��
WIPO Arbitration and Mediation Center
��
ADMINISTRATIVE PANEL DECISION
Atlas Technology Group v. Wang Song
Case No. DCC2008-0001
��
1. The Parties
Complainant is Atlas Technology Group, Port Vila, Vanuatu, represented by Lathrop & Gage L.C., United States of America.
Respondent is Wang Song, Fu Shun, China.
��
2. The Domain Name and Registrar
The disputed domain name is registered with Xin Net Technology Corp.
��
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ��Center��) on February 26, 2008. On February 28, 2008, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the domain name at issue. On February 29, 2008, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed a submission with regard to the Deficiency Notification to the Center on March 4, 2008. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the ��Policy��), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 5, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 25, 2008. The Response was filed with the Center on March 22, 2008.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on April 4, 2008. 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
Complainant is Atlas Technology Group, a Vanuatu corporation and Complainant or its predecessors-in-interest has used the IGE trademark for a variety of goods and services including, but not limited to, providing an on-line marketplace for buying, selling, trading and auctioning virtual game items, virtual game cash and related items via the Internet. Complainant has provided the services through the website since February 2003. Complainant owns a pending trademark registration No. 78887275 in the United States of America for IGE on a variety of goods and services, including ��providing an on-line marketplace for buying, selling, trading and auctioning virtual game items, virtual game cash and related items via the Internet.�� The registration of the IGE trademark has been given a 6-month dateline on January 22, 2008 to use the mark in commerce and to file of Statement of Use before the United States Patent and Trademark Office (USPTO) will register the IGE trademark.
Respondent registered the disputed domain name on March 19, 2007.
��
5. Parties�� Contentions
A. Complainant
Identical or Confusingly Similar
Complainant asserts that it has rights in the IGE trademark based on the fact that it has used the mark for a variety of goods and services including, but not limited to, providing an on-line marketplace for buying, selling, trading and auctioning virtual game items, virtual game cash and related items via the Internet since at least January 2002. It further contends that through Complainant��s advertising efforts, the IGE mark has become widely known and incorporates significant goodwill. Furthermore, Complainant has been providing the variety of goods and services via the website since February 2003. Complainant has also applied for a trademark registration of the IGE mark in the United States of America and the USPTO has issued a Notice of Allowance for Complainant to file a Statement of Use within six months. Thereafter, the mark IGE will be registered by the USPTO as service mark in relation to classes 35, 38, 41 and 42.
Complainant contends that the disputed domain name is identical or, at a minimum, confusingly similar, to Complainant��s IGE trademark. The disputed domain name is according to Complainant simply Complainant��s IGE in standard characters with the addition of the top level domain name ��.cc��. Complainant contends that the addition of a top level domain name suffix to a trademark does not render the domain name distinguishable form an otherwise identical trademark. Complainant cites Rollerblade, Inc. v. Chris McCradyWIPO Case No. D2000-0429. Furthermore, Complainant contends that the disputed domain name is used by Respondent on similar services to those on which Complainant uses it and this further increases the likelihood of confusion among consumers.
Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests with respect to the disputed domain name. First, Complainant contends that under this part of the test, it is generally understood that once Complainant has provided prima facie evidence that Respondent does not have rights or legitimate interest with respect to the domain name, the burden of proof then shifts to Respondent to rebut Complainant��s assertion.
Complainant contends that Respondent has no rights or legitimate interests with respect to the disputed domain name for the following reasons:
1. Complainant has not licensed or authorized Respondent to use the IGE trademark, whether as a domain name or within the content of its webpages.
2. Although Respondent is using the disputed domain name to offer goods and services, it is not a bona fide offer of those goods and services as Complainant asserts that Respondent is passing itself off as Complainant. Thus, Respondent cannot establish its legitimate rights by violating Complainant��s intellectual property rights.
3. Respondent is not known by the disputed domain name and the trademark does not constitute a part of its entity name or any affiliate thereof.
4. Respondent knew of Complainant��s widespread use of the IGE trademark at the time Respondent registered the disputed domain name as evidenced by Respondent��s wholesale copying of materials from Complainant��s website.
5. Respondent is using the disputed domain name and the IGE trademark in a manner designed to confuse consumers into believing that Respondent is in fact Complainant and profiting by diverting customers to Respondent��s website.
Registered and Used in Bad Faith
Complainant contends that Respondent has registered and used the disputed domain name in bad faith on the following grounds:
1. Respondent in its use of the disputed domain name intentionally attempts to attract Internet users to Respondent��s website for commercial gain by creating a likelihood of confusion with Complainant��s mark and confusion as to source of Respondent��s website and of the products or services on Respondent��s website.
2. Respondent��s trademark and copyright infringement support a finding of bad faith registration and use of the disputed domain name by Respondent. Complainant cites Hoffmann-La Roche Inc. v. US Online Pharmacies,WIPO Case No. D2006-0348.
3. Respondent��s claims on the website at that it has been providing services similar to Complainant since ��its founding in 1997 by consummate gamers�� are indicative of bad faith as the Complainant contends that the website has been operation less than one year.
4. Respondent��s use of exact copies of material from Complainant��s website on its own website at indicate that Respondent has knowledge of Complainant when it created the website and since the mark IGE is the central portion of both website addresses, Respondent must have knowledge of Complainant��s rights in the IGE mark when it registered the disputed domain name. Prior knowledge of Complainant��s use of the IGE mark is evidence of bad faith in the registration of an identical domain name.
5. Respondent��s registration of the disputed domain name occurred after the registration of Complainant��s domain name and it may be inferred that Respondent learned of Complainant��s registration when it registered . Complainant cites Credit Suisse Group v. Milanes-Espinach, Fernando and Milanes-Espinach, SA,WIPO Case No. D2000-1376.
B. Respondent
Respondent has through one ���� of �й���˳��, submitted a Response. In the Response, Respondent contends that at the time of registration of the disputed domain name, Complainant is not the owner of the and has no relations with this website. Complainant has bought over the subsequently and Respondent contends that before the said purchase, Respondent has already registered the disputed domain name .
Respondent further contends that the business of and are completely different and that there can be no confusion between the two. ��www.�� is a website that provides Internet users the service of buying and selling massively multiplayer online game (MMOG) virtual currency and assets on the Internet. In contrast, Respondent��s website ��www.�� provides a membership service that assists members to purchase MMOG virtual currency at the lowest available price from portals in China. Respondent contends that its website ��www.�� is not for profit and collects only a membership fee from its members for services rendered. Thus, the relationship between the website owner and its members is not that of a seller and buyer and there is no auction carried out on the ��www.�� website.
Finally, Respondent contends that he is a Chinese national and does not understand English. Thus, Respondent has stated that it will be unfair for this dispute to be tried in the United States of America and that the appropriate judicial forum should be that in China.
��
6. Discussion and Findings
6.1 Language of the Proceedings
The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Complaint was submitted in the English language and accordingly, the Center sent a language notification to Complainant on March 3, 2008. In reply to the Center��s notification, Complainant has submitted a response regarding language of proceedings requesting English to be the language of proceedings on March 4, 2008.
Complainant submitted the following arguments on the issue of the language of the proceedings:
1. The website currently located at ��www.�� and operated by Respondent has strong connections to English speaking areas of the world, and no connection to Chinese-speaking areas.
2. The website is in English. Thus Respondent most likely has familiarity with the English language. A number of services are provided in English on the website, including the content of the website, chat support in English and email support in English.
3. Respondent also offers telephone support through telephone numbers with are codes located in Oakland, California and Manitoba, Canada.
4. The website sells merchandise that is not of use in China, because it is for use in online virtual worlds that only allows users from the United States of America or Europe. The website also contains links and supports for a charitable organization in the United States of America, thus increasing the likelihood that Respondent is proficient in English.
5. The country code top level domain name of the disputed domain name is for the Cocos Islands, not any part of China. The languages of the Cocos Islands are English and Malay and not Chinese.
(i) The Panel��s discretion under the UDRP
Paragraph 11 of the Rules provides:
��Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.��
Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel��s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not unduly prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.
(ii) The Circumstances of this Case
One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties. The Panel is satisfied that Complainant and the Center have taken all reasonable steps to bring the present proceeding to the attention of Respondent.
In particular, the Panel notes that the material facts of this proceeding are generated in the English language: the disputed domain name; the content of Respondent��s website; and Respondent��s ability to comprehend and respond to the Complaint. Respondent is Chinese and is thus not a native English speaker but the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likelihood that Respondent is conversant and proficient in the English language. The Panel notes that the Center has also taken the extra precaution of sending case-related communications to the Respondent in both English and Chinese.
Pursuant to the Rules, paragraph 11, the Panel has the discretion to determine the language of the present proceeding. After considering the circumstances of the present case, the Panel decides that the proceeding should be conducted in the English language and should proceed henceforth in the English language.
6.2 Substantive Elements of the Policy
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, Complainant must establish that each of the three following elements is satisfied:
1. the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
2. Respondent has no rights or legitimate interests in respect of the domain name; and
3. the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with Complainant to establish that all these three elements are satisfied in this proceeding.
Pursuant to paragraph 15(a) of the Rules, the Panel shall 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. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:
A. Identical or Confusingly Similar
Complainant has produced evidence to demonstrate that it or its predecessor-in-interest has used the trademark IGE in its online business for the selling and buying of MMOG virtual currency and assets since at least January 2002. Furthermore, Complainant has also adduced evidence to show that it has applied for registration the trademark IGE in the United States of America and the USPTO has issued a Notice of Allowance for Complainant to file a Statement of Use within six months. Thereafter, the mark IGE will be registered by the USPTO as service mark in relation to classes 35, 38, 41 and 42. The Panel accepts the evidence adduced by Complainant and finds that Complainant has trademark rights in the mark IGE through first use and registration.
The disputed domain name comprises an exact reproduction of Complainant��s trademark IGE with the addition of the ccTLD ��.cc��. In assessing the degree of similarity between Complainants�� mark and Respondent��s domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements.
The addition of a ccTLD to an otherwise identical replication of Complainant��s trademark does not serve to distinguish Respondent��s domain name from Complainant��s trademark. Many UDRP cases have held that the addition of the generic top level domain extension does not serve to distinguish Respondent��s domain name from Complainant��s trademark because ��when a trademark is composed in whole or in part of a domain name, neither the beginning of the URL nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as a part of its address.�� (See The Forward Association, Inc. v. Enterprises Unlimited, NAF Case No. FA 95491). Consequently, the addition of ��.cc�� domain to Complainant��s trademark IGE does not distinguish Respondent��s domain name from Complainants�� IGE trademark.
The Panel therefore finds that the disputed domain name is confusingly similar to a trademark or service mark in which Complainant has rights.
The Panel thus finds for Complainant on the first part of the test.
B. Rights or Legitimate Interests
The Panel finds that Complainant has established a prima facie case of Respondent��s lack of rights or legitimate interests to the domain name.
The Panel finds that the following circumstances are indicative of Respondent��s lack of rights or legitimate interests in the disputed domain name:
(i) Complainant��s trademark IGE is a coined word with no descriptive significance to the goods or services sold under it. Therefore, Respondent could not be taken to be using the mark IGE in a descriptive sense;
(ii) Respondent has not provided persuasive evidence of a legitimate use of the domain name or compelling reasons to justify the choice of the word ��ige�� in its business operations or choice of domain name;
(iii) Complainant has not licensed or otherwise permitted Respondent to use its trademark or to apply for or use any domain name incorporating the trademark; and
(iv) The mark IGE is a mark which has acquired substantial goodwill especially in the Internet for individuals who are avid MMOG gamesters. Consequently, it is not one that traders would legitimately choose unless the purpose is to create an impression of an association with Complainant.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
��(i) before any notice to you [Respondent] 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 [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial 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.��
Respondent has argued that the business of and are completely different and that there can be no confusion between the two. Complainant��s ��www.�� is a website that provides Internet users the service of buying and selling massively multiplayer online game (MMOG) virtual currency and assets on the Internet. In contrast, Respondent��s website ��www.�� provides a membership service that assist members to purchase MMOG virtual currency at the lowest available price from portals in China. Respondent contends that its website ��www.�� is not for profit and collects only a membership fee from its members for service rendered. Thus, the relationship between the website owner and its members is not that of a seller and buyer and there is no auction carried out on the ��www.�� website. Nevertheless, the Panel is of the opinion that Respondent did not provide persuasive evidence to explain his choice in the disputed domain name. If Respondent is bona fide in his intention to offer ��not for profit�� membership and services over the Internet, he can do so using other domain names which are not identical or confusingly similar to a third party��s trademark or domain name. The fact that Respondent has chosen to register a domain name which identical or confusingly similar to Complainant��s IGE mark without a good explanation is indicative of Respondent��s intention to ride on the goodwill of Complainant��s mark. A purported offering of services by Respondent under a domain name which infringes third party��s intellectual property rights cannot of itself confer onto Respondent rights or legitimate interests in the domain name.
The Panel finds for Complainant on the second part of the test.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of Respondent��s documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent��s website or other on-line location, by creating a likelihood of confusion with Complainant��s mark as to the source, sponsorship, affiliation, or endorsement of Respondent��s website or location or of a product.
To find bad faith on the part of Respondent and to order a transfer of the disputed domain name to Complainant under the present proceeding, Complainant must discharge its burden of proof under the Policy that Respondent registered and used the domain name in bad faith. This commonly includes among other things showing that a respondent had knowledge of a complainant and its trademark rights prior to or at the time of registration/acquisition of the disputed domain name. Previous panels have recognized that in the absence of clear evidence that a respondent had actual knowledge of a mark, certain inferences may be drawn in terms of likely knowledge from inter alia the fame or substantial goodwill of a complainant��s mark.
It is important to note that according to accepted international standards, the fame or notoriety of a trademark is often determined by the relevant section of the public for instance within a particular trade or industry. In the present case, the Panel is satisfied that Complainant has adduced evidence to show that it has acquired substantial goodwill in its IGE mark particularly in the Internet as a marketplace of MMOG virtual currency and assets. Furthermore, in this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcend national borders. More particularly, Respondent appears to be in the same trade and industry as Complainant and on the strength of Complainant��s reputation in its trademark IGE within the MMOG virtual currency and assets market, the Panel finds that it is highly unlikely that Respondent would not have had actual notice of Complainant��s trademark rights at the time of the registration of the domain name.
Respondent has argued that at the time of registration of the disputed domain name, Complainant is not the owner of the and has no relations with this website. Complainant has bought over the subsequently and Respondent contends that before the said purchase, Respondent has already registered the disputed domain name . However, the fact remains that Complainant has rights arising from the use of the IGE mark. Several panels under the Policy have decided that the Policy affords protection not only to those having rights in registered trademarks but also to those having common law rights in their trade or service marks. See Bennett Coleman & Co Ltd v. Steven S Lalwani,WIPO Case No. D2000-0014; SeekAmerica Networks Inc. v. Tariq Masood and Solo Signs,WIPO Case No. D2000-0131; Cedar Trade Associates, Inc. v. Greg Ricks, NAF Case No. FA93633; and Passion Group Inc. v. Usearch, Inc., Case AF0250. Therefore, Respondent must not register a domain name which will infringe Complainant��s trademark rights and it is Respondent��s duty to ensure that the domain name it registers does not infringe third parties�� rights, failing which third parties shall have the right to challenge Respondent��s domain name registration. Registration of a domain name by Respondent which infringes another��s trademark rights without legitimate reason is therefore indicative of bad faith registration.
Complainant has adduced evidence to prove that by using a confusingly similar disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent��s website which offers similar goods and services, the sale and purchase of MMOG virtual currency and assets. Given the goodwill of Complainant��s IGE mark within the online game industry in the Internet, the compelling conclusion is that Respondent, by choosing to register and use a domain name which is identical or confusingly similar to Complainant��s distinctive trademark, intended to ride on the goodwill of Complainant��s trademark in an attempt to exploit, for commercial gain, Internet traffic destined for Complainant. Potential targeted partners and end users, who are most likely to be familiar with such marketplaces for MMOG virtual currency and assets in the Internet, are led to believe that the website ��www.�� is either Complainant��s website or is a website associated with or endorsed by Complainant or that Respondent is the authorized partner of Complainant, while in fact it is neither of these. Consequently, Respondent has through the use of a confusingly similar domain name created a likelihood of confusion with Complainant��s IGE trademark and this constitutes a misrepresentation to the public that Respondent��s website is in one way or the other associated or connected with Complainant��s. The Panel��s conclusion is further buttressed by the evidence that Respondent has copied the ��look-and feel�� as well as substantial portions of Complainant��s website in the design and content of his own website at ��www.��. In the absence of evidence to the contrary and convincing rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website on to which the domain name resolves are indicative of registration and use of the disputed domain name in bad faith.
The Panel finds for Complainant on the third part of the test.
��
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to Complainant.
Susanna H.S. Leong
Sole Panelist
Dated: April 18, 2008
Full & Egal Universal Law Academy