Doom.games : New gTLD domain in the hands of id Software via the UDRP process

Directnic

It was doomed from the get-go, for the new gTLD domain, Doom.Games.

Doom, the classic 1990’s game that spawned a long franchise that continues to this day, is also a registered trademark of 20 years.

Dot .Games is a former gTLD of Rightside, now wholly owned by Donuts, Inc.

The game’s creators, id Software LLC, filed a UDRP at the National Arbitration Forum to claim the domain. This is not the first UDRP against a dot .Games domain name; that title went to Sega.Games, another obvious trademark.

The sole panelist, Karl V. Fink, delivered a “headshot,” ordering the domain to be transferred to the Complainant, while the Respondent did not respawn respond.

For the full details of this UDRP decision for Doom.Games, see below.

Id Software LLC v. Amaar Afzal / ConsoleSpot

Claim Number: FA1709001748691
PARTIES

Complainant is Id Software LLC (“Complainant”), represented by David M. Kramer of DLA Piper LLP (US), District of Columbia, USA. Respondent is Amaar Afzal / ConsoleSpot (“Respondent”), Canada.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <doom.games>, registered with Wild West Domains, LLC.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Hon. Karl v. Fink (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on September 12, 2017; the Forum received payment on September 12, 2017.

On September 15, 2017, Wild West Domains, LLC confirmed by e-mail to the Forum that the <doom.games> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On September 19, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 10, 2017 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@doom.games. Also on September 19, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

On October 11, 2017, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant registered the DOOM mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,050,083, registered Apr. 8, 1997). Respondent’s <doom.games> domain name is identical to Complainant’s mark as it appends the generic top-level-domain (“gTLD”) “.games” to Complainant’s wholly incorporated mark.

Respondent has no rights or legitimate interests in the <doom.games> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent fails to make an active use of the disputed domain name.

Respondent registered and uses the <doom.games> domain name in bad faith. Respondent uses the infringing domain name to disrupt Complainant’s business. Respondent used the infringing domain name to attract Internet users for commercial gain. Respondent had actual knowledge of Complainant’s rights in the DOOM mark prior to registration of the disputed domain name.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <doom.games> domain name.

DISCUSSION

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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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.

 

In view of Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

Identical and/or Confusingly Similar

Complainant asserts rights in the DOOM mark based upon registration with the USPTO. USPTO registration is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.). Therefore, the Panel finds that Complainant has established rights in the mark for the purposes of Policy ¶ 4(a)(i).

Next, Complainant asserts Respondent’s <doom.games> domain name is identical to Complainant’s mark as it appends the gTLD “.games” to Complainant’s wholly incorporated mark. The addition of a gTLD to a complainant’s mark is irrelevant for a Policy ¶ 4(a)(i) analysis. See Red Hat, Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant’s RED HAT mark because the mere addition of gTLD was insufficient to differentiate the disputed domain name from the mark). Therefore, the Panel agrees with Complainant’s contention and finds Respondent’s <doom.games> identical to Complainant’s DOOM mark per Policy ¶ 4(a)(i).

Complainant has proved this element.

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

Complainant asserts it has not authorized Respondent’s use of the DOOM mark in any way and that Respondent is not a licensee of Complainant. Where there is no evidence in the record indicating a respondent is commonly known by a disputed domain name, past panels have found a lack of rights and legitimate interests per Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name). The WHOIS information of record initially listed a privacy service, but at commencement of this proceeding the registrant of <doom.games> was revealed to be “Amaar Afzal / ConsoleSpot.” The Panel finds Respondent is not commonly known by the disputed domain name.

Next, Complainant argues Respondent failed to use <doom.games> in connection with a bona fide offering of goods and services or for a legitimate noncommercial or otherwise fair use. Instead, Respondent fails to make an active use of the disputed domain name. Failure to make demonstrable preparations to use a disputed domain name can evince a finding of a lack of rights and legitimate interests per Policy ¶¶ 4(c)(i) & (iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Here, Respondent has not made an active use of the disputed domain name. The Panel finds Respondent lacks rights and legitimate interests in the <doom.games> domain name per Policy ¶¶ 4(c)(i) & (iii).

Complainant has proved this element.

Registration and Use in Bad Faith

Complainant contends Respondent uses the infringing domain name to disrupt Complainant’s business through confusion as to the source of the website and hyperlinks to competitors. Use of an infringing domain name to disrupt a complainant’s business via competing hyperlinks evinces a finding of bad faith per Policy ¶ 4(b)(iii). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”). Here, Respondent hosts competing hyperlinks on the resolving website for the <doom.games> domain name. The Panel agrees with Complainant and finds Respondent used the <doom.games> domain name in bad faith per Policy ¶ 4(b)(iii).

Next, Complainant contends Respondent used the infringing domain name to attract Internet users for commercial gain. Use of an infringing domain name to cause confusion to Internet users for commercial gain represents bad faith per Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Here, Complainant asserts Respondent hosts pay-per-click links on the resolving website for commercial gain from Internet users otherwise seeking Complainant. The Panel agrees with Complainant and finds Respondent used the <doom.games> domain name in bad faith per Policy ¶ 4(b)(iv).

Complainant lastly claims that Respondent had actual notice of Complainant’s rights in the DOOM mark. The Panel agrees with Complainant that Respondent had actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name and finds that actual knowledge does adequately evince bad faith under Policy ¶ 4(a)(iii). See Univision Comm’cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent’s contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant’s rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent must have had actual knowledge of the DOOM mark as the mark is well-known in the realm of video games through Complainant’s’ use of the mark beginning in 1993. Further, Complainant argues the DOOM mark and associated games have achieved high rankings across the world. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).

Complainant has proved this element.

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is ORDERED that the <doom.games> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Karl V. Fink (Ret.) Panelist

Dated: October 13, 2017

 

 


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Comments

One Response to “Doom.games : New gTLD domain in the hands of id Software via the UDRP process”
  1. Eric Lyon says:

    The movie “Doom” with the “Rock” was pretty good too. 😉

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