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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Electronic Arts Inc. v. Cayman Trademark Trust aka Generic Search Terms

Case No. D2006-0570

 

1. The Parties

The Complainant is Electronic Arts Inc., Redwood City, California, United States of America, represented by DLA Piper Rudnick Gray Cary US, LLP, San Francisco, California, United States of America.

The Respondent is Cayman Trademark Trust aka Generic Search Terms, West Bay, Grand Cayman, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Name and Registrar

The disputed domain name <eastore.com> is registered with BulkRegister.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2006. On May 8, 2006, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name at issue. On May 10, 2006, BulkRegister.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 May 16, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 5, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 11, 2006.

The Center appointed Ross Carson as the sole panelist in this matter on June 28, 2006. 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

Complainant is the registered owner of numerous trademarks for or including EA registered on the Principal Register in the United States of America. The registrations include the trademark EA, United States Reg. No. 2737377, registered in relation to: “computer game software and related instruction manuals sold together as a unit and downloadable computer game software.” This trademark was first used in commerce on July 25, 2000. Complainant is also the registered owner of the trademark EA STORE, United States Reg. No. 2401736, registered in relation to: “on-line retail store services in the fields of computer game software and hardware; buying club services; namely operating and maintenance of a membership organization in retail discounts, promotions and order taking.” This trademark was first used in commerce on February 11, 1997. Other United States registrations registered by Complainant for “computer game software and related instruction manuals” include EA GAMES, United States Reg. No. 2652446, EA SPORTS, United States Reg. No. 2629002; EA SPORTS BIG, United States Reg. No. 2663929. Complainant is also the owner of United States Trademark Reg. No. 2401839 for the trademark EA SPORTS NET registered in relation to “providing on-line electronic bulletin boards for transmission of messages among computer users concerning computer games, ….” Annex 4 to Complaint.

Founded in 1982, Complainant is the world’s leading independent developer and publisher of interactive entertainment software for advanced entertainment systems such as the PlayStation2, Microsoft Xbox, Nintendo GameCube and Game Boy Advance, as well as personal computers and mobile devices. Complainant’s broad portfolio of franchises includes wholly-owned titles such as the popular 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 over $3.5 billion. It is one of the largest and most well-known game companies in the United States and the world. Annex 5 to Complaint.

Complainant uses the trademarks for or including EA in connection with the worldwide sales of game software for personal computers and video game systems. The marks are also used in domain names and on web pages in connection with Complainant’s online operations such as “www.ea.com” and “www.easports.com”, where customers can preview and play Complainant’s games, purchase products and access technical support services. Annex 1 to Complaint.

 

5. Parties’ Contentions

A. Complainant

A.1 Identical or Confusingly Similar

Complainant submits that the domain name in dispute <eastore.com> is virtually identical to Complainant’s United States trademark registration for EA STORE and is confusingly similar to Complainant’s registered trademarks for and including EA. Complainant submits that the slight difference between Complainant’s trademarks and Respondent’s domain name has no legal significance for purposes of determining whether the domain name is identical or confusingly similar to Complainant’s trademarks. For example, with respect to Complainant’s EA STORE mark, the addition of “.com” and the removal of the space between EA and STORE are irrelevant. Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 (addition of “.com” to mark is irrelevant); General Electric Company v. FORDDIRECT.COM, INC., WIPO Case No. D2000-0394 (removing space between words does not render domain name different from Complainant’s trademark).

A.2 No Rights or Legitimate Interests in respect of the Domain Name

Complainant states that Respondent has never sought or obtained a license from Complainant to use the domain name in dispute. Respondent has not registered the <eastore.com> domain name or any corresponding name as a trade or service mark in the United States, or, on information and belief, in any other jurisdiction. Respondent’s lack of any registered rights in the name is in itself sufficient to demonstrate a lack of legitimate rights. See, e.g. Ronson Plc v. Unimetal Sanayi ve Tic. A.S., WIPO Case No. D2000-0011.

Complainant states that Respondent registered the domain name <eastore.com> on September 17, 2002, over five years after Complainant first began using its EA STORE trademark and well after the time when Complainant first began using its other related marks in connection with its online operations. Respondent has used the domain name in dispute solely for purposes of diverting Internet users seeking Complainant’s products and services to web pages containing similar or related products and services. A copy of a printout of the webpage at “www.eastore.com” is attached as part of Annex 1 to Complaint. The website page at the <eastore.com> domain name does not contain any bona fide content but instead consists primarily of a list of sponsored links related to computer games and video game software or online gaming. Complainant submits that as far as Complainant can determine, Respondent profits from the exploitation of Complainant’s trade and service marks by receiving a commission for each “hit” to one of the linked-to- sites and/or by receiving direct payments from visitors to the linked-to-sites. Other than using the domain name as described above, Respondent has not made use of the domain name in connection with a bona fide offering of goods or services. Its use of the domain name to direct Complainant’s customers and potential customers to other websites does not qualify as a “bona fide offering of goods or services” under the Policy. National Hockey League and Lemieux Group Lp v. Domain for Sale, WIPO Case No. D2001-1185.

Complainant further submits that Respondent has engaged in an unceasing pattern of bad faith registering of domain names incorporating terms in which it has no legitimate rights. In a UDRP decision against Respondent, National Football League Players Association, Inc. v. Cayman Trademark Trust d/b/a Trademark, WIPO Case No. D2005-0234, the Administrative Panel documented thirty-two (32) separate decisions by UDRP panels wherein Respondent was found to have registered and used domain names in bad faith and was ordered to transfer the contested domain names to the Complainants. In more recent decisions such as Humana Inc. v. Cayman Trademark Trust, WIPO Case No. D2006-0073, panels have found that Respondent had made non-legitimate use of well-known trademarks of others.

A.3 Registered and Used in Bad Faith

Complainant submits that given Complainant’s longstanding use of the trademark EA STORE and numerous other trademarks for and including EA, both online and offline, and of its position as the world leader in the interactive entertainment software market, Respondent must have been well aware of the association of these marks with Complainant and of the goodwill associated with Complainant’s trademarks for or including EA when Respondent registered and began using the domain name in dispute. Indeed, such a conclusion is the only reasonable one where, as here, the registrant has no previous connection with the domain name and no current connection other than its attempt to exploit the value of the Complainant’s trademarks for or including EA.

Complainant further submits that Respondent’s use of the domain name in dispute, which is confusingly similar to Complainant’s well-known trademarks for or including EA, in order to misdirect traffic to other websites for profit constitutes bad faith use.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “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”.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) 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

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

(3) the domain name has been registered and is being used in bad faith.

The fact that the Respondent did not submit a Response does not automatically result in a decision in favor of the Complainant. The failure of the Respondent to file a Response results in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following therefrom in the Complaint as true. Charles Jourdan Holding, AG v. AAIM, WIPO Case No. D2000-0403.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must establish rights in a trademark and secondly that the domain name in dispute is identical or confusingly similar to the trademark in which the Complainant has rights.

The Complainant has established that it is registered as the owner of numerous trademark registrations for trademarks for or including EA registered in relation to computer game software and related instruction manuals sold together as a unit and downloadable computer game software. One of these registered trademarks, EA STORE, was first used in commerce on February 11, 1997. The particulars of some of Complainant’s numerous trademark registrations are set out in paragraph 4 above. The trademarks for or including EA have been used throughout the world by Complainant and are well-known in association with the worldwide sales of computer game software for personal computers and video game systems.

The slight difference between the domain name in dispute and Complainant’s registered trademark EA STORE has no legal significance for purposes of determining whether the domain name is identical or confusingly similar to Complainant’s trademark EA STORE. The addition of “.com” and the removal of the space between EA and STORE are irrelevant. Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 (addition of “.com” to mark is irrelevant). The domain name in dispute comprised of the letters “ea” in combination with the descriptive word “store” is confusingly similar to the Complainant’s many registered trademarks for or including EA.

The Panel finds that the Complainant has proven that the domain name in dispute is confusingly similar to the Complainant’s registered trademarks for or including EA.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that the Respondent has no rights or legitimate interests in respect of the domain name.

The Respondent has not used the trademark EASTORE or EA STORE in association with any goods or services offered by Respondent.

The Respondent is not affiliated with the Complainant and has never been authorized by the Complainant to use the EA STORE trademark or any trademark confusingly similar thereto.

The domain name <eastore.com> is used by Respondent for a website that includes sponsored links promoting products offered by competitors of Complainant. The use of the domain name in dispute to promote competitors’ products is not a legitimate use of the domain name.

Respondent did not file any evidence to demonstrate Respondent’s rights or legitimate interests in the domain name in dispute as it was entitled to do pursuant to paragraph 4(c) of the Policy.

Respondent has engaged in a pattern of bad faith registering of domain names incorporating terms in which it has no legitimate rights. In a UDRP decision against Respondent, National Football League Players Association, Inc. v. Cayman Trademark Trust d/b/a Trademark, WIPO Case No. D2005-0234, the Administrative Panel documented thirty-two (32) separate decisions by UDRP panels wherein Respondent was found to have registered and used domain names in bad faith and was ordered to transfer the contested domain names to the complainants. In more recent decisions such as Humana Inc. v. Cayman Trademark Trust, WIPO Case No. D2006-0073, panels have found that Respondent had made further non-legitimate use of well-known trademarks of others.

The Panel finds that the Complainant has proven that the Respondent does not have any rights or legitimate interests in the domain name in dispute.

C. Registered and Used in Bad Faith

Having regard to Complainant’s longstanding use of the trademark EA STORE and numerous other trademarks for and including EA both online and offline, and of its position as the world leader in the interactive entertainment software market, Respondent must have been well aware of the association of these marks with Complainant and of the goodwill associated with Complainant’s trademarks for or including EA when Respondent registered and began using the domain name in dispute in association with a website promoting access to competing goods and services.

The domain name <eastore.com> is used by Respondent for a website that includes sponsored links to products offered by competitors of Complainant. Respondent receives pay-for-click payments for hits on the website associated with the domain name in dispute.

Respondent used the domain name in dispute to intentionally attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark as to source, sponsorship, affiliation, or endorsement of Respondent’s website. Lily ICOS LLC v. Brian Focker, WIPO Case No. D2005-0729.

The Panel finds that Complainant has proven that Respondent registered and used the domain name in dispute in bad faith as set out in paragraph 4(b)(iv) of the Policy.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <eastore.com> be transferred to the Complainant.

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Ross Carson
Sole Panelist

Dated: July 12, 2006