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Williams Electronics Games, Inc. v. Ventura Domains [2005] GENDND 1577 (30 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Williams Electronics Games, Inc. v. Ventura Domains

Case No. D2005-0822

1. The Parties

1.1 The Complainant is Williams Electronics Games, Inc., Waukegan, Illinois, United States of America, represented by staff counsel.

1.2 The Respondent is VenturaDomains, Stockholm, Sweden, representing itself.

2. The Domain Name and Registrar

2.1 The disputed domain name, <williamspinball.com> (the “Disputed Domain”), is registered with OnLineNIC (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 1, 2005. On August 1, 2005, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. On August 10, 2005, the Registrar transmitted by emails 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.

3.2 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”).

3.3 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 August 10, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 30, 2005. The Respondent did not submit any Response. Accordingly, the Panel notified the Respondent’s default on September 5, 2005.

3.4 Having reviewed the communications records in the case file, the Panel finds that the Center has discharged its responsibility under Paragraph 2(a) of the Rules “to employ reasonably available means calculated to achieve actual notice to Respondent.”

3.5 The Center appointed Matthew S. Harris as the sole panelist in this matter on September 19, 2005. 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.

3.6 The Center appointed the Panel in compliance with Paragraph 7(c) of the Supplemental Rules and, under Paragraphs 5(e) and 14(a) of the Rules, the effect of the default by the Respondent is that the Panel shall proceed to a decision without the benefit of any Response from Respondent.

4. Factual Background

4.1 The Disputed Domain is <williamspinball.com>.

4.2 The Complainant is a United States of America company incorporated in the State of Delaware and with a principal place of business in Waukegan, Illinois. The Complainant operates in the pinball industry.

4.3 The Complainant owns United States trademark registration 746530 for the mark WILLIAMS (the “Mark”). The Mark has a registration date of March 12, 1963.

4.4 The legal status of the Respondent is unclear. The address given by the Respondent for the purposes of the “whois” database is one in Stockholm, Sweden.

4.5 The Respondent registered the Disputed Domain on April 25, 2004.

4.6 On March 23, 2005, the Complaint sent a cease and desist letter (the “Cease and Desist Letter”) by post and by email to the physical and email address respectively that were listed in the “whois” entry for the Respondent at that time. The Complainant maintains that the physical address did not exist and the email address was inactive. On the same day the Complainant sent the Cease and Desist Letter by email to the contact email address listed on the webpage connected to the Disputed Domain. The Complainant has not received a response to this email and does not know whether the Cease and Desist Letter reached its destination or not.

4.7 At this time the Disputed Domain directed users to a pornographic website which in turn directed users onto pay-per-view pornographic websites.

4.8 The Respondent updated the Disputed Domain registration on June 3, 2005.

4.9 On July 19, 2005, the Complainant discovered that the “whois” record for the Disputed Domain had been updated. A different contact email (an individual at a “hotmail.com” account (the “Hotmail Account”)) had been substituted and the registration had been renewed so as to last until April 25, 2006. The same day the Complainant resent the Cease and Desist Letter by email to the Hotmail Account but received a failed delivery notification.

4.10 At some point subsequent to March 23 and by July 20, 2005, the webpage connected to the Disputed Domain ceased being a pornographic site and instead the Disputed Domain resolved to a domain name parking service with pinball related links.

4.11 On August 1, 2005, the Complaint was filed.

4.12 On August 19, 2005, the Respondent sent an email to the Complainant from its Hotmail Account (the “First Email”) which read:

“I received my ISP email regarding the complaint of domain williamspinball.com. Whatever just let me know how to settle it?

BTW, I am web designer, I bought this domain for my friend williams, and I just wanna make a website for him. actually I don’t know why this domain have been directed to porn site. Anyway, I have ask my registrar to change the dns so that the porn content will be remove from this website totally. I am not domain venturer.

To Onlinenic:

Please change my dns to any other server or your name server, so that the porn content could be removed from my website.”

4.13 The same day the Respondent sent a second email (the “Second Email”) from the Hotmail Account to the Registrar and copied to the Complainant which read:

“As there were some complaint on my domain williamspinball.com about porn content, I bet there are someone else did it without informing me. I, as a domain owner, authorize you to change the dns of this domain to your name server or any one else, just eliminate the porn content from my domain, I don’t wanna be regarded as a domain ventuerer.”

4.14 From the case file it seems that the Complainant did not reply to these two emails but forwarded them to the Center.

4.15 On August 22, 2005, the Center sent an email to the Complainant copied to the Respondent asking the Complainant to indicate whether it wished to proceed to a decision or to settle the matter amicably. The same day the Complainant replied by email copied to the Respondent:

“The Respondent … has not offered to transfer ownership and control of [the Disputed Domain] to Complainant. As such, Complainant wishes to proceed to a decision in this matter.”

4.16 The following day (August 23, 2005) the Respondent sent an email (the “Third Email”) to the Center which read:

“The complaint claimed they were legal to own this domain, but I can prove you that the company, in my country, which have registered the williamspinball as its trademark, is the legal owner of this domain, so I don’t think it is fair to transfer the domain to who file the complaint.

I am novice in domain field, if there is something wrong, please let me know.”

5. Parties’ Contentions

A. Complainant

5.1 The Complainant’s factual and legal contentions can be summarized as follows.

Identical or Confusingly Similar

5.2 The Complainant owns the United States registered Mark No. 746530 for WILLIAMS for use in connection with “coin operated amusement machines namely pinball machines and other arcade amusement machines”.

5.3 For over 50 years the Complainant and its predecessors in interest manufactured and supplied mechanical pinball machines and related goods and services under the Mark and the WILLIAMS corporate name and logos. The Complainant now extensively licenses the Mark for use in connection with replacement parts for mechanical pinball machines, electronic/ video versions of such pinball machines and other pinball related goods. As a result of the Complainant’s success and promotion of the WILLIAMS name, the name has become famous worldwide and the Complainant has developed substantial goodwill in the WILLIAMS name and marks.

5.4 The Disputed Domain consists of the WILLIAMS name in combination with the descriptive term “pinball” that identifies the goods associated with the WILLIAMS marks.

5.5 Panelists consistently find that a domain name is confusingly similar to a complainant’s registered mark when the domain name consists of that complainant’s registered mark in combination with a descriptive term identifying the goods offered in association with that registered mark. The Complainant cites Microsoft Corp. v. MindKind, WIPO Case No. D2001-0193 (finding that <microsofthealth.com> was confusingly similar to the Complainant’s MICROSOFT marks) and Six Continents Hotels, Inc. v. Hotel Partners of Richmond, WIPO Case No. D2003-0222 (finding that <holidayinnhotelreservations.com> was confusingly similar to the complainant’s HOLIDAY INN mark because the addition of the descriptive words “hotel reservations” to the complainant’s mark increased the likelihood of confusion).

5.6 Therefore, the Disputed Domain is confusingly similar to trademarks and the trade name in which the Complainant has rights.

Rights or Legitimate Interests

5.7 Until some time after March 23, 2005, the Disputed Domain directed Internet users to a pornographic website. After that date the Disputed Domain resolved to a “generic place holder web page”. When a respondent uses a domain name that is confusingly similar to a complainant’s mark to direct traffic to a pornographic site then no legitimate rights can be found. The Complainant cites Viacom Intl. Inc. v. Emperor Sedusa, WIPO Case No. D2001-1438; World Wrestling Federation Entertainment, Inc. v. Bessette, WIPO Case No. D2000-0256 and Madonna Cicone v. Parisi et al., WIPO Case No. D2000-0847 in support of this contention.

5.8 The pornographic website in question had no association with Williams or the subject of pinball. It was an attempt to mislead customers seeking information about the Complainant’s pinball machines and to misdirect them to the Respondent’s pornographic website which in turn linked to other pay-per-view pornographic websites. In the process the WILLIAMS marks were tarnished.

5.9 The Respondent has no connection with the Complainant and has no license or authorization to use the WILLIAMS marks from the Complainant. The Respondent does not therefore have rights or legitimate interests in the Disputed Domain. The Complainant cites Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 in support of this contention.

5.10 As far as the Complainant is aware the Respondent has not used a “Williams” mark or “Williams Pinball” mark prior to the Complainant’s first use of the Mark in 1944 nor has the Respondent applied to register such a mark in the United States. The Complainant cites Gallup v. Amish Country Store, NAF Claim No. FA96209, in support of its submission that the Respondent does not have rights in the Disputed Domain because the Disputed Domain incorporates the Complainant’s WILLIAMS marks and the Respondent is not known by that mark.

5.11 Therefore, the Respondent has no rights or legitimate interests in respect of the Disputed Domain.

Registered and Used in Bad Faith

5.12 The Respondent had actual knowledge of the Complainant’s rights in the Mark because of the fame of that Mark. Failing that, the Respondent had constructive knowledge under United States law (15 U.S.C § 1072 and Cellular One Group v. Brien, WIPO Case No. D2000-0028). Because the Respondent had such knowledge it could not have legitimately registered or used the Disputed Domain. The Complainant cites Ticketmaster corp. v. Spider Web Designs, Inc, WIPO Case No. D2000-1551 in support of its contention that such knowledge is a factor supporting bad faith.

5.13 The Respondent’s use of the Disputed Domain to divert Internet traffic to pornographic sites is conclusive evidence of bad faith on the part of the Respondent. The Complainant again cites the Viacom, World Wrestling and Madonna cases (see paragraph 5.7 above) in support of this submission along with CCA industries, Inc. v. Dailey, WIPO Case No. D2000-0148 and Ingersroll-Rand Co. v. Frank Gully d/b/a Advcomren, WIPO Case No. D2000-0021.

5.14 On March 23, 2005, the Complainant sent the Cease and Desist Letter to the Respondent’s physical and email addresses listed in the “whois” entry for the Respondent at that time. The Complainant maintains that this physical address did not exist and the email address was inactive and submits that the fact that the Respondent’s contact details were false supports a finding of bad faith as illustrated in the Telstra Case (mentioned at paragraph 5.9 above) and Oxygen Media LLC v. Primary Source, WIPO Case No. D2000-0362. Further, on July 19, 2005, when the Complainant discovered that the Respondent’s contact details on the relevant “whois” entry had changed and now listed the Hotmail Account, the Complainant resent the Cease and Desist Letter to the Hotmail Account but this email address also proved to be invalid.

5.15 On March 23, 2005, the Complainant also sent the Cease and Desist Letter to the <williamspinball.com> address but, if the email reached its destination, the Complainant received no response. The Complainant contends that failure to respond to a cease and desist letter is evidence of bad faith and cites in support the Viacom case (see paragraph 5.7 above) and Marconi Data systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090; NFL Properties, Inc. et al. v. BBC ab, WIPO Case No. D2000-0147 and Playboy Enterprises Int’l v. BEG Service KB, WIPO Case No. D2001-0494.

B. Respondent

5.16 The Respondent did not file a Response and is therefore in default pursuant to Paragraph 5(e) and Paragraph 14 of the Rules.

5.17 The Panel notes the fact that the Respondent has sent three Emails to the Complainant as described in greater detail in paragraph 4 above.

6. Discussion and Findings

6.1 Under paragraph 5(e) of the Rules, if the respondent does not submit a response and in the absence of exceptional circumstances, “the Panel shall decide the dispute based upon the Complaint.” Further, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate.”

6.2 This Panel does not find there are any exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel determining the dispute, notwithstanding the failure of the Respondent to lodge a Response.

6.3 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that:

(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.

6.4 The Panel has reviewed the Complaint together with its annexes and, in the light of this material, the Panel finds as set out below.

A. Identical or Confusingly Similar

6.5 There are two separate elements that the Complainant must prove under Paragraph 4(a)(i) of the Policy. Firstly, the Complainant must provide evidence showing that it has rights in a trademark or service mark. Secondly, the Complainant must show that the Disputed Domain is identical or confusingly similar to the trade or service mark in which it has rights.

6.6 In respect of this first element, the Complainant relies upon its US registered trademark for the word “WILLIAMS”. The Complainant has provided evidence of registration of this Mark in the form of a printout of the online databases of the relevant Trademark Registry. On the basis of the Complainant’s evidence, the Panel accepts that the Complainant has made out the first element of Paragraph 4(a)(i).

6.7 In considering the second element of Paragraph 4(a)(i), “.com” can in this case be ignored. Therefore, the only difference between the Mark and the Disputed Domain is the descriptive word “pinball” which identifies the goods associated with the Complainant’s Mark. Since the Disputed Domain and the Complainant’s Mark are not identical the issue is whether they are confusingly similar.

6.8 What the relevant threshold is for the confusing similarity test is a matter of some debate. However, there is a long line of cases analogous to the present case in which previous panels have found that a domain name consisting of the complainant’s mark plus a descriptive word denoting the goods or services in respect of which that mark is registered or known, is confusingly similar to the mark. The Holiday Inn and Microsoft cases cited by the Complainant are two such cases. Further examples are Harrods Limited v. Peter Pierre, WIPO Case No. D2001-0456 and this Panel’s decision in Sallie Mae, Inc. v. Chen Huang, WIPO Case No. D2004-0880.

6.9 In the circumstances, the Panel has little difficulty in concluding that the Complainant has proved both of the elements of Paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

6.10 The Panel accepts that there has never been any relationship between the Complainant and the Respondent and that the Respondent has never been licensed or authorized to use the Mark. Further, there is no evidence to suggest that the Respondent is now or has ever been known by the name “Williams” or “Williams Pinball” and the pornographic website in use prior to the dispute had no connection with these names.

6.11 The Panel notes the Respondent’s comment in its First Email, namely, that it registered the Disputed Domain in order to make a website for a friend named “Williams”. It further notes the Respondent’s comment in its Third Email that “the company, in my country, which have registered the williamspinball as its trademark, is the legal owner of this domain”. However, the Respondent’s comments are not supported by any evidence, do not take the form of a proper Response, are arguably inconsistent and are, in the Panel’s view, simply not credible. In the circumstances the Panel does not attach any weight to these assertions.

6.12 As discussed under section C below, the Panel finds that the Respondent has not provided credible evidence to show that it chose <williamspinball.com> as a domain name for any reason other than in order to trade on the fame of the Complainant’s name.

6.13 The Panel therefore concludes that the Complainant has shown a prima facie case of the lack of rights or legitimate interests on the behalf of the Respondent which the Respondent has failed to rebut.

6.14 The Panel finds that the Complainant has established Paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

6.15 The Complainant contends that the fame of WILLIAMS in the field of pinball is such that the Respondent “has actual knowledge of Williams’ rights” and the Respondent registered the Disputed Domain in an attempt “to mislead consumers seeking information on Williams’ pinball machines and misdirect them to Respondent’s pornographic website advertising links to other for-pay pornographic websites”. The Panel accepts on the basis of the evidence provided by the Complainant that this is indeed the case. In this respect it is worth noting that the Respondent does not actually allege in its Emails that it was unaware of the Complainant’s connection with pinball and (as has already been described under section B above) the Panel is not prepared to attach any credence to the Respondent’s assertions as to why it registered the Disputed Domain.

6.16 Although it is not expressly alleged in the Complaint it is clear in this case that the Complainant relies upon the paragraph 4(b)(iv) of the Policy. Paragraph 4(b)(iv) refers to a situation where “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.

6.17 Paragraph 4(b)(iv) of the Policy requires that such an attempt be made for commercial gain. The screen prints provided by the Complainant suggest that the Respondent’s website did not actually offer pornographic goods or services itself, but merely advertised and linked through to other Internet sites that did so. However, in the Panel’s view this is of no consequence. At least some of the sites advertised would appear to be commercial in nature. Leaving aside whether the “commercial gain” contemplated by the Policy can be by an entity other than the Respondent, it is reasonable to infer (and in the absence of evidence to the contrary the Panel does so) that the Domain Name was being used by the Respondent for commercial gain (see V&S Vin&Sprit AB v. Corinne Ducos, WIPO Case No. D2003-0301 and PepsiCo, Inc. v. Ali Khan, WIPO Case No. D2004-0292).

6.18 In the circumstances, the Panel finds that the Complainant has made out the circumstances set out in paragraph 4(b)(vi). It is therefore not necessary to consider the Complainant’s contentions on the bad faith based upon false contact details. It is, however, worth noting that in coming to its conclusions in this case the Panel has given no weight to the Complainant’s allegations of constructive notice. Even if such a concept is recognized under the Policy, it does not apply in this case where one of the parties is in the US and the other in Sweden (see paragraph 3.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions and the cases listed therein and this Panel’s comments in Sallie Mae, Inc. v. Chen Huang, WIPO Case No. D2004-0880).

6.19 Accordingly, the Complainant has made out Paragraph 4(a)(iii) of the Policy.

7. Decision

7.1 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, <williamspinball.com> be transferred to the Complainant.

Matthew S. Harris
Sole Panelist

Dated: September 30, 2005