (in this case “.com”) does not affect the domain name for the purpose of determining whether it is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCradyWIPO Case No. D2000-0429. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that demonstrate a right or legitimate interest in the domain name:
“i. before any notice to you of the dispute, your use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
ii. you (as an individual, business or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
iii. you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the LDW trademark. The Complainant has prior rights in the term LDW which precede the Respondent’s registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see for example Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish any rights or legitimate interests in the Disputed Domain Name. Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled. C. Registered and Used in Bad Faith
In the present circumstances, the undisputed evidence is that the Respondent procured the transfer of the Disputed Domain Name from the Complainant by fraud.
Registration as a result of fraudulent activity amounts to registration and use in bad faith – see for example in Anglotopia, LLC v. Artem Bezshapochny,WIPO Case No. D2013-0168. In that case, the panel found bad faith, writing:
“The transfer of a domain name amounts to a new registration (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.7). It appears that the Disputed Domain Name was registered or acquired by the Respondent on December 5, 2012. Any changes to the registrars and registrants of the Disputed Domain Name occurred without the knowledge or consent of the Complainant. It is well-settled that the unauthorized transfer of a domain name (“hijacking”) is of itself evidence of the bad faith registration and use of a domain name (see e.g. Worldcom Exchange, Inc. v. W, Inc.,WIPO Case No. D2004-0955 and United Computer Products, Co Inc. v. Domain Name Proxy, Inc Domain Name Proxy, Inc Domain Name Proxy, Inc Domain Name Proxy, Inc,WIPO Case No. D2008-0017 and cases cited therein)”.
See also:
Reba K. Orszag, dba CHI v. Darry Bellman,WIPO Case No. D2004-0253: “Complainant alleges a fraudulent transfer of the domain name, and her claim is supported by evidence. That fraudulent transfer seems sufficient for a finding of bad faith registration.”
EDP - Energias de Portugal, S.A. v. Huhan, Yuming Zhong,WIPO Case No. D2016-1536: “Although the Respondent has not made any use of the disputed domain name, the circumstances of this proceeding, including the fraudulent transfer of the disputed domain name, demonstrate that the Respondent must have known of the Complainant and of its rights in the Trade Mark at the time of the Respondent’s transfer of the disputed domain name. Furthermore, under the circumstances, the Respondent’s passive holding of the disputed domain name constitutes bad faith use for purposes of the Policy.”
United Computer Products, Co. Inc. v. Domain Name Proxy, Inc Domain Name Proxy, Inc Domain Name Proxy, Inc Domain Name Proxy, Inc,WIPO Case No. D2008-0017: “It is clear that the disputed domain name was transferred without the permission of the Complainant and through improper means. It is well-settled that the practice of hijacking a domain name – that is wrongfully taking control of a domain name from the rightful name – is of itself evidence of the bad faith use and registration of a domain name.”
Further the Panel notes the Respondent has not filed a Response and hence has not availed herself of the opportunity to present any case of legitimate use that she might have. The Panel infers that none exists.
As a result, and applying the principles in the above noted UDRP decisions, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 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 name be transferred to the Complainant.
Nick J. Gardner
Sole Panelist
Date: April 20, 2017
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