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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Electronic Arts Inc. v. Christopher Jones

Case No. D2006-0707

 

1. The Parties

Complainant is Electronic Arts Inc. (“Complainant”), a corporation incorporated under the laws of the State of Delaware, with a principal place of business located in Redwood City, State of California, United States of America.

Respondent is Christopher Jones (“Respondent”), an individual residing in Los Angeles, State of California, United States of America.

 

2. The Domain Name and Registrar

The domain name at issue is <eamobilegames.com> registered with Advantage Interactive, Inc.

 

3. Procedural History

On June 7, 2006, the WIPO Arbitration and Mediation Center (the “Center”) received a copy of the Complaint of Complainant via email. On June 8, 2006 the Center sent an Acknowledgment of Receipt of Complaint to Complainant. On June 9, 2006, the Center received hardcopy of the Complaint. The Complainant paid the required fee.

On June 15, 2006, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Name and that the Domain Name is registered in the Respondent’s name.

On June 16, 2006, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On July 11, 2006, the Center received the Response of Respondent via email. On July 12, 2006, the Center received the Response of Respondent in a .pdf format, with annex and signatures.

On July 14, 2006, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the “Panel”), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Panel.

 

4. Factual Background

Complainant was founded in 1982, and is the world’s leading independent developer and publisher of interactive entertainment software for personal computers, mobile phones and devices, and advanced entertainment systems such as the PlayStation and PlayStation2, Computer Entertainment System, the Play Station Xbox video game console from Microsoft, the Nintendo GameCube and the Game Boy Advance. Complainant owns federal trademark registrations for the marks EA, EA GAMES (No. 2,652,446 issued in the year 2002), EA STORES, EA SPORTS, EA SPORTS BIG, EA SPORTS NATION, and EA SPORTS NET (the “Marks”), and has used these Marks in connection with sales of its popular computer game software and related entertainment services such as online gaming websites. Complainant operates several websites on the Internet where consumers can preview and play its games, purchase products that can be used on mobile phones and PDA’s, and access technical support services, including “www.ea.com”, “www.eagames.com” and “www.easports.com”. Since its inception, Complainant has received more than 700 awards for its outstanding products in both the United States and Europe.

Complainant’s broad portfolio of franchises includes wholly-owned titles such as THE SIMS games, as well as other licensed brands such as MADDEN NFL, NBA LIVE, THE LORD OF THE RINGS, HARRY POTTER and THE GODFATHER properties. Complainant has offices around the world, over 6,500 employees and annual revenues of over $3.5 billion. It is one of the largest and most well-know game companies in the United States and the world. In addition, Complainant has registered in excess of 150 international domain names and more than 275 domestic domain names relating to Complainant’s businesses that include the EA Marks.

On December 8, 2005, Complainant and Jamdat Mobile Inc. (“Jamdat”) announced that they had entered into a definitive merger agreement under which Complainant would acquire Jamdat for $680 million. At the time, Jamdat was the leading mobile game publisher in the United States both in revenues and downloads and its game portfolio included some of the most well-known game properties including, TETRIS, BEJEWELED and JAMDAT BOWLING. Jamdat expected annual revenue of between $70-$80 million for 2005.

The $680 million merger was widely reported in both the mainstream press and industry press, including articles in The New York Times, The Wall Street Journal, and The Los Angeles Time. It was also reported on gaming industry sites such as Gamespot.com, IGN.com and ZDNet.com. News of the merger was also carried and distributed by major newswire services such as the Associated Press, Business Wire and Reuters.

Even prior to the merger, Complainant’s mobile games division was known and frequently referred to as “EA Mobile.” On December 17, 2005, just nine days after Complainant’s announcement that it acquired Jamdat and that Jamdat would be merged into the EA Mobile games division, Respondent registered the Domain Name <eamobilegames.com>.

 

5. Parties’ Contentions

A. Complainant’s contentions

i. Complainant contends that it has registrations of the Marks, that its registrations are valid and subsisting, and that they serve as prima facie evidence of its ownership and the validity of the Marks. 15 U.S.C. § 1115. Complainant further alleges that its registrations are incontestable and conclusive evidence of its exclusive right to use the Marks in connection with the stated goods. 15 U.S.C. §§ 1065 and 115(b).

ii. Complainant argues that the Domain Name is confusingly similar to the Marks, pursuant to Paragraph 4(a)(i) of the Policy, because the Domain Name wholly incorporates the EA GAMES Mark with the addition of generic terms “mobile” and “.com.”

iii. Complainant contends that Respondent has no rights or legitimate interests in the Domain Name, pursuant to Paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name.

Complainant contends that Respondent cannot demonstrate rights or legitimate interest in the Domain Name under Paragraph 4(c)(i) because it has not made use, or demonstrable preparations to use, the Domain Name in connection with the bona fide offering of goods or services. Complainant alleges that Respondent has used the Domain Name solely for redirecting internet traffic to websites of third parties, which is not a bona fide use.

Complainant contends that Respondent cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(ii) because he is not commonly known under the Domain Name. Respondent has no connection or affiliation with Complainant, and has not received any license or consent, express or implied, to use the Marks in a domain name or in any other manner.

Complainant contends that Respondent cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(iii) because it is not making a legitimate noncommercial or fair use of the Domain Name without the intent to (a) derive commercial gain, or (b) misleadingly divert consumers, or (c) tarnish the Marks. Complainant alleges that Respondent’s content on the website to which the Domain Name resolves contains only sponsored links related to computer games or mobile devices. Complainant alleges that Respondent is paid on a “pay per hit” basis. At the top of Respondent’s website is the notice that the website is for sale.

iv. Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of Paragraph 4(a)(iii).

Complainant argues that the registration of the Domain Name by Respondent shortly after the announcement of the merger of Jamdat into Complainant was not coincidental. Respondent also registered the domain names <eamobilegames.co.uk> and <eamobile.co.uk>.

Complainant argues that the Respondent registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the registrations to the Complainant or one of its competitors for valuable consideration in excess of the registrant’s out-of-pocket costs. In support of this allegation, Complainant cites the legend at the top of Respondent’s website that the website is for sale. The Policy at paragraph 4(b)(ii) indicates that such activity is sufficient for a finding of bad faith.

Complainant further argues that Respondent has engaged in another element of bad faith pursuant to the Policy paragraph 4(b)(iv) Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website 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 Respondent’s website or location or of a product

B. Respondent’s contentions

i. Respondent does not dispute that the Complainant has registrations of the Marks.

ii. Respondent asserts that the Domain Name is not confusingly similar to the Marks because at the time of registration of the Domain Name, Complainant had not yet registered a trademark for an EAMOBILEGAMES mark. Respondent further argues that he had not yet developed the content of the website, but merely parked the Domain Name at “www.sedo.com” while waiting to decide how to develop this project. The Internet users could easily tell that the website was not sponsored by Complainant because it did not have the distinctive EA logo.

iii. Respondent asserts that he has established rights or legitimate interests in the Domain Name, pursuant to Paragraph 4(a)(ii), because he never sought to divert any business or to receive any financial gain. He was simply waiting to decide how to develop the website.

iv. Respondent denies that he registered or used the Domain Name in bad faith. Respondent cites to the federal Anti-cybersquatting Consumer Protection Act (“ACPA”). Respondent argues that the facts of the present situation are insufficient to support a finding of intentional bad faith. Respondent simply chose the initials “E” and “A” to signify two nations “England” and “Australia” with which Respondent has an affiliation. Having parked the website on “www.sedo.com”, the host of the website offered an opportunity to generate revenue by allowing other companies to link to the website while Respondent developed his plans. The total revenues generated have not exceeded $10. In addition, the “for sale” legend was one of the default functions on the “www.sedo.com” website.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.”

Because both the Complainant and Respondent are domiciled in the United States and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Lorenzo Brusasco-Mackenzie, WIPO Case No. D2000-1772 (April 10, 2001).

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and

iii) that the domain name has been registered and is being used in bad faith.

Enforceable Trademark Rights

Complainant contends that it has registrations of the Marks, that its registrations are valid and subsisting, and that they serve as prima facie evidence of its ownership and the validity of the Marks. 15 U.S.C. § 1115. Complainant further alleges that its registrations are incontestable and conclusive evidence of its exclusive right to use the Marks in connection with the stated goods. 15 U.S.C. §§ 1065 and 115(b).

Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. It is the Panel’s belief that Respondent has not contested the existence and validity of Complainant’s registrations of its Marks. Therefore, the Panel finds that Complainant, for purposes of this proceeding, has enforceable rights in the Marks.

Identity or Confusing Similarity

Complainant further contends that the Domain Name is confusingly similar to the trademark pursuant to the Policy paragraph 4(a)(i), because the Domain Name wholly incorporates the EA GAMES Mark with the addition of generic terms “mobile” and “.com.”

Respondent asserts that the Domain Name is not confusingly similar to the Marks because at the time of registration of the Domain Name, Complainant had not yet registered a trademark for EAMOBILEGAMES Mark. Respondent further argues that he had not yet developed the content of the website, but merely parked the Domain Name at “www.sedo.com” while waiting to decide how to develop this project. The Internet users could easily tell that the website was not sponsored by Complainant because it did not have the distinctive EA logo.

As numerous courts and prior ICANN panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (May 29, 2000) (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant’s registered trademark.

Contrary to the Respondent’s contention, the owner of the registered trademark does not have to show “likelihood of confusion,” as that term is used in trademark infringement jurisprudence, to establish that a domain name incorporating a trademark in its entirety is identical or confusingly similar for purposes of this first factor. Under Paragraph 4(a)(i), the question of identity and confusing similarity is evaluated solely based on a comparison between the complainant’s trademark and the alphanumeric string constituting the domain name at issue. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 (January 29, 2001). It thus is irrelevant, for purposes of evaluating the first factor, whether consumers would avoid confusion by reviewing the content of Respondent’s website.

The Panel notes that the entirety of the EA GAMES Mark is included in the Domain Name. In addition, the Panel notes that the phrase “mobile” is descriptive in this industry and that the extension “.com” (or a similar identifier) is required for registration of a domain name. Therefore, the Panel finds that the Domain Name is confusingly similar to the Marks pursuant to the Policy paragraph 4(a)(i).

Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interests in the Domain Name pursuant to the Policy paragraph 4(a)(ii) Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name.

Complainant alleges Respondent has not made use, or demonstrable preparations to use, the Domain Name in connection with the bona fide offering of goods or services because redirecting internet traffic to websites of third parties is not a bona fide use. Complainant alleges Respondent is not commonly known under the Domain Name. Respondent has no connection or affiliation with Complainant, and has not received any license or consent, express or implied, to use the Marks in a domain name or in any other manner. Finally, Complainant alleges that Respondent is making a commercial use of the Domain Name with misleadingly diverting consumers.

Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the Domain Name. Once a Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of Paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 (June 6, 2000).

Respondent agrees that he has no relationship with or permission from Complainant for the use of the Marks. In addition, Complainant has come forward with allegations that Respondent has no rights or legitimate interests in the Domain Name. Respondent must counter these allegations.

Respondent states that he has established rights or legitimate interests in the Domain Name, pursuant to Paragraph 4(a)(ii), because he never sought to divert any business or to receive any financial gain. He was simply waiting to decide how to develop the website.

The Panel finds that the evidence of Respondent is not sufficient to rebut the showing made by Complainant. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Bad Faith

Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:

(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.

Complainant alleged that Respondent’s actions meet the requirements of the Policy paragraph 4(b)(iv) demonstrating bad faith. Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s Marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product.

Respondent denies that he registered or used the Domain Name in bad faith. Respondent cites to the federal Anti-cybersquatting Consumer Protection Act (“ACPA”). Respondent argues that the facts of the present situation are insufficient to support a finding of intentional bad faith. Respondent simply chose the initials “E” and “A” to signify two nations “England” and “Australia” with which Respondent has an affiliation. Having parked the website on “www.sedo.com”, the host of the website offered an opportunity to generate revenue by allowing other companies to link to the website while Respondent developed his plans. The total revenues generated have not exceeded $10. In addition, the “for sale” legend was one of the default functions on the “www.sedo.com” website.

The Panel finds the explanation of Respondent unconvincing. The ACPA requirements do not supersede the Policy. Respondent’s actions meet the elements of the Policy paragraph 4(b)(iv). Therefore, The Panel finds that this evidence is sufficient to establish the necessary elements of bad faith under the Policy paragraph 4(b)(iv).

The four criteria set forth in the Policy paragraph 4(b) are nonexclusive. Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003. In addition to these criteria, other factors alone or in combination can support a finding of bad faith.

The intentional bad faith implied by the timing of Respondent registering the Domain Name shortly after the announcement of the merger of Jamdat into Complainant is not a necessary element, but provides additional evidence suggesting bad faith. The Panel also considered the registration of two similar domain names in the United Kingdom as <eamobilegames.co.uk> and <eamobile.co.uk> were not a necessary element, but provides additional evidence suggesting bad faith.

 

7. Decision

The Panel concludes (a) that the Domain Name <eamobilegames.com> is confusingly similar to Complainant’s registered Marks, (b) that Respondent has no rights or legitimate interests in the Domain Name and (c) that Respondent registered and used the Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to Complainant.

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Richard W. Page
Sole Panelist

Dated: July 30, 2006