The Complainant is GameStop, Inc., United States of America (“United States”), represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Deep Memon, India.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 29, 2021. On September 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 30, 2021, 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 October 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 1, 2021.
The Center appointed Nicholas Weston as the sole panelist in this matter on November 14, 2021. 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 BackgroundThe Complainant is a Delaware corporation established in 1996 that operates a retail business offering games and entertainment products through its e-commerce and physical stores. The Complainant currently operates its business in the United States, Canada, Australia, and Europe with a total of 4,816 stores, approximately 12,000 full-time employees and in Q2, 2021 the Complainant generated net sales of USD 1.183 billion. It uses the title “Game Informer” on a leading video game publication featuring reviews of new title releases, game tips, and news regarding current developments in the video game industry. Game Informer debuted in 1991 and is claimed to be the 3rd largest magazine in the United States with more than 8 million copies circulated. The Complainant holds a portfolio of registrations for the trademark GAME INFORMER, and variations of it, in several countries. United States Trademark Registration No. 1788102, for example, was registered on August 17, 1993.
The Complainant owns the domain name
The Respondent registered the Disputed Domain Name
The Complainant cites its United States trademark registrations, including No. 1788102 registered in 1993 and numerous other registrations around the world, for the mark GAME INFORMER as prima facie evidence of ownership.
The Complainant submits that the mark GAME INFORMER is well-known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name. It submits that the Disputed Domain Name is identical to its trademark, as the Disputed Domain Name incorporates in its entirety the GAME INFORMER trademark and that the similarity is not removed by the addition of the generic Top-Level Domain (“gTLD”) “.tech”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it resolves to a website that “shares information on video games and related products, which completely corresponds to the content offered by the Complainant through its Game Informer brand/magazine and its GAME INFORMER trademark and therefore is considered competing content”, and contends that such use does not qualify as a bona fide offering of goods or services under the Policy, and that the Respondent therefore has no rights or legitimate interests in the Disputed Domain Name.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules having regard to the prior use and fame of the Complainant’s trademarks.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsUnder paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark GAME INFORMER in numerous countries including the United States. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358).
Turning to whether the Disputed Domain Name is identical or confusingly similar to the GAME INFORMER trademark, the Panel observes that the Disputed Domain Name is comprised of: (a) an exact reproduction of the Complainant’s trademark GAME INFORMER; (b) followed by the gTLD “.tech”.
It is well-established that the gTLD used as part of a domain name is generally disregarded unless the gTLD takes on special significance where it has relevance to the analysis (see Autodesk v. MumbaiDomains,WIPO Case No. D2012-0286; Alstom v. WhoisGuard Protected, WhoisGuard, Inc. / Richard Lopez, Marines Supply Inc,WIPO Case No. D2021-0859). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “gameinformer”.
The Panel finds that the Disputed Domain Name is identical to the Complainant’s GAME INFORMER trademark.Accordingly, the Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview 3.0”), section 2.1).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is misleadingly directing Internet users to a web page dominated by content that, in the Complainant’s submission: “shares information on video games and related products, which […] is considered competing content” thereby illegitimately passing off the owner’s goodwill and reputation for its own benefit. The Complainant also has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark.
On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Name. Lastly, the Disputed Domain Name consists entirely of the Complainant’s trademark, carrying a high risk of implied affiliation that cannot constitute fair use given the suggested sponsorship or endorsement by the Complainant (see: WIPO Overview 3.0, section 2.5.1).
This Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name and, in the absence of a Response by the Respondent, the Panel finds for the Complainant on the second element of the Policy.
C. Registered and Used in Bad FaithThe third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements.
The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith.
On the issue of registration, the Complainant submits that “Respondent has demonstrated a clear knowledge of and familiarity with Complainant’s Game Informer brand and business. The latter is supported by the current content on the website linked to the Disputed Domain Name displaying reviews and news on video games and related products, which directly competes with the content that Complainant has been offering under its Game Informer brand for decades.” Taking into account the composition of the Disputed Domain Name and the content of the website it resolves to, the Panel is satisfied that the Respondent knew of the Complainant’s famous trademark GAME INFORMER when it registered the Disputed Domain Name (see: WIPO Overview 3.0, section 3.1.4).
The Panel finds, as the basis of a further finding of bad faith, that there is no reason for the Respondent to have registered the Disputed Domain Name other than to trade off the reputation and goodwill of the Complainant’s trademark (see: Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403 (which held that the disputed domain name in question was “so obviously connected with the Complainant and its products that its very use by someone with no connection with Complainant suggests opportunistic bad faith”).
The diversion of Internet users is also a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions (see L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc.,WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; and Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814).
Further, a gap of several years between registration of a complainant’s trademark and respondent’s registration of a disputed domain name (containing the trademark) can indicate bad faith registration (see Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415). In this case, the Respondent registered the Disputed Domain Name 27 years after the Complainant established trademark rights in the GAME INFORMER mark.
On the issue of use, the evidence is that the Disputed Domain Name resolves to a web page unconnected with any bona fide supply of goods or services by the Respondent. The Panel finds that use of the Disputed Domain Name to resolve to a website containing competitive content is also evidence of bad faith.
In the absence of any evidence to the contrary, this Panel finds that the Respondent has taken the Complainant’s trademark GAME INFORMER and incorporated it in the Disputed Domain Name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users to a web page for commercial gain.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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,
Nicholas Weston
Sole Panelist
Date: November 28, 2021