Complainant is Vostu Ltd. of Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by Lando & Anastasi, LLP, United States of America.
Respondent is RA Sites of Campo Grande, Brazil. 2. The Domain Name and Registrar
The disputed domain name is which is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2011. On November 10, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On November 10, 2011, GoD, Inc. transmitted by email to the Center its verification response confirming that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 16, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 6, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 7, 2011.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on December 21, 2011. This Panel finds that it was properly constituted. This 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.
On December 28, 2011 the Center transmitted by email to the Parties Procedural Order No. 1 whereby this Panel invited Complainant to file the corresponding evidence showing that Complainant (i) owns or otherwise operates the domain name and (ii) the term VOSTU has become generally known in the appropriate business or consumers circles as a symbol specific to Complainant’s goods or services. On January 6, 2012, Complainant filed with the Center its reply to Procedural Order No. 1. 4. Factual Background
Complainant is engaged in online, social-media based games.
Complainant is the registrant of the domain name , created on July 6, 2006.
The disputed domain name was created on August 1, 2010. 5. Parties’ Contentions A. Complainant
Complainant’s assertions may be summarized as follows:
Formed in 2007, Complainant has grown into a worldwide leader in online, social-media based games. Complainant’s games are especially popular among Spanish- and Portuguese-speaking players in South America. Its name and trademark VOSTU is formed from the combination of “vos” and “tu”, both Spanish equivalents of the English word “you”. The resulting compressed mark, translated as “YouYou”, has no literal meaning, and is highly distinctive.
Since at least 2007, the VOSTU mark has appeared on and in connection with Complainant’s social media and gaming software in advertising and promotional material, on Complainant’s website, and in articles about Complainant appearing in various press and online media outlets. Complainant’s games are offered through social media sites such as Orkut and Facebook, as well as through Complainant’s own website accessible at “www.m”. Complainant’s software bearing the VOSTU mark is well-known; its games are accessed by over twenty million users a month.
Complainant’s advertisements were clicked 11,894 times and 10,255 times on two separate, typical three-day periods in 2010 prior to registration of the disputed domain name . Articles about Complainant and its services have appeared in media outlets accessible throughout the world, such as The Financial Times, Techcrunch, Games Beat, B2B Magazine, and Mercado Em Vista. Complainant has also been highlighted by news and media outlets in Brazil, where 99% of the users of its games are located, and where Respondent is located.
Complainant has also maintained a website accessible at “m” since at least as early as 2007, and the VOSTU mark has appeared prominently since that time. An archived copy of Complainant’s site as it appeared only hours after Respondent registered the disputed domain name prominently displayed the VOSTU mark in connection with links to Complainant’s games on the social networking site Orkut, showing that Complainant had rights in the mark by that date.
As a result of Complainant’s longstanding use of the VOSTU mark in connection with gaming and social media services, Complainant has acquired common law rights in the mark. The inherently-distinctive VOSTU mark is recognized throughout the world as signifying the high quality of the services offered thereunder, and as identifying Complainant as the source of those services.
The main portion of the disputed domain name is identical to the VOSTU mark.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent is neither an agent nor a licensee of Complainant, has never been affiliated in any way with Complainant, and has never been authorized by Complainant to use the VOSTU mark. Therefore, Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, because the website accessible at the disputed domain name exploits Complainant’s trademark rights in its VOSTU mark. A screenshot of the website accessible through the disputed domain name reveals that Respondent operates a pay-per-click advertising site.
Nearly all of the advertisement on the website associated with the disputed domain name exploits the social media/gaming trademark meaning of the VOSTU mark. For example, there are links to sites advertising “Dungeons & Dragons Online”, “Free-to-Play MMORPG”, “World of Warcraft” and “Play Dream World”. Furthermore, such website provides a list of “related searches”, including “Games Free Games”, “Facebook Games” and “Mafia RPG Games”.
According to Complainant, panels have generally recognized that merely using a domain name to host a pay-per-click advertising site does not, by itself, confer rights or legitimate interests in the disputed domain name. This is especially so when the site exploits the trademark meaning of a complainant’s mark to provide advertising connected to complainant’s competitors. Presumably, Respondent is deriving revenue from the pay-per-click advertising.
Neither a Google search nor Respondent’s own website provides any evidence to show that Respondent is commonly known as “Vostu” or the disputed domain name.
Respondent is not making a legitimate noncommercial or fair use of the disputed domain name; to the contrary, it is using the disputed domain name to exploit the trademark meaning of the VOSTU mark and misleadingly divert consumers, who associate the mark with Complainant’s games. It does so by redirecting those consumers, through the use of paid advertising, to the games offered by Complainant’s competitors.
According to Complainant, Respondent registered the disputed domain name in bad faith. Respondent registered the disputed domain name on August 1, 2010, three years after the VOSTU mark was first used in commerce. By that time, the VOSTU mark had appeared in advertising and media outlets throughout the world, including Brazil, where Respondent is located. Only a couple of months prior to Respondent’s decision to register the disputed domain name, an article discussing Complainant’s business and mentioning its domain name , had appeared in the Brazilian edition of PCWorld. In June of that year, an article mentioning Complainant’s business appeared on Webholic, a Brazilian blog focused on technology, startups, and social media.
Respondent’s bad faith in registering the disputed domain name is confirmed by the fact that the content of the associated website exploits the meaning of the VOSTU mark. The pay-per-click advertising on the website relates to online games, Complainant’s field of business, not to any purported descriptive meaning of the phrase “YouYou”.
Respondent cannot claim that its registration of the disputed domain name was coincidental. At the time Respondent registered the disputed domain name, Complainant’s games, prominently featuring the VOSTU mark, were played by over twenty million users per month. Also by that time, Complainant had been featured in a number of articles in the press and electronic media, including AP Spanish, IT Digest, and PCWorld. Most obviously, when a Google search for “Vostu” is performed and limited to results available on the date Respondent registered the disputed domain name, all of the results on the first page appear to be associated with or concerning Complainant. None relate to Respondent in any way.
According to Complainant, Respondent has registered at least 25 other domain names. Several domains names registered by Respondent establish a pattern of bad faith registration. For example, Respondent registered in 2007, in 2008, and in 2009. Those domain name registrations, and the disputed domain name registration at issue here, demonstrate a pattern of registering trademarks associated with Orkut (a social media website) and its business partners, including Complainant. Most tellingly, “jogos” is Portuguese for “games”. The majority of the users of Complainant’s games access those games through Orkut,. As Respondent is undoubtedly aware, therefore, would be relevant to an Internet user attempting to locate Complainant or access its online games. There is no evidence that Respondent is affiliated in any way with Orkut, or has Orkut’s permission to use the ORKUT mark in those domain names.
According to Complainant, Respondent is a sophisticated domainer who was clearly aware of Complainant’s business and VOSTU mark. In the unlikely event it was not, it simply had to perform a simple Google search on the term “Vostu” or even visit “m”. Had Respondent undertaken either investigation, it would have noted Complainant’s rights in the VOSTU mark within seconds. Its failure to conduct any investigation into the VOSTU mark and avoid exploiting its value is a willful blindness that does not avoid a finding of bad faith registration.
Bad faith use may be proven when a respondent has intentionally created a likelihood of confusion with complainant’s mark in an attempt to attract users to its site for commercial gain. Respondent is using the disputed domain name to host a pay-per-click advertising site featuring a number of advertisements for Complainant’s competitors. Respondent has therefore used the disputed domain name in bad faith in order to exploit the meaning of the VOSTU mark by redirecting consumers to competitors’ advertisements.
Complainant requests that the disputed domain name be transferred to Complainant. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
The lack of a response from Respondent does not automatically result in a favorable decision for Complainant1. The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The first element to be proved by Complainant is that Complainant has rights over a trademark or service mark. It has been established that the Policy is not limited to a registered mark; an unregistered or common law mark is sufficient for the purposes of paragraph 4(a)(i) of the Policy.
According to principles of international law, a mark may be defined as a visible sign able to distinguish the products or services of an enterprise from those of other enterprises.
Complainant has established that it has been using the term “Vostu” in association with its Internet-based games for a number of years prior to the disputed domain name being registered. In the absence of a contrary submission by Respondent, it may be validly inferred that VOSTU has become generally known in the appropriate circles as a mark that identifies and distinguishes the on-line games provided by Complainant from those provided by others2.
This Panel is therefore satisfied that VOSTU has become a distinctive identifier associated with Complainant, and that Complainant has rights in the mark VOSTU.
The disputed domain name entirely incorporates the word “Vostu”. The addition of the country code top-level domain “.co” is generally irrelevant for purposes of the analysis under paragraph 4(a)(i) of the Policy.3
Therefore, this Panel finds that the disputed domain name is identical to a mark over which Complainant has rights. B. Rights or Legitimate Interests
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant asserts that Respondent is neither an agent nor a licensee of Complainant, has never been affiliated in any way with Complainant, has never been authorized by Complainant to use the VOSTU mark and is not commonly known by the disputed domain name.
There is evidence in the case file showing that Respondent is not using the website associated with the disputed domain name to offer its own products or services, but rather to show sponsored links and related category links with the name of Internet-based games produced by third parties (such as Dungeons & Dragons Online, World of Warcraft, etc.).
Thus, Respondent is clearly taking advantage of Complainant’s name and VOSTU mark with the purpose of diverting Internet users to other websites unrelated to Complainant. Such use by Respondent does not establish rights or legitimate interests of Respondent in the disputed domain name.4
In the absence of any explanation from Respondent as to why it might consider it has a right or legitimate interest in using the disputed domain name which incorporates Complainant’s name and VOSTU mark, this Panel considers that Complainant has established prima facie that Respondent has no rights or legitimate interests in the disputed domain name5.
Thus, this Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Complainant contends that Respondent’s registration and use of the disputed domain name is in bad faith.
Complainant has established that it has been using the VOSTU mark since at least 2007, that is, 3 years before Respondent acquired the disputed domain name, and that the VOSTU mark has come to identify the on-line games provided by Complainant, including in Brazil where Respondent is domiciled as per the WhoIs report and the registrar’s verification response.
The use of a domain name for a website which generates pay-per-click revenue is not, per se, evidence of bad faith. However, Respondent uses the website associated with the disputed domain name to display sponsored links to Internet-based games of third parties. In this Panel’s view, all that means that Respondent knew about Complainant’s on-line games and the VOSTU mark when it registered the disputed domain name, that such conduct indicates bad faith in registering and using the disputed domain name6.
Thus this Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the disputed domain name be transferred to Complainant.
Gerardo Saavedra
Sole Panelist
Dated: January 9, 2012
1 See Berlitz Investment Corp. v. Stefan Tinculescu,WIPO Case No. D2003-0465: “the panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence”.
2 See SeekAmerica Networks Inc. v. Tariq Masood and Solo Signs,WIPO Case No. D2000-0131; CavinKare Private Limited v. LaPorte Holdings, Inc. and Horoshiy, Inc.,WIPO Case No. D2004-1072; Lloyds TSB Bank PLC v. Daniel Carmel-Brown,WIPO Case No. D2008-1889.
3 See Busy Body, Inc. v. Fitness Outlet Inc.,WIPO Case No. D2000-0127.
4 See Pfizer Inc v. The Magic Islands,WIPO Case No. D2003-0870; Champagne Lanson v. Development Services/MailP, Inc.,WIPO Case No. D2006-0006; and Deloitte Touche Tohmatsu v. Supervision Audio Video Inc Search-U,WIPO Case No. D2011-0187.
5 See INTOCAST AG v. LEE DAEYOON,WIPO Case No. D2000-1467: “For methodical reasons it is very hard for the Complainant to actually prove that Respondent does not have rights or legitimate interests in respect of the domain name, since there is no strict logical means of verifying that a fact is not given [...] Many legal systems therefore rely on the principle negativa non sunt probanda. If a rule contains a negative element it is generally understood to be sufficient that the complainant, by asserting that the negative element is not given, provides prima facie evidence for this negative fact. The burden of proof then shifts to the respondent to rebut the complainant’s assertion”.
6 See, Microsoft Corporation v. Gioacchino Zerbo,WIPO Case No. D2005-0644: “It may be inferred that the Respondent did register the domain name in dispute on purpose, to disrupt the Complainant’s business, as it used the domain name with sponsored links to competitors.”; Bartercard Ltd & Bartercard International Pty Ltd. v. Ashton-Hall Computer Services,WIPO Case No. D2000-0177: “the Domain Name has been used to host a website offering competing products to those offered by the Complainant [...] this suggests that the Respondent registered the Domain Name with the primary intention of disrupting the business of a competitor [...] It also indicates that the Respondent has used the Domain Name to attract Internet users to its website for commercial gain by virtue of confusion with the Complainant’s mark [...] Under the Policy, both of these are sufficient to show registration and use of the Domain Name in bad faith”; Micro Electronics, Inc. v. J Lee,WIPO Case No. D2005-0170: “the sole use of the disputed domain name to divert traffic to a site providing sponsored links of various commercial companies is indicative of bad faith”.
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