Playa Games GmbH which is the creator and operator of an online game called “Shakes & Fidget” which it says is known as “SFGAME” was just found guilty of Reverse Domain Name Hijacking on the domain name SFGame.com
The decision was handed down by the one member UDRP panel of Alistair Payne.
The UDRP was decided by the On-line ADR Center of the Czech Arbitration Court (CAC).
The domain holder is CBS Interactive a subsidiary of CBS Corporation, which owns 250 domain names that include the term “game”.
The domain name SFGame.com was registered on 8 August 2007 which is two years before the Complainant company was even founded.
The Complainant does not currently own any registered trade mark for “SFGAME” and therefore was making a common law right argument for its trademark rights which the one member panel said it failed to prove
Here are the highlights:
“”According to the Complainant more than 40 million players have signed up worldwide to play “SFGAME” and that its’ revenues have reached an 8 digit volume of sales per year.
It says that the Respondent does not have any rights or legitimate interests in the disputed domain name as it was inactive and unused until three weeks ago.
The Complainant further claims that the disputed domain name has been registered and is being used in bad faith by the Respondent as it confuses Internet users into thinking that the disputed domain name has some affiliation with, or resolves to the official website, of the Complainant’s game.
The Complainant also alleges that the disputed domain name resolves to a website featuring Google ads and that the Respondent has been remunerated by Google accordingly.
The Complainant claims that the Respondent installed a forwarding search engine recently without any connection to the disputed domain name.
Finally, Complainant alleges that it has tried unsuccessfully to contact the Respondent since 2009 in order to acquire the disputed domain name.
The Respondent contends that the disputed domain name is neither identical nor confusingly similar to a trade mark for the purposes of the Policy as the Complainant does not have any registered trade mark but only applications and that it has failed to provide adequate proof of usage and rights under the Policy.
The Respondent stresses that the disputed domain name was registered in August 2007, well prior to the development of Complainant’s game and that the Complainant’s other domain names incorporating “SFGAME” all point to a website for the game “Shakes & Fidget”.
The Respondent adds that there is no mention of “SFGAME” anywhere on the Complainant’s website except in these domain names.
The Respondent contends that the use of “SFGAME” in the disputed domain name does not provide the Complainant with trade mark rights.
The Respondent claims that the Complainant owns no registered trade mark for “SFGAME” and has merely made a couple of pending trade marks application in Europe but not in the United States. It notes that it does however have trade mark registrations for its “SHAKES & FIDGET” mark.
Under the Policy, the Complainant might have been able to show that the name “SFGAME” had acquired secondary meaning for the purposes of demonstrating common law use or rights if it had provided relevant evidence of sales made under the mark, the length of time it has been used in the course of trade, the nature and extent of advertising, consumer surveys and media recognition.
The threshold for demonstrating rights in an unregistered mark is relatively high and the Complainant has not provided adequate evidence (other than asserting that it has 40 million players worldwide and that it has 8 digits of sale per year) to support this assertion and mere evidence of pending trade mark applications does not suffice.
Accordingly, the Panel notes that in view of its findings in relation to the first and third elements of the Policy it is unnecessary to consider the second element.
Bad faith
Even if the Complainant was able to demonstrate trade mark rights for the purposes of the first limb of the Policy, it must demonstrate that the Respondent has both registered and used the disputed domain name in bad faith. It has not done so as the Respondent demonstrated that the disputed domain was registered by the Respondent at least 2 years prior to the Complainant’s first use of “SFGAME” mark.
The disputed domain name was registered by the Respondent in 2007 and there is some prior evidence of use on the Internet since 2005.
The Complainant submits that it started developing its game in 2009 and on checking the Complainant’s website the Panel notes that the Complainant’s company was only founded in 2009.
The Respondent could therefore not have contemplated the Complainant’s existence or game at the time that the disputed domain name was registered. There is no evidence that the Respondent was aware of Complainant at that time.
Therefore, the Panel finds that the Respondent did not register the disputed domain name in bad faith and the third element of the Policy has not been made out.
REVERSE DOMAIN NAME HIJACKING
A finding of reverse domain name hijacking is appropriate when a Complainant clearly should have known at the time that it filed its complaint that it could not prove an essential element under the Policy. In this case the Complainant should have been very well aware that the disputed domain name could not have been registered in bad faith because the Complaint’s mark and company did not exist at the date of registration of the disputed domain name.
As a result, the Panel finds that reverse domain name hijacking is made out in this case.
