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Sulake UK Limited, Sulake Labs Oy and Sulake Corporation Oy v. David Alvarez Abad RegDominios [2005] GENDND 1624 (14 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sulake UK Limited, Sulake Labs Oy and Sulake Corporation Oy v. David Alvarez Abad RegDominios

Case No. D2005-0807

1. The Parties

The Complainants are Sulake UK Limited of Islington, London, United Kingdom of Great Britain and Northern Ireland; Sulake Labs Oy of Helsinki, Finland; and Sulake Corporation Oy of Helsinki, Finland, all represented by Borenius & Kemppinen Ltd. of Helsinki, Finland.

The Respondent is David Alvarez Abad RegDominios of Barcelona, Spain.

2. The Domain Names and Registrar

The disputed domain names <habboshop.com> and <habboshop.net> are registered with Wild West Domains, Inc. of Arizona, United States of America.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2005. On July 29, 2005, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain names at issue.

On July 29, 2005, Wild West Domains, Inc. 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 Complaints 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 August 4, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was August 24, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 25, 2005.

The Center appointed Reinhard Schanda as the sole panelist in this matter on August 31, 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.

4. Factual Background

The Complainant Sulake UK Limited has registered with the Office for Harmonization in the Internal Market (“OHIM”) the trademarks HABBO registered on May 14, 2003, and HABBO HOTEL, registered on June 12, 2003, both registered in several classes. The Complainant Sulake Corporation Oy has on November 12, 2004, filed an application for Community trademark registration in the trademark HABBO. This application is still pending. Numerous national trademark applications are also pending. According to the certificate incorporation on change of name the Complainant Sulake UK limited has until August 17, 2004, been trading under the name Habbo Limited.

The Respondent registered its domain names <habboshop.com> and <habboshop.net> on August 5, 2004.

5. Parties’ Contentions

A. The Complainants

The Complainants Sulake UK Limited and Sulake Corporation Oy state that they own trademark registrations for the marks HABBO and HABBO HOTEL. Furthermore, the Complainant Sulake UK Limited has until August 17, 2004, been trading under the name Habbo Limited. The Complainant Sulake Labs Oy, as the trademark licensee of the trademarks HABBO and HABBO HOTEL, has registered the domain name <habbo.com>. The Complainants Sulake Labs Oy and Sulake UK Limited are wholly owned subsidiaries of the Complainant Sulake Corporation Oy.

All of the Complainants state that they are using the mark HABBO in relation to a wide array of services, the most used service being multiplayer online games offered via the Internet. The Complainants’ top brand franchise, HABBO HOTEL, is an online game environment designed for teens and has become one of the most popular and fastest growing teen websites in the world. The HABBO and HABBO HOTEL marks are used on the website “www.habbo.com” and on different national sites such as on the Spanish site “www.habbohotel.es”.

The marks HABBO and HABBO HOTEL are therefore well-known trademarks all over the world among Internet users playing online computer games. In April 2005, there were 29.1 million registered users of HABBO sites and the number of unique visitors per month is approximately 3.87 million.

According to the Complainants it can be observed that the “www.habbohotel.es” website operates in the same country as the Respondent, and has been particularly successful before and after the Respondent registered the disputed domain names.

The Complainants contend that the registered domain names <habboshop.com> and <habboshop.net> are confusingly similar to the Complainants’ marks. The relevant part of the domain names in issue is “habbo”, and this is clearly identical to the various trademarks for the word HABBO which are registered and owned by the Complainants. The Respondent’s domain names differ from the Complainants’ marks only by virtue of the addition of the word “shop” to the Complainants’ mark HABBO and substituting the word “hotel” with the word “shop” regarding the Complainants’ mark HABBO HOTEL. The word “shop” in itself does not contain any distinctiveness.

According to the Complainants, the word “shop” can indeed be used in practically any field of business as a generic suffix. Joining a word with no meaning in any relevant language with such a generic word creates an immediate impression of an online store selling goods or services relating to the HABBO mark. The domain names are therefore an adaptation of the recognized trademarks of the Complainants, with the simple addition of a generic word.

In addition, the Complainants state that the word HABBO is an invented word and, as such, is not one a trader would legitimately choose unless seeking to create the impression of an association with the Complainants. The Respondent is not affiliated with the Complainants in any way. In particular, the Complainants have never given the Respondent any license or consent, express or implied, to use the Complainants’ marks in its domain names or in any other manner.

The Complainants contend that before any notice of this dispute the Respondent has not used or made any demonstrable preparations to use the domain names in issue in connection with a bona fide offering of goods or services. Furthermore, the Respondent has not been commonly known by the domain names or made any legitimate non-commercial or fair use of the domain names. In contrast, the Respondent’s company regDominios is in the business of selling domain names and related services. Accordingly, the Respondent has no rights or legitimate interests in respect of the domain names in issue. As an active operator in the field of domain names the Respondent must have been aware of the preexisting registration <habbo.com> as that would obviously have been his first choice for registration.

Finally, the Complainants contend that in this case particular circumstances lead to the conclusion that the passive holding of the disputed domain names by the Respondent amount to the domain names having been registered and used in bad faith. First of all, the word HABBO is an invented word and is not one a trader would legitimately choose unless seeking to create an impression of an association with the Complainants. It is inconceivable that the Respondent was not aware of the Complainants’ marks at the time it registered the domain names. Furthermore, the Respondent is deemed to have constructive notice of the Complainants’ trademark. The Respondent would have discovered the Complainants’ mark HABBO upon performing a trademark search. At any rate failure to perform a trademark search is evidence of bath faith. Furthermore, the Respondent’s company regDominios is in the business of selling domain names and related services.

B. The Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

In line with the views of former Panels, this Panel is of the view that the Complainant Sulake Labs Oy, as the licensee of the trademarks HABBO and HABBO HOTEL, has rights in a trademark under the Policy, as have the other Complainants. Furthermore, a related company such as a subsidiary or parent to the registered holders of a mark is considered to have rights in a trademark under the Policy. See Telcel, C.A. v. jerm and Jhonattan Ramírez, WIPO Case No. D2002-0309; Toyota Motor Sales U.S.A. Inc. v. J. Alexis Productions, WIPO Case No. D2003-0624; Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington, WIPO Case No. D2003-0796; Spherion Corporation v. Peter Carrington, d/b/a Party Night Inc., WIPO Case No. D2003-1027.

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Paragraph 4(a) of the Policy requires that the Complainants must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainants has rights; and

(2) the 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.

A. Identical or Confusingly Similar

The Panel is of the view that the Respondent’s registered domain names <habboshop.com> and <habboshop.net> are confusingly similar to the Complainants’ marks. The relevant part of the domain names in issue is “habbo”, and this is clearly confusingly similar to the various trademarks for the word HABBO which are registered and owned by the Complainants. Furthermore, the addition of generic or descriptive terms like “shop” to the Complainants’ trademarks does not defeat the confusingly similar requirement of the Policy. See America Online, Inc. v. Yeteck Communication, Inc., WIPO Case No. D2001-0055; Costco Wholesale Membership Inc., Costco Wholesale Corporation v. Henry Chan, WIPO Case No. D2004-0218.

The Panel is furthermore of the view that the addition of the generic top-level domains (“gTLD”) “.com, “ “.net” or “.org” is irrelevant in determining the element of confusing similarity. See Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409; Little Six, Inc. d/b/a Mystic Casino Hotel v. Domain For Sale a/k/a Anatoly Polishchuk, National Arbitration Forum Case No. FA 96967; Microsoft Corporation v. Amit Mehrotra, WIPO Case No. D2000-0053.

As a result, the Panel finds that the domain names <habboshop.com> and <habboshop.net> are confusingly similar to the Complainants’ trademarks cited above.

B. Rights or Legitimate Interests

The Complainants must show that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating one of the following in accordance with paragraph 4(c) of the Policy:

(a) He has made 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 prior to the dispute; or

(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or

(c) He intends to make 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.

The Panel determines that the Complainants have discharged the onus of proof for the second criterion. The Respondent has failed to demonstrate any legitimate right or interests.

The Complainants have not authorized the Respondent to use their trademarks or to register the disputed domain names. The Respondent is not known by the disputed domain names. The Respondent must have been aware of the Complainants’ trademarks before registering the disputed domain names.

The evidence displays registration of two domain names which include the Complainants’ trademarks plus the word “shop”. There is no evidence of demonstrable preparations to use the domain names for a business, or of any of the other circumstances which could assist the Respondent under the Policy.

The Panel finds that the Complainants have established this element. The Respondent has no right or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

With respect to this element, the paragraph 4(b) of the Policy reads:

“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.”

On a review of the evidence, none of the four enumerated circumstances exist in this case, for the following reasons:

(1) There is no evidence that the domain names were acquired primarily for the purpose of sale.

(2) There does not appear to be intent to prevent the owner from reflecting the marks, and in any event there is no pattern.

(3) While it may be concluded that the primary purpose of the registration was to disrupt the business of the Complainants, the Respondent is not a “competitor” of the Complainants within the meaning of the Policy.

(4) Even if there was intention to attract Internet users to the site, the site is not being operated for commercial gain.

Given that none of the four enumerated Policy criteria with respect to bad faith have been met, the Panel must answer the question of whether there is bad faith for some other reason. The four cited examples are situations where, if evidence exists, the Panel must find bad faith. This does not, however, preclude the Panel finding that other circumstances amount to bad faith in a particular case. The Policy reads, “in particular but without limitation”.

The Panel is of the view that the lack of active use of the domain name does not as such prevent a finding of bad faith. The Panel must examine all the circumstances of the case to determine whether the Respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include the Complainants having a well-known trademark, no response to the Complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain names. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574; Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131.

The Panel is of the view that the Respondent did have prior knowledge of the HABBO and HABBO HOTEL marks and he did deliberately choose to register the domain names which incorporated those marks. Furthermore, the <habbo.com> domain name was registered earlier than the domain names in dispute. See Samsonite Corporation v. Colony Holding, National Arbitration Forum Case No. FA 94313; Digi International Inc. v. DDI Systems, National Arbitration Forum Case No. FA 124506.

The Panel finds that the Respondent has acted in bad faith in registering the disputed domain names. Furthermore, the Panel finds that use of the domain names in this fashion amounts to bad faith within the meaning of the Policy.

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 names <habboshop.com> and <habboshop.net> be transferred to the Complainant Sulake Corporation Oy.

Reinhard Schanda
Sole Panelist

Dated: September 14, 2005