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Gamer.tv Limited v. Bestinfo [2004] GENDND 710 (21 June 2004)

1. The Parties

The Complainant is Gamer.tv Limited, Chiswick, London, United Kingdom of Great Britain and Northern Ireland, represented by Tim Cotton, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Bestinfo, of Richardson, Texas United States of America.

2. The Domain Name and Registrar

The disputed domain name <dinkybomb.com> is registered with R&K Global Business Services, Inc. d/b/a 000Domains.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2004. On April 30, 2004, the Center transmitted by email to R&K Global Business Services, Inc. d/b/a 000Domains.com a request for registrar verification in connection with the domain name at issue. On May 1, 2004, R&K Global Business Services, Inc. d/b/a 000Domains.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that 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 May 5, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was May 25, 2004. The response was filed on May 25, 2004.

The Center appointed Ross Wilson as the sole panelist in this matter on June 7, 2004. 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 an incorporated company registered in the United Kingdom. It specialises in computer and video games and operates an interactive website for gamers and produces television programs about the latest news, views, previews, reviews and releases in the world of computer and video games.

The Complainant’s most popular game is called Dinky Bomb which it created in May 2002. It has appeared on its website under a number of guises including Dinky Bomb, Dinky Bomb Deluxe, Dinky Bomb Lite, and Dinky Smash. It has been played by as many as seven million users throughout the world.

The domain name <dinkybomb.com> was originally registered by the Complainant as a domain name in November 2001 and as a trademark on December 13, 2002.

The domain name registration lapsed on November 29, 2002.

The Respondent purchased the disputed domain name on December 25, 2002.

Throughout 2003 and into 2004 the Complainant’s general counsel emailed the Respondent many times seeking the assignment of the domain name to the Complainant. The Respondent replied sometime before July 2003, confirming simply that he was the owner.

The Complainant sent follow-up emails on October 15, November 6 and November 28, 2003. The last email indicated that if the Respondent was reluctant to assign the domain name would he confirm that he would not be renewing his ownership thereby enabling the Complainant to repurchase it.

The Respondent renewed the domain name on December 18, 2003.

On January 27, 2004, the Complainant again requested immediate assignment and in response, on February 5, 2004, the Respondent advised that the domain name was not for sale.

The Respondent’s website currently provides a search engine, a list of popular searches (including games) as well as links to other sites such as, gambling, merchandising and games.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

• Its original ownership of the domain name was unwittingly allowed to lapse due to the domain name registrar failing or omitting to remind the Complainant about the renewal of the domain name.

• The disputed domain name is identical or confusingly similar to its registered trademark.

• The renewal of the domain name’s registration was made in bad faith because the Respondent had known since April 2003 that the Complainant had rights in the name.

• The holding on of the domain name by the Respondent achieves nothing other than divert consumers and customers and potential consumers and customers, from the Complainant’s global online business, tarnish the Complainant’s trademark and damage the Complainant’s business.

• The domain name was renewed by the Respondent primarily for the purpose of selling or otherwise transferring the domain name to the owner of the trademark for the sake of profit and/or to prevent the owner of the trademark from reflecting the mark in a corresponding domain name.

B. Respondent

The Respondent contends that:

• The Complainant abandoned the domain name “until such time as the Complainant decided that it wanted to keep the name and then realized that it was too late …”

• The Complainant’s trademark registration was obtained “to use as the force in which to get the name back.”

• The domain name was not acquired in bad faith or to sell.

• He was attracted to the name because it brought back old high school memories of calling “that rotten egg smells that the chemistry department produced that permeated the hall a “dinky bomb”.”

• He is not a cybersquatter and is not hurting the Complainant’s business.

• The Panel should make a finding of reverse domain name hijacking.

6. Discussion and Findings

The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the policy, as follows:-

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant asserts that the disputed domain name <dinkybomb.com> is identical or confusingly similar to its trademark DINKY BOMB. Its rights to the trademark were obtained through registration in the UK dated December 13, 2002.

The Respondent’s view is that the trademark application was filed prior to the expiry of the domain name simply to use as a lever to get the disputed domain name back.

It is the panel’s view that the Complainant has rights in the trademark and that the Respondent’s alleged motivation for the Complainant obtaining the trademark is irrelevant. Clearly, the trademark words of Dinky Bomb are used together as one word in the domain name.

The Panel finds that the domain name is identical or confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out how a Respondent can demonstrate rights to and legitimate interest in the disputed domain name. The ways include, but are not limited to:

(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 an 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.”

The Complainant relies on the issues in element (iii) above arguing that the Respondent’s action to renew his registration was to divert customers and consumers, both current and potential, from the Complainant’s business, tarnish the Complainant’s trademark and damage the Complainant’s business.

The Respondent did not address any of the issues set out above in order to demonstrate his own rights or legitimate interests in the domain name other than to argue that the trademark application was filed but not registered at the time he renewed the domain name. The Respondent has not demonstrated that he has used the domain name in connection with a bona fide offering of goods or services, is commonly known by the domain name or making legitimate non-commercial of fair use of the domain name.

The Respondent acknowledges that he owns other domain names and as far as the Panel can determine some or all of them are used in a similar fashion to the “www.dinkybomb” site, that is, to provide links to other sites which presumably brings financial benefits from referrals.

In view of the Respondent’s failure to demonstrate any rights to or legitimate interests in the domain name the Panel finds in the Complainant’s favour.

C. Registered and Used in Bad Faith

For the purposes of determining if there was bad faith the Panel considered the circumstances of the registration and use of the domain name as set out in paragraph 4(b) of the Policy noting that it does not impose any limitation on how the registration and use of a domain name in bad faith is evidenced.

The Complainant’s original ownership of the domain name lapsed, possibly inadvertently, and one month later the Respondent registered it in the name of Bestinfo. The reason given by the Respondent for choosing the name “dinky bomb” is quite unconvincing in the Panel’s mind. Nevertheless, the Complainant acknowledges that the Respondent may have registered the Complainant’s domain name “in all probability in good faith”. In making this comment the Complainant may have been acknowledging the fact that the Respondent could not have been expected to know about its Dinky Bomb game. In Lyons Partnership, LP and HIT Entertainment PLC v. NetSphere, Inc., WIPO Case No. D2004-0118 the panel stated that the Respondent was “entitled to assume that the complainant, having allowed the registration to expire, had no further interest in the domain name.” In other words, the registration of a lapse domain name does not amount to cybersquatting. This Panel is aware that opposite views to this have been found at least in the cases of well known trademarks, such as in Donna Karan Studio v. Raymond Donn, WIPO Case No. D2001-0587. However, it is unlikely that at the time of registering the disputed domain name, the Dinky Bomb common law trademark could have been consider a well known trademark.

Prior to the date for renewing the domain name, the Complainant contacted the Respondent several times pointing out that its business had become synonymous with the name and game Dinky Bomb and that the Complainant had acquired both the goodwill in the name and the intellectual property rights. The Respondent proceeded to renew the domain name presumably because he considered that he had acquired it in good faith and, presumably, that it was of value to his Bestinfo business.

To the Panel, the issue in this case does not relate to the good faith registration of a domain name but to whether or not a renewal of a domain name made in bad faith is subject to the Policy. At first this seems to be the case because Paragraph 2 of the Policy, which deals with the applicant’s representations and warranties, states “By applying to register a domain name, or by asking us to maintain or renew domain name registration, you hereby represent and warrant to us that…(b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party…” [Italics added]. However, at no point after that does the Policy again refer to the circumstances of renewal nor does it seem reasonable from the context of Paragraph 4 and the background leading to its formulation, could the word “registration” be considered a collective word for both registration and renewal. A detailed discussion on this aspect based on the Report of the WIPO Internet Domain Name Process, April 1999 can be found in Teradyne, Inc.Teradyne, Inc.[sic] v. 4Tel Technology, WIPO Case No. D2000-0026.

Whether the Policy allows domain name renewals to be treated in the same way as registrations has been considered before. In SMART DESIGN LLC v. CAROLYN HUGHES, WIPO Case No. D2000-0993 the respondent’s original registration was made in good faith but the renewal was not. The panel found that “a registration of a domain name that at conception did not breach Rule 4(a)(iii) but is found later to be used in bad faith does not fall foul of Rule 4(a)(iii)”. Similarly, in Substance Abuse Management, Inc. v. Screen Actors Modesl [sic] International, Inc. (SAMI ), WIPO Case No. D2001-0782 the panel stated that “If a domain name was registered in good faith, it cannot, by changed circumstances, the passage of years, or intervening events, later be deemed to have been registered in bad faith”.

In Teradyne Inc.Teradyne, Inc. [sic] v. 4tel Technology, WIPO Case No. D2000-0026 the respondent registered a domain name to reflect its own business name but subsequently sought to sell the name for profit when its business dissolved. The panel found that to decide the case on the subsequent bad faith action would “extend the Policy to cover cases clearly intended to be outside its scope.” Similarly, in Telaxis Communications Corp. v. William E. Minkle, WIPO Case No. D2000-0005, while the case was not a renewal situation, the circumstances were that the Respondent registered the disputed domain name in good faith but subsequently began to use it in bad faith. It was held that because the registration was made in good faith the requirement of Paragraph 4(a)(iii) was not met.

In view of the above the Panel finds that the Complainant’s claim fails because the Complainant has argued that Respondent’s original registration was probably not made in bad faith and because the actual issue of bad faith renewal falls outside the scope of the Policy.

7. Reverse Domain Name Hijacking

The Respondent has asked the panel to find the Complainant guilty of reverse domain name hijacking. According to the Rules, reverse domain name hijacking means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name. In other words, wrong and improper motives are the common factor of the Complaint’s actions.

In a previous case dealing with a request for a finding of reverse domain name hijacking the panel states that “the real question is whether it should have been clear to the Complainant when it commenced this proceeding, that its position was wholly without merit, and that there was no prospect of the Complaint succeeding” - see Amanresorts Limited v. Melissa Perlman, WIPO Case No. D2003-0383. As in that case, this Panel believes that in commencing the proceeding the Complainant’s motives were reasonable, particularly as it had lost its previous ownership of the domain name inadvertently. The Panel finds that the Respondent has not provided sufficient evidence to justify a finding of reverse domain name hijacking even though the Complainant has failed to prove all three elements of Paragraph 4(a).

8. Decision

For all the foregoing reasons, the Complaint is denied and the request for a finding of reverse domain name hijacking is dismissed.

Ross Wilson
Sole Panelist

Date: June 21, 2004