|Kläger||Suntex International, Inc.|
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Suntex International, Inc. v. 24game
Case No. D2000 - 0408
1. The Parties
Complainant is Suntex International, Inc., a Pennsylvania corporation with its principal place of business at 118 N. Third Street, Easton, Pennsylvania 18042, U.S.A. ("Suntex"). Respondents are:
24game, Kyrkogatan 14, Vetlanda, se 574 32, SE ("24game") (Complaint, Paragraph 6, p. 2)
2. Domain Names and Registrar
The domain name in issue, the registrant, the date of registration, and status of the domain name according to Network Solutions, Inc. are:
24game.com, 24game, November 26, 1997, Hold
Network Solutions, Inc. ("Network Solutions") is the registrar for the domain name at issue.
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received Suntexs Complaint on May 9, 2000, via email, and on May 11, 2000, in hard copy form. The Center has verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Suntex has made the required payment to the Center. The formal date of the commencement of this administrative proceeding is May 15, 2000.
On May 10, 2000, the Center transmitted via email to Network Solutions a request for registrar verification in connection with this case. On May 14, 2000, Network Solutions transmitted via email to the Center Network Solutions Verification Response, (1) confirming that the registrant of the domain name is as stated above, (2) identifying the administrative, etc. contacts, (3) confirming that the Network Solutions 4.0 Service Agreement is in effect with respect to the domain name, and (4) stating that the domain name is in "Hold" status.
On May 15, 2000, the Center transmitted Notification of Complaint and Commencement of the Administrative Proceeding, together with a copy of the Complaint, to the registrant via email at the addresses identified in the Network Solutions verification response, via email to postmaster for each website, and also via post/courier to the postal addresses identified in the Network Solutions Verification Response. The Center advised that (1) the response was due by June 3, 2000, (2) in the event of default the Center would appoint a Panel to review the facts and to decide the case, (3) the Panel may draw such inferences from Respondents default as it considers appropriate, (4) Suntex had elected for the matter to be decided by a single panelist who would be appointed within five days of the date the response is due, (5) the fees for the administrative proceeding will be paid in their entirety by Suntex, (6) the Panel will decide the case within 14 days of its appointment, and (7) the Center can be contacted at stated postal and email addresses, a stated telephone number, and a stated fax number.
On June 15, 2000, the Center transmitted to the Complainant via email, and to Respondent via email, fax, and post/courier, Notification of Appointment of Administrative Panel and Projected Decision Date. The notification advised that Mr. Gaynell C. Methvin had been appointed as the single panelist, and the decision was due June 28, 2000. On June 15, 2000, the Center transmitted the file in the case via courier to Mr. Methvin.
4. Factual Background; Parties Contentions
a. The Trademarks
The Complaint (Paragraph 13) is based on various trademarks and service marks Suntex registered in the U.S. Patent and Trademark Office and elsewhere pursuant to five registrations, copies of which appear as Exhibits C, D, and E to the Complaint, viz.:
24 - Reg. No. 1,718,364 September 22, 1992
24 CHALLENGE - Reg. No. 1,718,954 September 22, 1992
24 GAME and Design - Benelux registration published July 1996
24 GAME - Benelux registration published October 1997
24 GAME and Design - European Community registration published October 28, 1998
The foregoing trademark and service mark registrations relate inter alia to games, playthings, video games for computers, computer software, CD ROMs, and electronic apparatus.
b. The Complaint
Suntex in support of its position asserts the following:
21. On November 26, 1997, Respondent registered the domain name 24game.com, which is identical to Complainants trademark 24 GAME®, and highly similar to Complainants 24® and 24 CHALLENGE® marks.
22. Complainants use of Complainants marks predates any use of the domain name 24game.com by Respondent. Further, Complainants U.S. Registration of 24® and 24 CHALLENGE®, Benelux registrations for 24 GAME and Design® and 24 GAME®, and European Community registration of 24 GAME and Design® predate the registration of 24game.com by Respondent.
23. The registration of the domain name 24game.com violates the Policy. The grounds upon which this Complaint is made are:
(a) The domain name 24game.com violates Paragraph 4(a)(I) of the Policy. 24game.com is identical to Complainants mark 24 GAME® and/or confusingly similar to Complainants 24® and 24 CHALLENGE® marks, in Attachments C, D, and E, in which the Complainant has prior rights, because:
(i) The domain name 24game.com contains Complainants entire mark 24 GAME®;
(ii) Phonetically, the domain name 24game.com is identical to Complainants mark 24 GAME. With regards to 24game.com, the speaker has no alternative but to say "24 game" in pronouncing the domain name;
(iii) The domain name 24game.com has the same commercial meaning to the public as Complainants mark 24 GAME®. The mark 24 GAME® has no other meaning than the goods and services of Complainant. The term is not a dictionary word;
(iv) The domain name 24game.com contains the numbers "24," which is also a distinctive part of the marks 24® and 24 CHALLENGE®. Also, the domain names inclusion of the term "game" also heightens the likelihood of confusion with these marks, as the mark 24® is registered for and used in connection with equipment for games, and 24 CHALLENGE® is used in connection with tournaments, a type of game; and
(v) Because of the similarity in sight, sound and meaning between the domain name 24game.com and Complainants marks, members of the public who try to find Complainants products and services at 24game.com are likely to believe falsely or mistakenly that Respondent is the Source or origin of Complainants goods and services, or that the domain name is sponsored by, endorsed by, approved by, licensed by, connected, associated or affiliated with Complainant.
(b) The domain name 24game.com violates Paragraph 4(a)(ii) of the Policy in that Respondent should be considered as having no rights or legitimate interests in the domain name 24game.com;
(i) Respondent has never made significant use of the domain name 24game.com since its registration of the name on November 26, 1997;
(ii) 24GAME®, 24®, and 24 CHALLENGE® are unique and inherently distinctive coined marks that are not in any dictionary; and
(iii) The Complainants knowledge, Respondent is not known as or operated under the name 24GAME.
(c) The domain name 24game.com violates Paragraph 4(a)(iii) of the Policy. The domain name should be considered as being registered and used in bad faith because:
(i) On June 24, 1998, Complainant attempted to contact Respondent via express mail at the address listed in the Whois database, and accessed via Network Solutions, namely, Kyrkogatan 14, Vetlanda, se 574 32 SE. A copy of this notice is appended as Attachment F. See also Declaration of Denise I. Mroz at Attachment N.
(ii) When no response was received to the June 24, 1998 correspondence, Complainant contacted the domain name registrant, Network Solutions, Inc., and requested that its Domain Name Dispute Policy be invoked. See Complainants August 13, 1998 correspondence to Network Solutions at Attachment G. See also Declaration of Denise I. Mroz at Attachment N.
(iii) On August 28, 1998, Network Solutions responded, indicating that Complainants notice to Respondent did not comply with its Domain Name Dispute Policy. A copy of this letter is attached as Attachment H.
(iv) On September 2, 1998, Complainant sent a second letter to Respondent via express mail. See Attachment I. Though delivery of this notice was confirmed, no response was received to this correspondence. See Attachment J. See also Declaration of Denis I. Mroz at Attachment N.
(v) On September 8, 1998, Complainant contacted Network Solutions, requesting that its Domain Name Dispute Policy be invoked. See Attachment K. See also Declaration of Denise I. Mroz at Attachment N.
(vi) On September 29, 1998, Network Solutions sent a notice to 24game, informing Respondent that a Complaint had been received concerning its domain name 24game.com. See Attachment L. As clearly indicated in the letter, Network Solutions Domain Name Dispute Policy required Respondent to respond, in writing, to Complainants allegations; a failure to respond to Network Solutions notice within Thirty-seven days would result in its domain name being placed on"hold" until the dispute is resolved. See Attachment L, p. 2.
(vii) On November 13, 1998, Network Solutions sent Respondent a second letter, indicating that Respondent had failed to respond to its correspondence of September 28, 1998, and, thus, the domain name would be placed on "hold" until the dispute was settled. See Attachment M.
(viii) The domain name 24game.com has remained on hold since November 13, 1998.
(ix) Since November 13, 1998, Complainant has made every attempt to contact respondent, but the phone number, facsimile number and e-mail address, as listed in its domain name registration, are disconnected or otherwise nonfunctional. See Attachment N, Declaration of Denise I. Mroz.
(x) On December 1, 1999, Complainant contacted Lisa Gee Robinson of the Business Affairs Department for Network Solutions, informed Ms. Robinson of its effort to contact Respondent, and requested that Network Solutions invoke its internal policies and require Respondent to update its contact information. See Letter to Ms. Lisa Gee Robinson at Attachment O. Thereafter, the mailing address for Respondents administrative contact, Doug Locklair, was added to the Network Solutions database. See screen print from Network Solutions database at Attachment P. See also Declaration of Denise I. Mroz at Attachment N.
(xi) On April 14, 2000, Complainant attempted to contact Respondent via express mail. See Attachment Q. In addition to sending a letter in English, Complainant sent Respondent a Swedish translation of the letter. See Attachment R. The United Parcel Services attempts to deliver this letter have been unsuccessful, as the address has been described as "incomplete." See United States Parcel Services tracking database at Attachment S. See also Declaration of Denise I. Mroz at Attachment N.
(xii) A copy of the English correspondence was also sent to Doug Locklair, Respondents administrative contact. See Express mail receipt at Attachment S. On April 26, 2000, Complainant also attempted to contact Mr. Locklair by e-mail, but received a error message indicating that the message was not deliverable, as the "recipient(s) could not be reached." See Complainants April 26, 2000, e-mail at Attachment T, and error message at Attachment U. See also Declaration of Denise I. Mroz at Attachment N.
(xiii) On April 28, 2000, Complainant received an e-mail from Mr. Locklair in response to its letter of April 14, 2000. See April 27, 2000, e-mail from Doug Locklair at Attachment V. See also Declaration of Denise I. Mroz at Attachment N. According to this correspondence, Mr. Locklair has "never had any Domain name other then NantersOils.com." See Attachment V.
(xiv) Thereafter, Complainant requested confirmation from Mr. Locklair as to whether he was aware that he is listed as the administrative contact for 24game.com. See April 28, 2000,
e-mail to Doug Locklair at Attachment W. On April 28, 2000, Mr. Locklair responded indicating that was "not aware that [he is] the administrative contact for any domain name." See April 28, 2000 e-mail from Doug Locklair at Attachment X. See also Declaration of Denise I. Mroz at Attachment N.
(xv) As Respondent has failed to maintain accurate contact information, has fraudulently listed an individual as its administrative contact, and has failed to respond to any correspondence issued by either Complainant or Network Solutions concerning the domain name 24game.com, Complainant has no alternative but to conclude that Respondent registered the domain name in bad faith. Further, based upon the above, Complainant has no choice but to conclude that Respondent is using the domain name 24game.com in bad faith by holding the domain name hostage and, thus, preventing the trademark owner from having access to the domain name.
(xvi) Since the domain name contains Complainants entire trademark 24 GAME® as well as confusingly similar variations of Complainants marks 24® and 24 CHALLENGE®, Complainant has no alternative but to conclude that the continued ownership of the domain name is deliberately designed and calculated to deprive Complainant of the domain name.
(xvii) Network Solutions registration of the domain name 24game.com continues to cause further malicious damage and business injury to Complainant, by placing a cloud over Complainants title and ownership in Complainants Marks. This registration also has placed a cloud over Complainants right to enjoy the free, unfettered and exclusive use of Complainants Marks as an Internet Domain Name.
(xviii)Respondents continued ownership of the domain name
24game.com deprives Complainant of its right to determine and decide with whom Complainant and Complainants Marks shall be connected and associated.
(xix) Since Complainants 24 GAME® is internationally famous and is not a phrase or term in any dictionary, Complainant has no alternative but to conclude that Respondents continued ownership of the domain name and failure to provide Network Solutions with accurate contact information is a blatant and deliberate attempt to prevent Complainants use of its trademarks, and to deceive and confuse the consuming public.
24. Based on the above, Complainant has no alternative but to conclude that Respondents continue use and ownership of the domain name 24game.com is primarily for the purpose of depriving Complainant, the true owner of 24 GAME®, from reflecting this mark in a corresponding domain name.
25. Based on the foregoing circumstances, Complainant has no alternative but to conclude that by registering the domain name, Respondent has intentionally attempted to confuse consumers as to the source of Complainants Mark, by creating a likelihood of confusion with Complainants Marks.
c. Remedies Requested
As for relief, Suntex requests at Paragraph 26:
In accordance with Paragraph 4(b)(i) of the Policy, for the reasons described in Section V above, Complainant, Suntex International, respectfully requests the Administrative Panel appointed in this proceeding to transfer ownership of the domain name 24game.com to Suntex International, and such other relief as the Panel may deem just and proper.
In the concluding paragraph of the Complaint, 24game.com requests that the Suntex domain name be transferred to Suntex.
d. Respondents Answer
Respondents have filed no answer, or any other document, with the Center.
5. Discussion and Findings
Paragraph 4 of the Policy directs that Suntex must prove, with respect to the domain name in issue, each of the following:
(i) The domain name in issue is identical or confusingly similar to the Suntex trademark, and
(ii) 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.
Paragraph 4.b of the Policy sets out four illustrative circumstances, which for purposes of Paragraph 4(a)(iii) above shall be evidence of the registration and use of a domain name in bad faith.
Paragraph 4.c of the Policy sets out three illustrative circumstances which, if proved by respondent, shall demonstrate respondents rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii) above.
a. Identity or Confusing Similarity
Suntex urges, and has the burden of proving, that the domain name in dispute is either identical to, or confusingly similar to, the Suntex trademarks. Respondents failure to respond does not relieve Suntex of its burden of proof on this element or on either of the two elements of Paragraph 4(a) of the Policy. However, Respondents failure to deny any of Suntexs averments permits this panel to take Suntexs averments as true and to draw appropriate inferences.
On its face, the domain name in issue incorporates the term "24" or a close variant of "24". Identity is clear. In light of the facts and factors averred in the Complaint, the domain name in issue is confusingly similar to the Suntex marks.
b. Rights or Legitimate Interests
On this record, no challenge has been leveled with respect to (1) the validity of any Suntex trademarks or service marks, (2) Suntexs rights in those marks with respect to Suntex services and goods, (3) the global fame and goodwill associated with those marks, or (4) any fact averred by Suntex as to promotion of the marks, use of the marks, and total sales of services and goods under the marks.
No challenge has been leveled with respect to Suntex averments as to registrants conduct.
This record demonstrates that Respondent has no rights or legitimate interests vis-a-vis 24game.com.
c. Registration and Use in Bad Faith
Registration of the domain name in issue in bad faith is a matter of the appropriate inferences to draw from circumstantial evidence. Each is to be proved by Suntex.
Suntex avers that Respondents registration was in bad faith (see above).
These averments demonstrate that Respondent has registered the domain name 24game.com in bad faith
d. Paragraph 4.c Factors
With respect to the domain name in issue, by failing to respond to the Complaint, Respondent has failed to prove any of the three circumstances set out in Paragraph 4.c of the Policy, viz.:
(i) before any notice to Respondent of the dispute, Respondents use of or preparations to use the domain name were in connection with a bona fide offering of goods or services,
(ii) Respondent or a related entity has been commonly known by the domain name, and
(iii) Respondent is making legitimate noncommercial or fair use of the domain name in issue, "without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
As averred by Suntex and properly inferred from the undisputed facts as to Respondents conduct, each of these three factors must be resolved in favor of Suntex.
The panel has jurisdiction of this dispute. Respondent has received notice of the commencement of this proceeding, the Policy, the Complaint, and the consequences of Respondents default. Respondent has been afforded due process.
With respect to the request for transfer of the domain name at issue, the Panel decides that Suntex has carried its burden of proving(a) the domain name in issue here is identical to or confusingly similar to the Suntex marks, (b) Respondent has no rights and no legitimate interests in respect of the domain name in issue, and (c) the domain name in issue has been registered in bad faith by Respondent.
Accordingly, the Panel requires that the registration of the domain name "24game.com" be transferred to Suntex.
Gaynell C. Methvin
Dated: June 26, 2000