The registrant of HallOfGames.com appears to have created the domain in 2002. Meanwhile, a manufacturer of outdoor games registered the mark HALL OF GAMES in 2021. That’s a 19 year gap between the domain and the mark; in the ensuing UDRP, the sole panelist pointed out that there’s no way for the Respondent to have registered the domain with the Complainant in mind.
Final decision: Deny the transfer of the domain HallOfGames.com to the Complainant. The Danish Respondent did not provide a response.
Note: Although the domain existed as early as in 1999 under a different registrant, it dropped and became available again in 2002.
The domain transfer was denied.
Copyright © 2024 DomainGang.com · All Rights Reserved.Shih Hsia Wu v. Brian Pedersen / ComOn Network Aps
Claim Number: FA2410002120960
PARTIES
Complainant is Shih Hsia Wu (“Complainant”), represented by Joshua G. Jones and Christopher E. Hanba of DICKINSON WRIGHT PLLC, Texas, USA. Respondent is Brian Pedersen / ComOn Network Aps (“Respondent”), Denmark.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is hallofgames.com (“Domain Name”), registered with EuroDNS S.A.
PANEL
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Nicholas J.T. Smith as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on October 17, 2024; Forum received payment on October 17, 2024.
On October 18, 2024, EuroDNS S.A. confirmed by e-mail to Forum that the hallofgames.com domain name is registered with EuroDNS S.A. and that Respondent is the current registrant of the name. EuroDNS S.A. has verified that Respondent is bound by the EuroDNS S.A. 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 October 18, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 7, 2024 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@hallofgames.com. Also on October 18, 2024, 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, Forum transmitted to the parties a Notification of Respondent Default.
On November 8, 2024, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that 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, 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 is involved in the design and manufacturing of indoor and outdoor games, having sold games from its website and third party suppliers from 2019. Complainant asserts rights in a device mark containing the words HALL OF GAMES (“HALL OF GAMES mark”) based upon registration in various jurisdictions including with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 6,131,550, registered August 18, 2021). Respondent’s hallofgames.com domain name is confusingly similar to Complainant’s HALL OF GAMES mark, wholly incorporating the word elements of the HALL OF GAMES mark and adding the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the hallofgames.com domain name. Respondent is not, and has never been, commonly known by the Domain Name. Additionally, Respondent fails to use the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent’s Domain Name resolves to a webpage indicating that the account has been suspended.
Respondent registered and uses the hallofgames.com domain name in bad faith. The Domain Name is not actively used and as the Domain Name is identical to the HALL OF GAMES mark Respondent must have registered and used the Domain Name with knowledge of Complainant’s rights in the HALL OF GAMES mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant having failed to establish bad faith registration and use of the domain name hallofgames.com has not established all required elements of its claim, and thus its complaint must be denied.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Identical and/or Confusingly Similar
Complainant has rights in the HALL OF GAMES mark based on registration with the USPTO (e.g. Reg. No. 6,131,550, registered August 18, 2021). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) (“Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”).
The Panel finds that the hallofgames.com domain name is confusingly similar to Complainant’s HALL OF GAMES mark because it wholly incorporates the portion of Complainant’s HALL OF GAMES mark reproducible in a Domain Name (the device elements not being reproducible) and adds the “.com” gTLD. These changes are insufficient to distinguish the Domain Name from the HALL OF GAMES mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Rights or Legitimate Interests
In light of the Panel’s dispositive finding on the issue of registration and use in bad faith, the Panel declines to address the question of rights or legitimate interests.
Registration and Use in Bad Faith
The Panel finds that Complainant has failed to meet its burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”); see also Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum Jul. 3, 2015) (finding that the complainant could not establish the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding).
The Domain Name was registered in 2002. Complainant’s first use of the HALL OF GAMES mark (stated on the registration with the USPTO) was in July 2018. Respondent’s registration of the hallofgames.com domain name thus predates Complainant’s first claimed rights in the HALL OF GAMES mark, and thus Complainant cannot prove registration in bad faith per Policy ¶ 4(a)(iii), as the Policy requires a showing of bad faith registration and use. See Platterz v. Andrew Melcher, FA 1729887 (Forum Jun. 19, 2017) (“Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.”); see also Faster Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) (“Respondent registered the domain name more than a decade before Complainant introduced the ALTA MOTORS mark in commerce.”).
In the absence of any persuasive evidence that the Domain Name has changed hands since 2002 (none being present in this case), I find that Respondent could not have entertained bad faith intentions respecting the HALL OF GAMES mark because it could not have contemplated Complainant’s then non-existent rights in HALL OF GAMES mark at the moment the Domain Name was registered.
Therefore, the Panel finds Respondent did not register the Domain Name in bad faith.
DECISION
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the hallofgames.com domain name REMAIN WITH Respondent.
Nicholas J.T. Smith, Panelist
Dated: November 11, 2024
