Decisión del Panel Administrativo nº D2018-0069 of Tribunal Arbitral de la OMPI, March 14, 2018 (case FPS Networks, Inc. v. Registration Private, Domains By Proxy, LLC / ICS Inc)

Defense:Registration Private, Domains By Proxy, LLC / ICS Inc
Resolution Date:March 14, 2018
Issuing Organization:Tribunal Arbitral de la OMPI
Decision:Transfer
Dominio:Generic Domains
SUMMARY

[playtyperacer.com]

 
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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FPS Networks, Inc. v. Registration Private, Domains By Proxy, LLC / ICS Inc

Case No. D2018-0069

1. The Parties

The Complainant is FPS Networks, Inc. of Alberta, Canada, represented by Wiley Rein LLP, United States of America (“United States”).

The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / ICS Inc of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).

2. The Domain Name and Registrar

The disputed domain name [playtyperacer.com] (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2018. On January 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 16, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 17, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 22, 2018.

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 the Respondent of the Complaint, and the proceedings commenced on January 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 19, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 20, 2018.

The Center appointed Geert Glas as the sole panelist in this matter on February 28, 2018. 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

In March 2008, Alexander Epshteyn, the Complainant’s predecessor, launched TypeRacer. TypeRacer is an Internet game that challenges players to type excerpts of texts as fast as they can by making them compete against each other. TypeRacer is accessible via the website “www.play.typeracer.com”.

Alexander Epshteyn registered the trademark TYPERACER with the United States Patent and Trademark Office on November 26, 2013 (No. 4438914) with a first use in commerce dating back from April 4, 2008.

On October 27, 2017, Alexander Epshteyn assigned the trademark TYPERACER to FPS Networks, Inc., the Complainant.

The Registrar’s WhoIs database shows that the Domain Name [playtyperacer.com] was first registered on July 29, 2013, and that it is registered to the Respondent. The disputed domain name redirects alternatingly to (i) a web site with typing relating content (e.g., typing games, typing certifications, typing courses) or (ii) a web site from which “security browse” software can be downloaded.

5. Parties’ Contentions

A. Complainant

The following is a summary of the Complainant’s contentions.

The Complainant requests that the Domain Name be transferred to it on the following grounds:

(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant contends that the Domain Name is confusingly similar to its TYPERACER trademark. With regard to said trademark, the Complainant contends that it has acquired value and goodwill and that it is therefore entitled to common law trademark protection as of at least as early as mid to late 2008. The Complainant submits different articles written about the TypeRacer game in order to support this position.

The Complainant contends that the Domain Name incorporates the trademark TYPERACER in its entirety. The...

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