Complainant is Gamestop, Inc., United States of America (“United States” or “U.S.”), represented by Kelley Drye & Warren, LLP, United States.
Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / Bruce Williams, United States.
2. The Domain Name and RegistrarThe Disputed Domain Name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2021. On December 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with Disputed Domain Name. On December 22, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for Disputed Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 28, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 30, 2021.
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”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 7, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 27, 2022. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 8, 2022.
The Center appointed Michael A. Albert as the sole panelist in this matter on February 11, 2022. 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 BackgroundComplainant is the exclusive owner of all right, title, and interest in and to the GAMESTOP Marks, which are the subject of U.S. Registration Nos. 1,707,460, 2,489,084, 2,805,277, 2,805,625, 2,902,027, 2,933,627, and 3,239,889 (all incontestable), and others worldwide. The earliest registration date is August 11, 1992.
The Disputed Domain Name
Complainant has extensive, exclusive rights in the well-known GAMESTOP Marks throughout the world in connection with retail and online retail store services featuring computer, video and electronic games, consumer electronics, wireless services, accessories, and related goods and services. The Disputed Domain Name is nearly identical and confusingly similar to Complainant’s Marks.
Respondent has no rights or legitimate interest in the Disputed Domain Name. The Disputed Domain Name is not the trade name or company name of Respondent. Respondent is not commonly known by that name, is not a licensee of the Complainant, and is not otherwise authorized to use Complainant’s GAMESTOP Marks. Respondent is seeking to capitalize on consumer confusion between the Complainant and its offerings and the Disputed Domain Name and Respondent’s business of offering for sale its own gift cards.
Respondent registered and is using the Disputed Domain Name in bad faith. By including the entirety of Complainant’s famous GAMESTOP Mark in the Disputed Domain Name, by directing the Disputed Domain Name to a website unaffiliated with Complainant, and by offering goods and services which compete with those offered by Complainant in the form of Respondent’s gift cards, Respondent leaves no doubt that it has acted with the bad-faith intent to attract Internet users to its website by capitalizing on the goodwill of Complainant’s famous GAMESTOP Marks.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarThe Disputed Domain Name registered and used by Respondent is confusingly similar to Complainant’s well-known and distinctive GAMESTOP Marks. It incorporates the entirety of Complainant’s GAMESTOP Mark with the only difference being the addition of the term “balance”.
The addition of terms to a disputed domain name does not prevent a finding of confusing similarity.
“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.” See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.
The Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsThe evidence strongly suggests that Respondent’s registration of the Disputed Domain Name for use in connection with its gift cards for Respondent’s retail and online business was made for the purpose of taking unfair advantage of the fame, popularity, and goodwill associated with Complainant’s well-known GAMESTOP Marks.
The disputed domain name consists of the Complainant’s Mark in its entirety and resolves to a website featuring the Complainant’s Mark in various instances, both in text and graphic form, and allegedly offering gift cards to use on the disputed domain name or at the Complainant’s retail locations. Accordingly, the nature of the disputed domain name, coupled with the content, creates a risk of implied affiliation that is exacerbated by the lack of any clarifying statement as to the disputed domain name’s relationship, or lack thereof, to the Complainant. Moreover, the offering of competing commercial services via the use of a confusingly similar disputed domain name cannot amount to a bona fide offering of goods or services, nor a noncommercial fair use.
The Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithRespondent’s actions of registering the Disputed Domain Name and using it to direct Internet traffic to its website, which purports to offer competing goods, evidences a clear intent to disrupt Complainant’s business, deceive customers, and trade off Complainant’s goodwill by creating an unauthorized association between Respondent and Complainant. Accordingly, Complainant has shown bad faith registration and use. See, e.g., Levi Strauss & Co. v. Levi Factory Outlet LLC / Susana Valencia Bernal / Domain Privacy Service FBO Registrant,WIPO Case No. D2014-1351 (“[A]ll evidence here points to the conclusion that the Respondent registered and then used the disputed domain name to attract Internet users for financial gain…. This is the scenario envisaged by paragraph 4(b)(iv) of the Policy, and …constitute[s] bad faith registration and use.”); Netmovers Ltd. v. Anne Marie Doyle,WIPO Case No. DIE2008-0001 (“The Panel does not consider that the redirect of the domain name [to another site of respondent in the same industry as complainant] constitutes a good faith offering of goods or services, or operation of a business”); and Fannie May Confections Inc. v. Domain Contact 3,WIPO Case No. D2006-1654 (finding bad faith use and registration where respondent used domain names to offer competing products with complainant and engaged in a pattern of registering websites with variations of complainant’s marks).
Moreover, given Complainant’s prior use of its GAMESTOP Marks for over two decades before the Disputed Domain Name was registered, and the renown of Complainant’s GAMESTOP Marks and associated goods and services at the time the Disputed Domain Name was registered, it seems highly likely that Respondent was aware of Complainant’s rights in the GAMESTOP Marks at the time it registered the Disputed Domain Name.
The Panel finds that Complainant has satisfied 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,
Michael A. Albert
Sole Panelist
Date: February 22, 2022