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GamingBible.com : #UDRP cites Respondent’s 67,000 #domains as part of the argument

The registrant of GamingBible.com lost this 2013 registration via the UDRP process; the Complainaint, Ladbible Group Limited, United Kingdom, asserted rights to a 2015 European trademark for “The Gaming Bible.”

In their filing, the Complainant was keen to point out that the Respondent is a domain investor, owning more than 67,000 domain names.

Interesting angle, indicating that “by definition” domain investing is somehow a practice that deprives brand creators of their intellectual property assets.

Alas, the Respondent filed no response, and in the absence of any meaningful defense, the sole panelist at the WIPO ordered the domain GamingBible.com to be transferred to the Complainant.

Full details follow:

WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ladbible Group Limited v. Domain Administrator, See PrivacyGuardian.org / Domain Admin
Case No. D2020-2113

1. The Parties

The Complainant is Ladbible Group Limited, United Kingdom, represented by Brandsmiths SL Limited, United Kingdom.

The Respondent is Domain Administrator, See PrivacyGuardian.org, Cayman Islands, United Kingdom / Domain Admin, Cayman Islands, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <gamingbible.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2020. On August 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 12, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 13, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 18, 2020.

The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 8, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2020.

The Center appointed Nick J. Gardner as the sole panelist in this matter on September 22, 2020. 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.

On October 16, 2020, the Panel issued a Procedural Order (the “Order”). The detail of the Order is discussed below. Pursuant to the terms of the Order the Complainant filed further submissions and evidence on October 27, 2020. The Respondent did not make any filing despite the Order allowing it to do so.

4. Factual Background

The Complainant was incorporated in the United Kingdom in 2012 and trades under the name “LADbible”. It is a social-media-led entertainment and content provider. It describes its mission as being “to give the youth generation a voice by building communities that laugh, think and act.” One of its principal means of providing its services is a Facebook page that has on average 730,000 comments posted to it every day. Facebook analytics figures in April 2019 indicated that it is able to reach over 100 million people in the United States of America alone, and many more tens of millions of people worldwide.

The Complainant launched its “GAMINGbible” service as a separate service on Facebook on September 21 2015. It has since expanded onto other platforms. That service provides entertainment and information in relation to computer games. From the outset, that service was promoted to persons following the Complainant’s LADbible service. The Complainant’s GAMINGbible service has a regular audience of over 9 million people, with 6.5 million following on Facebook. Facebook statistics show that the Complainant’s GAMINGbible service has had 4.4 billion engagements. It has also conducted extensive physical advertising connected with gaming industry events.

The Complainant is the registered proprietor of European Union trademark 014266531 for the words “The Gaming Bible” which was registered on December 15, 2015 (the “GAMING BIBLE trademark”).

The history of the Disputed Domain Name is discussed below. The date the Respondent acquired it is discussed below. The Complainant says the Disputed Domain Name was deliberately acquired to cause harm to the Complainant and hence cause it to seek to purchase the Disputed Domain Name.

A communication from a third party to the Complainant was sent on April 27, 2020 and indicated the Disputed Domain Name could be purchased for USD 74,900. This communication is discussed further below.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions can be summarized as follows.

The Disputed Domain Name is identical with or confusingly similar to the GAMING BIBLE Trademark.

The Respondent has no rights or legitimate interests in the term “GAMING BIBLE” or “GAMINGBIBLE”.

The Disputed Domain Name was registered and is being used in bad faith. The Complainant says the offer to sell the Disputed Domain Name (see below) was made by or on behalf of the Respondent and clearly shows the Respondent acquired the Disputed Domain Name for the purpose of selling, renting, or otherwise transferring it to the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Name.

The Complainant has also placed in evidence a blog post which it says shows the Respondent is a domain name investor. The Panel has been unable to understand the relevance of this post as it seems to be by a third party, and the Panel cannot discern any connection with the Respondent. The Complainant also says the Respondent is associated with around 67,000 domain names but has not provided any evidence supporting this allegation. The Panel accordingly takes no account of these allegations.

The Complainant says the Disputed Domain Name dynamically redirects to different websites many of which have some form of malicious content. The Complainant relies upon the malicious content of these webpages as further evidence of bad faith. It says this is intended to damage the Complainant and encourage it to seek to buy the Disputed Domain Name.

B. Respondent

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

6. Discussion and Findings

Preliminary Matters

The Panel notes that no communication has been received from the Respondent. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar, then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909). The facts of the present case are somewhat unusual (see below) and the Respondent’s failure to file a Response with any affirmative case it may have has led to the Panel making a number of inferences adverse to the Respondent (see below). The Panel has therefore given particular attention to not only the requirements of Rules (above) but also whether factually the detail of the Complaint has actually been communicated to the Respondent. It appears that service of a hard copy of the Complaint at the relevant Cayman Islands PO box address (see below) was unsuccessful. The Panel does not know why. However email service was affected to the relevant Cayman Business Web Gmail account (see below) as provided by the Respondent in its contact details as registrant, and also to the email address for the individual who communicated with the Complainant about the possible sale of the Disputed Domain Name (see below) and to <postmaster@gamingbible.com>. All these emails were apparently delivered. In these circumstances the Panel concludes that the Center has discharged its burden under the Rules, and moreover that it is more likely than not that the Respondent will have actually received the Complaint.

The Panel also notes this is a case where one Respondent (“PrivacyGuardian.org”) appears to be a privacy or proxy service.

The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:

“Panel discretion

In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.

Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.”

In the present case the Panel considers the substantive Respondent to be “Domain Admin”. See further the discussion below as to who that person is.

Substantive Matters

To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:

(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has rights in the GAMING BIBLE trademark. The Panel finds the Disputed Domain Name is in substance identical to this trademark. It is well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.

Such other differences as exist between the Disputed Domain Name and the Complainant’s GAMING BIBLE trademark (the omission of the article “the” from the mark and the joinder of “gaming” and “bible”) are trivial. In any event if not identical the Disputed Domain Name is manifestly confusingly similar to the Complainant’s trademark.

It does not matter for the purposes of this element that the Disputed Domain Name may have been registered before the GAMING BIBLE trademark existed (see below as to the chronology on this issue); the Panel agrees with the consensus approach as explained in WIPO Overview 3.0 section 1.1.3:

“1.1.3 While the UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed.”

Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under the UDRP. The UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired rights. However, in such circumstances it may be difficult to prove that the domain name was registered in bad faith under the third element of the UDRP – but see below as to bad faith issues.

Accordingly, the Panel finds that the Disputed Domain Name is identical or confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

The Panel finds the GAMING BIBLE trademark is, on the evidence before the Panel, a term in which the Complainant has developed a significant reputation.

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:

(i) before any notice to the respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use GAMING BIBLE trademark. The Complainant’s first public use of the term “gamingbible” was prior to the Respondent’s acquisition of the Disputed Domain Name (see below as to timing). The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003‑0455).

The Panel finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the Disputed Domain Name. Accordingly the Panel finds the Complainant has met its burden and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith

In the present circumstances the words “gaming” and “bible” are ordinary dictionary words. However their use in combination produces a term which is in the view of the Panel at least capable of being distinctive. There is no evidence before the Panel of any other person using those words in combination as a trademark. The evidence shows the Complainant has developed a significant reputation in relation to the GAMING BIBLE trademark. It is nevertheless the case that a person could independently have arrived at the term “gamingbible” as a likely useful or valuable domain name – manifestly that must have been the case when the Disputed Domain Name was originally registered as this was long before the Complainant existed (see below).

Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:

(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 or service on your web site or location.

In the present circumstances the Complainant alleges that factor (i) applies. The facts of the present case require a consideration of the evidence as to the chronology. The Disputed Domain Name was originally registered on August 31, 2001 (see below). This was long before the Complainant existed and even longer before it first adopted the GAMING BIBLE trademark. If August 31, 2001 was the date the Respondent registered the Disputed Domain Name the Complaint would fail – see WIPO Overview 3.0 section 3.8.1. The Complaint however alleges that the Respondent acquired the Disputed Domain Name at a later date, November 15, 2016, which is after the Complainant had adopted the Gaming Bible trademark. If that allegation is correct the relevant analysis of bad faith is different.

The evidence in the Complaint as to the chronology is as follows:

WhoIs information as at August 7, 2020 contains no details of the registrant.

Information disclosed by the registrar in the present proceeding identified the current registrant as “domain admin” with an address of PO Box 12522, West Bay, Grand Cayman.

WhoIs information as at September 19, 2017 for the Disputed Domain Name shows it as created on November 18, 2013 and updated on November 15, 2016. This information shows the registrant as being “Cayman Business Web” with an address of PO Box 12522, West Bay, Grand Cayman. Evidence of unchallenged enquiries made by the Complainant indicate that there seems to be no company named “Cayman Business Web” incorporated in the Cayman Islands.

It is not however clear that the creation date of November 18, 2013 is correct as far as this Respondent goes. WhoIs information as at April 22, 2013 shows the Disputed Domain Name existed at that date and records a creation date of August 31, 2001, and (as of April 22, 2013) shows the registrant of the Disputed Domain Name as being an entity called Cyber Business Holdings Ltd with an address recorded as “MAIN STREET #92 CHARLESTON, WI 99999, AG”.1

WhoIs information as at October 15, 2013 does not show a registrant but has a reference to a “reactivation period” and shows that, as of that date, the reactivation of the Disputed Domain Name was “pending”.

The Complainant says that “Cayman Business Web” may be a trading name used by someone called Kara Fox. It says this is likely because a particular Gmail address for “Cayman Business Web” is associated with a Kara Fox. The Complainant also says the same applies to a particular telephone number. The Panel has been unable to follow precisely how the Complainant has made these connections or what evidence substantiates them.

The Complainant received an email communication on April 27, 2020 offering to sell the Disputed Domain Name to the Complainant for USD 74,900. This email appears to have been sent by a third party intermediary and would appear to be in response to some form of enquiry by someone about purchasing the Disputed Domain Name. The Panel has not been provided with any details about the enquiry and does not know who made it or to whom. The email states (amongst other things): “Thank you for your interest in the domain name, gamingbible.com. The owner got back to me with their pricing. We are brokering this domain for the owner who has set the list price. gamingbible.com is currently priced at $74,900 USD”.

It is convenient at this stage to set out the substantive terms of the Order as these identify the key issue as to this chronology. The Order recited the above background and evidence and then provided as follows:

“5. Panel’s Further Enquiries

In accordance with WIPO Overview 3.0 section 4 the Panel has performed factual research directed at matters of public record seeking to establish whether further material that corroborates the date of November 15, 2016 is available.

That research was as follows and appears to show the following:-

A search at https://www.whoxy.com/gamingbible.com#history appears to show the present registrant was also the registrant on August 25, 2016

A search at https://tools.whoisxmlapi.com/whois-history-search: appears to show the present registrant was also the registrant on December 21, 2013. It also appears to show the same registrar (GoDaddy) as at present with effect from April 4, 2015 and the same nameservers associated with the Disputed Domain Name as at present (NS1.SMTMDNS.COM and NS2.SMTMDNS.COM) with effect from August 7, 2015

A search at https://viewdns.info/iphistory/?domain=gamingbible.com appears to show there have been regular changes of the IP address associated with the Disputed Domain Name over time, generally switching between an address space in the Netherlands and one in Texas, USA. A Netherlands address space was according to this search first used on May 24, 2015 and an address space in Texas on November 14, 2015

A search at https://whoisrequest.com/history/: appears to show the last change of the nameservers for the Disputed Domain Name was recorded on April 25, 2015.

Taking the above results as a whole the Panel is presently of the view that it is more likely than not that the present Registrant of the Disputed Domain Name became the registrant at a date earlier than November 15, 2016. Whilst the Panel cannot be certain of the exact date the earliest possible date recorded in the above search results is December 21, 2013.

Order

Having regard to the approach set out in WIPO Overview 3.0 the Panel considers it appropriate to give the parties an opportunity to comment on the above material. The Panel orders that:

1) The Complaint is permitted, if it wishes, to file a supplementary statement accompanied by any appropriate evidence directed at its case as to the date the Respondent acquired the Disputed Domain Name. Such a statement should be filed by Monday, October 26, 2020.

2) The Respondent may if it wishes file a statement in response to the Complainant’s Supplementary Statement accompanied by any appropriate evidence. Such a statement should be filed by Monday, November 2, 2020.

3) The due date for the Panel to render a decision is extended to Monday, November 9, 2020.”

The Complainant filed further evidence and submissions in response to the Order. That evidence showed that the first public activity by the Complainant in relation to the term “gamingbible” was the registration by the Complainant of the domain name “gamingbible.co.uk” on November 25, 2013.

Taking all of this evidence as a whole the Panel reaches the following conclusions on the balance of probabilities:

The present registrant of the Disputed Domain Name “domain admin” is likely the same entity as “Cayman Business Web” given it uses the same address and “domain admin” may be a term referencing whoever is administering the Disputed Domain Name rather than the name of the registrant.

Cayman Business Web does not appear to be an incorporated company. Whether Cayman Business Web is a trading name for a person called Kara Fox is something the Panel cannot determine.

The presently recorded creation date of November 18, 2013 may be the date an earlier lapsed registration for the Disputed Domain Name was reactivated. That registration dates back to 2001. Absent any evidence to the contrary the Panel assumes the reactivation was in the name of the previous registrant i.e., Cyber Business Holdings Ltd of Charleston. Again, absent any evidence to the contrary the evidence on record points to the conclusion that Cyber Business Holdings Ltd and Cayman Business Web are different and unconnected entities.

Accordingly at some date between November 18, 2013 and September 19, 2017 the Disputed Domain Name was transferred from Cyber Business Holdings Ltd to Cayman Business Web. The earliest date of record showing the Respondent as registrant is December 21, 2013 (see above). In the absence of any submissions to the contrary from the Respondent the Panel infers the Respondent acquired the Disputed Domain Name on or around that date. That is then the relevant date for assessing registration in bad faith (see WIPO Overview 3.0 section 3.9).

This date is shortly after the Complainant had registered the domain name <gaminbible.co.uk> (see above). Absent any evidence from the Respondent to the contrary the Panel thinks it more likely than not that the Respondent would have been aware of the Complainant and its adoption of the term “gamingbible” in this manner when it acquired the Disputed Domain Name. Whilst the details of exactly how the Complainant intended to use that term would not necessarily have been apparent to the Respondent, it would likely have been able to determine (e.g., based on the use of its LADbible mark) the Complaint was operating a successful and popular business generally and hence conclude the term “gamingbible” would in all probability form a part of that business in the future. The Panel therefore infers that the Respondent acquired the Disputed Domain Name because it anticipated it would be of particular value to the Complainant. The Panel also infers absent evidence to the contrary that the correspondence on April 27 2020 offering to sell the Disputed Domain Name to the Complainant for USD 74,900 was made with the knowledge and approval of the Respondent. It is true there is no evidence of the Respondent ever approaching the Complainant – it would appear it was prepared to hold the Disputed Domain Name and dynamically link it to various websites – and only made an offer to sell it once approached. That fact alone is not however sufficient to rebut the inference of bad faith – it may simply be a strategy seeking to provide a rebuttal argument to allegations of opportunistic behaviour evidencing bad faith. Taking the evidence as a whole, and the lack of any Response from the Respondent, the Panel concludes the Respondent acquired the Disputed Domain Name with a view to selling it to the Complainant for valuable consideration in excess of its documented out-of-pocket costs directly related to the Disputed Domain Name. That is evidence of registration and use in bad faith – see Policy paragraph 4(b)(i).

The Panel also notes that the way the Respondent has used the Disputed Domain Name further supports findings of registration and use in bad faith. It has not simply offered for sale as commonly happens where a domain name trader innocently registers a particular domain name. Instead it has been used to dynamically link to various websites, which appear to deliver some form of malicious payload if visited. That would generally suggest a lack of bona fides on the part of the Respondent. The Panel accepts the Complainant’s case that a reasonable inference to draw is that this form of redirection is intended to damage the Complainant (or rather, those seeking it) and thereby encourage it to seek to buy the Disputed Domain Name to tackle such potential harm. Again the Panel notes the Respondent has not availed itself of the opportunity to present any alternative case it may have.

Accordingly, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled.

7. Decision

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

Nick J. Gardner
Sole Panelist
Date: November 16, 2020

1 Factually there are many places in the world called Charleston (the two largest being in West Virginia USA and South Carolina USA). The Panel is unclear which Charleston is referenced by the address shown in the WhoIs but it may be a small town of that name in Wisconsin, given “WI” is the standard abbreviation for that state. (see e.g., https://en.wikipedia.org/wiki/Charlestown,_Wisconsin). There does not appear to be a Charleston in the Caymans according to a Google Maps search.


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