Westmore · UDRP DecisionGeekway.com
The Panel ordered transfer of <geekway.com>. It found that the Complainant had acquired common-law rights in GEEKWAY through continuous use since 2005, that the domain was identical to that mark, that the Respondent lacked rights or legitimate interests, and that the domain had been registered and used in bad faith. The bad-faith finding relied particularly on registration after the Complainant began using its coined mark, parking and offering the domain for sale, and the Respondent's May 18, 2018 request for USD 9,900 to transfer it.
The timeline behind geekway.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind geekway.com — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
The case illustrates that an exact-match domain can be transferred on the basis of unregistered trademark rights when the record establishes sustained prior use and acquired distinctiveness. It also shows the significance of a direct, high-priced transfer request when combined with parking, a for-sale listing, prior trademark use, and the absence of a respondent rebuttal.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Geekway, LLC v. Beats Case No. D2018-1945 1. The Parties The Complainant is Geekway, LLC of Saint Louis, Missouri, United States of America (“United States”). The Respondent is Beats of Daegu, Republic of Korea. 2. The Domain Name and Registrar The disputed domain name <geekway.com> is registered with Megazone Corp., dba HOSTING.KR (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 27, 2018. On August 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 29, 2018, 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. On September 10, 2018, the Center notified the Parties in both English and Korean that the language of the registration agreement for the disputed domain name is Korean. On the same day, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date. 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 and 4, the Center formally notified the Respondent in English and Korean of the Complaint, and the proceedings commenced on September 18, 2018. In accordance with the Rules, paragraph 5, the due date for the Response was October 8, 2018. However, the Respondent did not file any Response by the said due date. The Center appointed Young Kim as the sole panelist in this matter on October 25, 2018. 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 The Complainant is a United States company that hosts and operates an annual convention about board games called “Geekway to the West” (“Convention”). Since Jay Moore, Jeff Hiatt and Chris Darden (who subsequently incorporated the Complainant) had begun hosting the Convention using GEEKWAY and GEEKWAY TO THE WEST mark (Collectively the “GEEKWAY marks”) in 2005, the Convention has been held every year and the conventions are often attended by thousands of individuals from across the United States. The disputed domain name <geekway.com> was registered by the Respondent on February 13, 2010. Since its registration, the disputed domain name has been parked and listed for sale. 5. Parties’ Contentions A. Complainant The Complainant contends that it has rights in and has continuously used the unregistered, common-law trademarks GEEKWAY and GEEKWAY TO THE WEST in commerce since 2005 in connection with its marketing and hosting of its gaming conventions. Specifically, the Complainant asserts that since Jay Moore, Jeff Hiatt and Chris Darden had begun hosting the Convention using the GEEKWAY marks in 2005, the Convention has been held every year and the conventions are often attended by as many as 3,000 individuals from across the United States. In 2010, Jay Moore, Jeff Hiatt and Chris Darden incorporated the Geekway, LLC, which is the Complainant, with the State of Missouri and transferred/assigned their assets related to the Convention, including the GEEKWAY marks, to the Complainant. The GEEKWAY marks have been continuously used in connection with the Complainant’s services of providing national board gaming conventions, through its websites, SNSs, advertisements, promotional materials, etc. The Complainant contends that the disputed domain name <geekway.com> is identical or confusingly similar to the Complainant’s GEEKWAY marks in which the Complainant has rights. The Complainant started to use its GEEKWAY marks in 2005, which is prior to the Respondent’s registration of the disputed domain name, and has been using the mark for 13 years. And the marks gained secondary meaning and became distinct identifiers among consumers. The disputed domain name’s suffix should not be taken into account for the purpose of assessing the identity or confusing similarity between the disputed domain name and the Complainant’s trademark rights. The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant claims that the Respondent has no relationship with the Complainant and the Respondent has no evidence of use of the disputed domain name, nor demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Furthermore, the Respondent has never been commonly known in the normal course of business by the disputed domain name and the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The Complainant also argues that the Respondent is a professional cybersquatter having more than 30,000 domain name registrations, and merely resolved the disputed domain name to a domain parking service from which the Respondent receives pay-per-click commissions, seeking to sell the disputed domain name for an extraordinary sum of money. Further, the Complainant contends that the disputed domain name was registered in bad faith. The Complainant argues that the Respondent registered the disputed domain name primarily for the purpose of selling it, considering that the Respondent desired to sell it to the Complainant for USD 9,900, and that the Complainant has more than 30,000 domain name registrations, mostly for sale. For the same reason, it is undebatable that the Respondent registered the disputed domain name to prevent the Complainant from registering it. Further, the Respondent intentionally attempted to attract Internet users to its website using the disputed domain name, by creating a likelihood of confusion with the Complainant’s GEEKWAY marks. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Preliminary Issue: Language of the Proceeding The registration agreement for the disputed domain name is in Korean. Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, i.e. , Korean. Here, the Center has preliminarily accepted the Complaint as filed in English, and indicated that it would accept a Response in either English or Korean, subject to a determination by the Panel pursuant to paragraph 11 of the Rules. Having considered the circumstances of the case, the Panel decides that English be adopted as the language of the proceeding under paragraph 11 of the Rules. In coming to this decision, the Panel has taken the following into account: 1) The disputed domain name resolves to a website which is in English; 2) The Complaint has been submitted in English and it would cause undue delay and expense if the Complainant were required to translate the Complaint and other documents into Korean; and 3) The Respondent communicated with the Complainant’s representative in English on May 18, 2018 regarding the possibility of purchase the disputed domain name. The Respondent also has experience in prior UDRP actions which proceeded in English. In light of these circumstances, the Panel concludes that it will (1) accept the Complaint in English; and (2) issue a decision in English. 6.2. Substantive Matters Paragraph 4(a) of the Policy sets forth three requirements which have to be met for the Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are: (i) the disputed domain name is identical 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; and (iii) the disputed domain name has been registered and is being used in bad faith. The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of the Rules. A. Identical or Confusingly Similar The Panel finds that the Complainant has rights in the GEEKWAY trademarks in light of their use by the Complainant for 13 years. Specifically, although the Complainant does not have any trademark registrations for the GEEKWAY marks before the United States Patent and Trademark Office or the Korean Intellectual Property Office, the Complainant shows with evidence that it started using the GEEKWAY marks from 2005 continuously and it gained popularity to some extent due to the Complainant’s continuous use for 13 years. On the other hand, the Respondent did not submit any rebuttal arguments. Thus, the Panel finds that the marks gained secondary meaning and became distinct identifiers among consumers. Further, the Panel finds that the disputed domain name is identical to the Complainant’s GEEKWAY trademarks. Specifically, the disputed domain name incorporates the Complainant’s trademark in its entirety, and the addition of a generic Top-Level Domain such as “.com” in a domain name may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark ( Proactiva Medio Ambiente, S.A. v. Proactiva , WIPO Case No. D2012-0182 ). For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is identical to the Complainant’s trademarks. B. Rights or Legitimate Interests Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1 . The Panel hereby finds that the Complainant has made out a prima facie case. The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its trademarks. There is nothing in the record to suggest that the Respondent has made a legitimate noncommercial or fair use of the disputed domain name or has been commonly known by the disputed domain name. Also, there is no evidence that the Respondent has an intention to use the disputed domain name in connection with a bona fide offering of goods or services. On the other hand, the Respondent has not submitted any rebuttal arguments. The Panel’s view is that these facts may be taken as true in the circumstances of this case and in view of the use of the disputed domain name. Further, there is no evidence that the Respondent is currently using or commonly known by, has used or has been commonly known under, or has a bona fide intent to use or be commonly known under the disputed domain name or a name corresponding to the disputed domain name. Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith: (i) circumstances indicating that the respondent has registered or 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 the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location. In this regard, the Panel finds that the Respondent registered the disputed domain name in bad faith for several reasons. The Respondent registered the disputed domain name five years after the Complainant began using the GEEKWAY trademarks. The term “geekway” is a kind of a coined word. The Complainant argues that the Respondent has not even used the disputed domain name except for resolving it to a parking site. Further, the Panel finds that the Respondent is being used the disputed domain name in bad faith. Specifically, the Respondent asked the Complainant to pay USD 9,900 for assigning the disputed domain name in his email dated May 18, 2018. And this amount of money far exceeds the amount generally necessary to register a domain name (the disputed domain name Registrar in this case offers about USD 8.6 per a year) and even the amount that the parking site, Sedo.com, suggests as an initial offer for assigning a domain name, i.e. , USD 300. As the conduct described above falls squarely within paragraph 4(b)(i) and (ii) of the Policy, the Panel concludes that the Respondent registered the disputed domain name in bad faith pursuant to the Policy, paragraph 4(a)(iii). 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 <geekway.com> be transferred to the Complainant. Young Kim Sole Panelist Date: November 8, 2018
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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