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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

inXile Entertainment, Inc. v. Telecom Tech Corp

Case No. D2009-0655

1. The Parties

The Complainant is inXile Entertainment, Inc. of California, United States of America, represented by Rutan & Tucker, LLP, United States of America.

The Respondent is Telecom Tech Corp of Panama City, Panama.

2. The Domain Name and Registrar

The disputed Domain Name <superstacker2.com> ("the Domain Name") is registered with DomainCannon.com LLC ("the Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 16, 2009. On May 18, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 21, 2009, the Registrar 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 Domain Name. The Center verified that 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 May 25, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 14, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent`s default on June 15, 2009.

The Center appointed Warwick Smith as the sole panelist in this matter on June 19, 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.

According to the WhoIs particulars as published by the Registrar, the registrant of the Domain Name is "Contact Privacy by Domain Cannon", having the same New Orleans address as the Registrar. However, the Registrar did confirm in its email to the Center dated May 21, 2009 that the Respondent is the registrant of the Domain Name, and a WhoIs report dated April 27, 2009 from the database at "www.networksolutions.com", which was produced by the Complainant, also listed the Respondent as the registrant.

In those circumstances the Panel is satisfied that Telecom Tech Corp of Panama City, Panama, has been correctly named as Respondent in the proceeding.

An attempt to deliver a copy of the Complaint and a Notification document at the Respondent`s Panama address was unsuccessful. However, the Complaint and Notification appear to have been successfully transmitted to the email address which the Registrar provided for the Respondent, and the Center also copied the Notification and Complaint documents to the Registrar. In those circumstances, the Panel is satisfied that the Center has discharged its notification responsibilities under the Rules, paragraph 2.

4. Factual Background

On April 7, 2009, the Complainant applied to the United States Patent and Trademark Office ("the USPTO") to register the mark SUPER STACKER in international classes 9, 28, and 42. The class 9 application was in respect of "video and computer game software for use with computers, televisions or handheld gaming devices; downloadable computer and video game programmes", and the class 28 application was for "stand-alone video game machines; hand-held units for playing electronic games; and promotional game materials". The class 42 application was for "providing online non-downloadable computer and video game software and video game strategy and instruction guides".

The application does not yet appear to have proceeded beyond the initial filing stage.

The Complainant produced with its Complaint a printout from the USPTO database dated April 27, 2009, and although in its Complaint the Complainant asserts a first use of the claimed mark in commerce (through a predecessor in interest) dating back to November 12, 2008, the USPTO database extract produced by the Complainant states "date not available" for both the "first use" and "first use in commerce" dates.

A document produced by the Complainant, downloaded from the Internet on April 29, 2009 (an extract from the website at "www.newgrounds.com"), appears to show that the date the Complainant`s game was "first submitted" was November 12, 2008. The Complainant asserts that that was the date on which the "Complainant`s game was first posted to the Internet", but it is not clear who effected the "posting", or how long the Complainant`s game was referenced on the "www.newgrounds.com" website.

The April 29, 2009 pages from the "www.newgrounds.com" website describe the Complainant`s "Super Stacker" game as a "fun physics puzzle game", in which the player has to "carefully stack the shapes". The same Internet review site contains a comment from one site visitor, that he or she "loved it more than stack the hat". One of the site visitors, having commented "very cool", noted "but the 2 is the best".

The Respondent and the Domain Name

The Domain Name was registered on February 15, 2009. A page from the website at the Domain Name ("the Respondent`s website"), printed by the Complainant on April 27, 2009, shows that it was then being used as a fairly typical landing page, with click-on links to third party sites, grouped according to topics (e.g., "Travel", "Finance", and "Home", each with various sub-categories). Clicking on these links takes the site visitor to third party websites providing goods or services of the relevant category.

Also on the Respondent`s website, there was a list of click-on "Related Searches". These include "Stacker2", "Superstacker2", and "Stacker 3".

The Complainant says that it has never authorized the Respondent to use its trademark, or to register or use the Domain Name. There is no business relationship between the parties. The Complainant says that it is not aware of any circumstances indicating that the Respondent has used the Domain Name in connection with any bona fide offering of goods or services, apart from the use of the Domain Name as just described.

The Complainant says that it operates a website at "www.super-stacker.com". The Complainant did not provide evidence of when it established its website at that domain name.

5. Parties` Contentions

A. Complainant

The Complainant contends:

1. The Domain Name is identical to the Complainant`s SUPER STACKER mark. Confusion between the Complainant`s mark and the Domain Name is inevitable, given their identical appearance, sound and meaning. Users of the Internet have unintentionally accessed the Respondent`s website by typing in the Complainant`s mark as a URL address, and no doubt some will continue to do so.

2. The Respondent has no rights or legitimate interests in respect of the Domain Name, having regard to the following facts:

(i) The Respondent owns no trademark registrations or applications which consist of or include the words "Super Stacker", or any close variant thereof.

(ii) The Respondent has not used the term "Super Stacker", or any close variant thereof, or the Domain Name, in connection with the offering of any authorized goods or services, or any legitimate business. The Respondent`s website appears to merely operate as a "place holder", rather than as a legitimate website offering actual goods and/or services.

(iii) The Complainant has never authorized the Respondent to use its trademark, or to register or use the Domain Name. The Complainant does not have any business relationship with the Respondent.

(iv) The Complainant is not aware of any evidence indicating that the Respondent (as an individual, business, or other organization) has ever been commonly known by the Domain Name.

(v) The Complainant is not aware of any evidence indicating that the Respondent is making a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain, misleading or diverting consumers, or tarnishing the SUPER STACKER mark.

3. The Domain Name was registered and is being used in bad faith, having regard to the following:

(i) The Complainant`s SUPER STACKER mark is distinctive, and the Domain Name was registered after the date on which the Complainant`s predecessor in interest released the game which is promoted and known as "SUPER STACKER".

(ii) The Respondent is intentionally using a domain name which is confusingly similar to the Complainant`s trademark, for commercial gain. The Respondent`s website resembles many others that are set up solely for the purpose of generating revenue per user clicks. Such websites trade on the goodwill of trademarks that have enough recognition to generate a sufficient number of "hits", and thereby a sufficient amount of revenue.

(iii) The Respondent uses the Domain Name to divert users from the website owned by the Complainant at "www.super-stacker.com" (which is virtually identical to the Domain Name).

(iv) The Respondent is holding the Domain Name to prevent the Complainant, the true owner of the trademark, from owning the Domain Name.

B. Respondent

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

6. Discussion and Findings

A. What the Complainant must prove under the Policy - General

Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:

(i) That the disputed domain name 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 disputed domain name; and

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

Paragraph 15(a) of the Rules requires the 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".

Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to "decide the dispute based on the complaint". Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent`s failure to comply with the Rules (e.g., by failing to file a response), as the Panel considers appropriate.

B. Identical or Confusingly Similar

The Complaint fails at this point. The Panel is not satisfied that the Complainant has proved that it yet has rights in any SUPER STACKER mark.

First, the Complainant does not have any registered rights in such a mark. The Complainant only applied to the USPTO to register the mark in late April of this year, and as far as the evidence shows, the application has not yet proceeded beyond the initial filing. An application on its own, which has not yet proceeded to registration, proves nothing.

Furthermore, the Panel notes that there appear to be other games, apparently similar to that marketed by the Complainant, where the concept of "stack" or "stacking" forms part of the game`s name – see for example the reference to "stack the hat" on the website pages at "www.newgrounds.com", and the apparent existence of other games called "Stacker 2", "Superstacker 2", and "Stacker 3" (see the "Related Searches" referred to in section 4 of this decision). There is nothing in the evidence which says whether these other games were first marketed before or after the Complainant first marketed its own "Superstacker" game, nor anything which addresses the possibility that "super stacker" might be regarded as purely descriptive of a particular kind of "stacker" game. In the latter case, it would appear that the application could not proceed to registration without evidence of substantially exclusive and continuous use in commerce for a period of 5 years (Lanham Act, section 2(e) and (f)).

There is insufficient evidence for the Panel to conclude that "Super Stacker" is either inherently distinctive, or that it has acquired a secondary meaning, denoting, in the minds of the relevant class of consumers, the Complainant`s products. The claimed mark consists of two relatively common English words, and, as noted above, there appear to be other similar products in the market which include the word "stack", or the word "stacking", in the product name. There is no evidence of any amount spent by the Complainant in advertising its product under a SUPER STACKER mark, nor any evidence of third party recognition of the claimed mark as referring to the Complainant`s product. No letterhead or business card bearing the claimed mark has been produced, and nor has the Complainant produced a complete description of its product, or a copy of its website at "www.super-stacker.com". All there is, is the fact that the game was first described apparently in a third party website, in November 2008, only some three months before the Domain Name was registered. How long it remained on that website is not stated, and the Complainant does not appear to have claimed any "first use" date in its subsequent trademark application.

In the Panel`s judgment, the evidence just described is not sufficient for the Complainant to establish that it has common law rights in a SUPER STACKER mark, and the Complaint must be dismissed accordingly.

C. Rights or Legitimate Interests

In view of the Panel`s findings in section 6B of this decision, there is no need for the Panel to consider this part of the Complaint.

D. Registered and Used in Bad Faith

Again, it is not necessary for the Panel to make any findings under this heading, and the Panel refrains from doing so. However the Panel does make the following observations.

In the Complainant`s favor on the bad faith issue, is the fact that the Respondent did not respond to the Complaint. Also, the Respondent`s website is of the general "landing page" kind typically operated by cybersquatters. Although it is possible that the Respondent could have been aware of the Complainant and its claimed mark when the Respondent registered the Domain Name, and that the Respondent might have contemplated that it would profit from Internet users mistakenly coming to the Respondent`s website when they were looking for a website operated by the Complainant, but the onus is on the Complainant to prove bad faith at the date the Domain Name was registered (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The Panel is not persuaded that the Complainant has carried that burden on the record in the present dispute¹. Had it been necessary for the Panel to address the issue, the following matters in particular would have stood as significant obstacles to a finding of bad faith at registration date:

1. At the date on which the Domain Name was registered, the Complainant had not applied for a trademark registration anywhere in the world.

2. There is no provided evidence of when the Complainant registered its own domain name, <super-stacker.com>, and in particular whether that domain name was registered before or after the Respondent registered the Domain Name.

3. Particularly having regard to the apparent existence in the market of other "stack" or "stacker" games, the situation called for substantial evidence that the Respondent, apparently based in Panama, knew or should have known of the Complainant and or/ its claimed SUPER STACKER mark when the Domain Name was registered. There was little or no evidence on that topic.

7. Decision

For all the foregoing reasons, the Complaint is denied.

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Warwick Smith
Sole Panelist

Dated: July 3, 2009

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¹ The Panel also notes that there appears to have been a modification in the WhoIs data at some point after formal commencement of proceedings which may raise a question as to a possible breach of paragraph 8(a) of the UDRP. However this may be, and in view particularly of the Panel`s findings under paragraph 6B it is not necessary to consider that issue further here.