WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Armor Games Inc. v. --- A / A
Case No. D2009-1027
1. The Parties
The Complainant is Armor Games Inc., Irvine, California, United States of America, represented by Rutan & Tucker, LLP, United States of America.
The Respondent is --- A / A, Toronto, Ontario, Mohamed Ali, Toronto, Ontario, Canada, represented by Zak Muscovitch, Canada.
2. The Domain Name and Registrar
The disputed domain name <armourgames.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 31, 2009. On July 31, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On July 31, 2009, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 7, 2009. The Center verified that the Complaint together with the amendment to the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 10, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 6, 2009. The Response was filed with the Center on September 3, 2009.
The Center appointed Alistair Payne as the sole panelist in this matter on September 14, 2009. 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 Armor Games, Inc. distributes on-line games through its website at "www.armorgames.com". Its domain name was registered on September 28, 2005. It also owns a United States trade mark registration No 3,293,669 for ARMOR GAMES which was filed on 1 December 2005 with a stated first use date of September 29, 2005.
The Respondent is a flash games website developer and has owned the flash games website at "www.MoFunZone.com" for approximately 10 years. It registered the Disputed Domain Name on October 6, 2005 and the Disputed Domain Name resolves to its MoFunZone.com website.
5. Parties' Contentions
The Complainant says that the Disputed Domain Name is confusingly similar to the Complainant's registered United States trade mark for ARMOR GAMES and that it has continuously used its mark since at least September 29, 2005.
It says that the Respondent has no rights or legitimate interests in the Disputed Domain Name as it owns no identical or similar trade mark registrations and does not and has not used the term "armour games" in connection with the offering of any goods or services. The Complainant has not authorised the Respondent to use its mark and neither is the Complainant aware of any evidence that the Respondent is commonly known by the name "Armour Games" or any variant name or has made any legitimate non-commercial use of the Disputed Domain Name. Further, the Complainant's use pre-dates the Respondent's use by approximately one week. The Complainant says that the Respondent uses the Disputed Domain Name as a place holder to re-direct users to its "wwwMoFunZone.com" website at which it offers links to other game or entertainment websites, many of which are competitors of the Complainant.
The Complainant asserts that the Respondent registered the Disputed Domain Name in bad faith. Evidence of this includes the fact that the Respondent registered the Disputed Domain Name just after the Complainant had registered and first started using its domain name. The Respondent's conduct amounts to an attempt to intentionally dilute the Complainant's rights and to mislead the public by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship or affiliation or endorsement of the Disputed Domain Name and consequently to divert users from the Complainant's website.
The Respondent says that it has owned the flash games website at "www.MoFunZone.com" for approximately 10 years and says that he first thought of changing his website name to ArmourGames.com and announced his intention to a group of flash game developers, including Mr. McNeely, the principal of the Complainant. He asserts that he subsequently discovered that Mr. McNeely had registered the domain name <armorgames.com> (in the American spelling) and so on October 6, 2005, the Respondent registered <armourgames.com> (in the Canadian spelling). He did not subsequently change his own website name from "www.mofunzone.com" because Mr. McNeely had already secured the American spelling of the Disputed Domain Name.
The Respondent says that the Complainant had not commenced the operation of any website at ArmorGames.com by the date of the Respondent's registration (one week after the Complainant's registration) and the first date of the Complainant's use of a website at its domain name appears to be October 13, 2005 according to website archive records. The Respondent asserts that the Complainant had not acquired any common law rights in its mark or domain name by the date of registration of the Disputed Domain Name and that actual registration of the Complainant's mark occurred almost two years later. In essence the Respondent submits that the Respondent's registration of the Disputed Domain Name pre-dates the Complainant's trademark rights and that in these circumstances the Complainant cannot fulfill the first test under the Policy.
The Respondent says that all that is required under the Policy is "a" legitimate interest even if the Complainant has an arguably stronger interest. As it was the Respondent who came up with the concept of the Disputed Domain Name in the first place, the Respondent had a legitimate interest. Further when the Respondent registered the Disputed Domain Name the Complainant had not acquired any trade mark rights or even used its similar domain name. Accordingly the Respondent has provided some evidence of having a legitimate interest and cannot be said to have "no legitimate interest".
The Respondent says that it was the Complainant who has acted in bad faith by taking the Respondent's idea and using this as its trade mark and domain name. As the Complainant had no trade mark rights at the time of the Respondent's registration, the Disputed Domain Name could not have been registered in bad faith under the Policy. Further as the Respondent has only ever used the Disputed Domain Name other than to defer to his website as does with his other domain names, this could at best only arguably constitute bad faith use under the Policy. Accordingly there is neither bad faith registration nor use and in addition the Respondent submits that this case in any event falls outside the scope of the Policy in that it does not extend to cases where there is a legitimate dispute concerning trade mark rights.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant owns registered trade mark No 3,293,669 for ARMOR GAMES in the United States of America. Although this mark was registered after the date of registration of the Disputed Domain Name, this fact is not material at least for the first limb of the test under the Policy and the Panel rejects the Respondent's submission in this regard. See for example Digital Vision Ltd v Advanced Chemill Systems, WIPO Case No. D2001‑0827. The Disputed Domain Name differs by only one letter from the Complainant's trade mark, being the difference between the American and the English spelling of the mark. Accordingly, the Panel considers that the Disputed Domain Name is confusingly similar to the Complainant's registered trade mark and the Complainant has therefore successfully established the first element of the Policy.
B. Rights or Legitimate Interests
Under the Policy the Complainant is required to make out at least a prima facie case that the Respondent has no legitimate right or interest in the Disputed Domain Name and it is then for the Respondent to rebut this case. Here the Complainant asserts on an undisputed basis that the Respondent is not commonly known by the Disputed Domain Name, does not carry on a legitimate business under that name, has not been authorised to use the Complainant's trade mark and is in no other way affiliated with the Complainant. However the Complainant has not addressed the circumstances in which the parties came to register their respective domain names and it is in this regard that the Complainant fails to make out its case.
According to the Respondent's account, which is undisputed by the Complainant, the Respondent announced its decision to a group of industry colleagues that he was going to change his domain name to <armourgames.com>. Shortly afterwards, on checking the availability of the American and English spellings of this domain name he discovered that the Complainant had already registered the American spelling of this domain name and went ahead and registered the Canadian spelling of the domain name.
There is no evidence that the Complainant had made any substantive use of its domain name or of a corresponding trade mark by this stage. At best the Complainant's first use date is one week prior to the Respondent's registration of the Disputed Domain Name, but in all likelihood according to the Wayback machine evidence submitted by the Respondent, the Complainant started actively using its domain name or any corresponding trade mark after this time. Certainly the Complainant had no registered trade mark rights at this time and it seems extremely unlikely on the evidence presented that it had any common law rights either. Obviously concerned about potential infringement issues the Respondent decided not to re-brand his website with a trade mark corresponding to the Disputed Domain Name, but rather re-directed traffic from the Disputed Domain Name to his website.
In all the circumstances it seems to the Panel that at the date of registration of the Disputed Domain Name the Respondent had a comparable right or legitimate interest in the Disputed Domain Name to the Complainant. While the extent to which either party owns trade mark rights in a trade mark corresponding to the Disputed Domain Name is rightly a matter for the courts in the relevant jurisdiction, for the purposes of the Policy it cannot be said on these facts that the Respondent had no right or legitimate interest at the date of registration of the Disputed Domain Name. Previous panels have found that this limb of the test requires only that the Respondent can demonstrate a legitimate right, not necessarily better rights. (See Borges, S.A. Tanio, S.A.U v. James English, WIPO Case No. D2007‑0477). The Respondent has done that in this case and the Complainant does not succeed in relation to the second element of the Policy, however even if it did then it would run into difficulty in relation to the third element for the reasons set out below.
C. Registered and Used in Bad Faith
It is well established under the third element of the Policy that the Complainant must demonstrate both registration and use in bad faith. The only other option available to a Complainant is to fulfill one of the "deemed" provisions in Paragraph 4 (b) of the Policy.
The Complainant says that Paragraph 4(b)(iv) of the Policy applies here and that the Respondent has intentionally sought to attract website users who would otherwise have gone to the Complainant's website to its website. However for the reasons set out under section B above, the Panel does not accept that at the date of registration of the Disputed Domain Name that the Respondent sought to do this, or that there is evidence to support a finding that he registered the Disputed Domain Name in bad faith. Having developed the idea for the Disputed Domain Name himself he simply sought to register the only option still available to him. Further he did not seek to change the manner in which he used the Disputed Domain Name following registration or to somehow act positively to detrimentally affect the Complainant's rights. Although Panels have held that in certain circumstances a passive holding of a domain name can amount to bad faith (See Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000‑003), on these facts there is insufficient evidence for the Panel to infer bad faith.
Accordingly the Panel finds that the Complainant also does not succeed in relation to this element of the Policy.
For all the foregoing reasons, the Complaint is denied
Date: September 24, 2009