Decisión del Panel Administrativo nº D2016-0964 of WIPO Arbitration and Mediation Center, July 16, 2016 (case Web Entertainment Limited v. Whois Agent / Whois Privacy Protection Service, Inc. / DNS Manager, Profile Group)
| Resolution Date | July 16, 2016 |
| Issuing Organization | WIPO Arbitration and Mediation Center |
| Decision | Transfer |
| Dominio | Generic Domains |
Complainant is Web Entertainment Limited of Las Vegas, Nevada, United States (“US”), represented by Randazza Legal Group, US.
Respondent is Whois Agent / Whois Privacy Protection Service, Inc. of Kirkland, Washington, US / DNS Manager, Profile Group of Wilmington, Delaware, US, self-represented.
The disputed domain name [y8-online.com] (the “Domain Name”) is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2016. On May 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 18, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 19, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 24, 2016.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 25, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 14, 2016. The Response was filed with the Center on June 14, 2016.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on June 29, 2016. 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.
Complainant, or its predecessor-in-interest, has been using the Y8 trademark in international commerce since 2006, providing entertainment services on the Internet, namely, online video games, virtual reality games and other entertainment services via its website at “www.y8.com”.
Complainant owns two US trademarks (nos. 4,130,791 and 4,130,792) for Y8 and for the Y8/Y8.COM logo, each filed on April 11, 2011 in international class 41. Complainant also owns two European Union (“EU”) trademarks (nos. 009412255 and 009649609), filed on September 30, 2010 and March 31, 2011, respectively, in classes 35 and 41.
Complainant’s rights to the Y8 mark pre-date Respondent’s registration of the Domain Name. The registrant of the Domain Name changed from a previous registrant to a privacy service on November 23, 2015. Respondent in its Response has confirmed it acquired the Domain Name on this date. The Domain Name was first registered October 28, 2013, which is also after the registration dates for Complainant’s Y8 marks.
(i) Identical or confusingly similar
Complainant states that it has made significant use of its Y8 trademark in providing services and has acquired both registered and extensive common law trademark rights. Previous UDRP panels have recognized Complainant’s rights in the Y8 mark.
Complainant states that its website at “www.y8.com” is one of the most popular Internet sites in the world for video and virtual reality games. According to Alexa Internet, it is among the world’s top 1000 most popular websites for global website traffic. As of July 2012, more than one year before Respondent’s registration of the Domain Name, the website at “www.y8.com” had a global rank of 243.
Complainant contends that the Domain Name is identical or confusingly similar to Complainant’s mark. Complainant has registered rights as of September 30, 2010 and common law rights accruing as from 2006. Complainant states the Domain Name is legally identical to Complainant’s Y8 mark, adding only a hyphen and the generic term “online,” which described where Complainant exclusively provides its services under its marks. Merely adding common terms to a registered trademark does nothing to lessen the likelihood of confusion created by the Domain Name. Here, the term “online” is generic for the services provided by both Complainant and Respondent. Thus, Complainant submits that the addition of this term does nothing to mitigate the likelihood of confusion created by the Domain Name. Instead, it potentially increases it. Given that the...
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