12th Jan 2013
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Game Truck Licensing, LLC v. Domains By Proxy, LLC / Chris Hampton
Case No. D2012-1964
1. The Parties
Complainant is Game Truck Licensing, LLC, of Tempe, Arizona, United States of America, represented by Squire Sanders (US) LLP, United States of America.
Respondent is Domains By Proxy, LLC / Chris Hampton of Scottsdale, Arizona, United States of America and Chattanooga, Tennessee, United States of America, respectively, represented by ESQwire.com PC, United States of America.
2. The Domain Name and Registrar
The disputed domain name <gametruck.com> (the “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 October 4, 2012. On October 5, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 10, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 10, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 12, 2012.
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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced October 15, 2012. On October 31, 2012, the proceedings were suspended. On November 14, 2012, the proceedings were reinstituted and the Response due date set for November 19, 2012. The Response was filed with the Center November 19, 2012.
The Center appointed Christopher S. Gibson, Sally Abel and The Hon Neil Brown Q.C. as panelists in this matter on December 20, 2012. The Panel finds that it was properly constituted. Each member of 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.
Complainant filed a supplemental filing on December 24, 2012 and Respondent filed a reply to this on December 27, 2012. The Panel decides that it will admit and consider the parties’ supplemental filings in this case.
4. Factual Background
Complainant was founded in 2006.
Complainant markets and delivers mobile video game theaters to public, private and corporate events where children and adults of all ages enjoy the latest video game systems (including Xbox 360, PlayStation 3 and Nintendo Wii) in a multi-player environment. The mobile theater itself is a 50-foot self-contained, self-powered, climate controlled environment with multiple wide-screen monitors, an audio sound system, and comfortable seating for up to 20 garners. Each Complainant event is managed by GameCoach.
Complainant has over 60 franchises in 26 states across the United States.
Complainant’s owns two service marks, GAME TRUCK and GAME GT TRUCK. On March 4, 2008, the GAME GT TRUCK service mark was issued to The Game Truck, LLC, and subsequently conveyed to Complainant in April 2010. On July 10, 2012, the GAME TRUCK service mark was issued to Complainant.
The Domain Name was registered on May 12, 2005, and purchased by Respondent from a prior owner on May 3, 2012.
5. Parties’ Contentions
Identical or Confusingly Similar to a Trademark:
The Complaint is based on Complainant’s rights in its two service marks, GAME TRUCK and GAME GT TRUCK. Complainant asserts that it has been continually using the GAME TRUCK mark in connection with its services since at least February 2007. Specifically, the GAME TRUCK mark has appeared on the outside of each of Complainant’s Mobile Video Game Theaters and on its website since 2007.
Since 2007, Complainant and its licensees have invested over USD 3,000,000 in expenses and services in connection with advertising and promotions using the GAME TRUCK mark. As part of this marketing campaign, Complainant placed advertisements in magazines and paid for the distribution of press releases. The GAME TRUCK mark has also been featured by Complainant at trade shows and in radio and television advertising. Complainant and the GAME TRUCK mark have also been featured in several newspapers, such as the Washington Post, The Sacramento Bee, The Arizona Republic, and The San Diego Union-Tribune. In 2010, Entrepreneur magazine named Complainant a “hot startup” and listed Complainant in the magazine’s “Franchise 500” in 2012. In 2010, Complainant was featured on the Rachel Ray Show on CBS, and in 2009, it featured on National Public Radio. Complainant accordingly states that it acquired common law trademark rights in the GAME TRUCK mark several years before its 2012 registration of the mark.
On May 5, 2012, Respondent registered the Domain Name, which is identical to Complainant’s GAME TRUCK mark. Moreover, the Domain Name is similar to Complainant’s GAME GT TRUCK mark and confusingly so because the dominant thrust of the mark is to convey to the reader the name “GameTruck” and this concept makes up the entirety of the Domain Name. The fact that the service mark adds “GT” – a reference to Complainant’s initials – does not distract from the thrust of the mark.
No rights or legitimate interests in the Domain Name:
Complainant is not aware of Respondent having any legitimate rights to the use of the GAME TRUCK mark. Complainant states that Respondent is using the site linked to the Domain Name for the purpose of promoting a direct competitor of Complainant named “Games Go2U.” Complainant has no relationship with Respondent or Games Go2u and has never authorized Respondent or Games Go2U to use the Domain Name. Moreover, Games Go2U has never been known as “GameTruck” or marketed itself in the industry or to customers under the name “GameTruck.” Complainant states that Games Go2U has its own website at ‘’www.gamesgo2u.com’’. This site and the site linked to the Domain Name are identical in every respect. The websites also incorporate the GAME TRUCK mark in a slogan – “The Ultimate Game Truck Franchise” – in prominent text. Accordingly, the only reasonable conclusion is that Respondent is using the Domain Name to unfairly compete with Complainant by attempting to confuse and divert Complainant’s customers to another company. This is not a legitimate use of the GAME TRUCK mark.
Complainant has indicated that actual customer confusion has occurred. A customer recently attempted to contact Complainant through the site linked to the Domain Name after seeing one of Complainant’s trucks in a parking lot. The site linked to the Domain Name diverted the customer away from Complainant. Using information from the site linked to the Domain Name, the customer wound up reaching Rolling Video Games and booked a party. The customer only found Complainant after Rolling Video Games unilaterally cancelled the customer’s party. Complainant stepped in and saved the party.
Domain Name was Registered and is being Used in Bad Faith:
Complainant believes that Respondent registered and is using the Domain Name in bad faith. Paragraph 4(b)(iii)-(iv) of the Policy provides that evidence of bad faith includes circumstances indicating that a domain name was registered primarily for the purpose of disrupting the business of a competitor, or that a domain name is used by the respondent in an intentional attempt to attract, for commercial gain, Internet users by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of respondent’s web site or location or of a product or service. Such circumstances are present here.
Complainant alleges that Respondent was aware of Complainant’s service marks prior to registering the Domain Name. The Domain Name was registered by Respondent on May 5, 2012. Respondent is associated with, if not an owner of, Games Go2U. No later than 2010, Games Go2U allegedly changed its name to Rolling Video Games after it was accused of trademark infringement by a competitor named Games 2U. However, it appears that Games Go2U still operates and/or does business under the Games Go2U name, as evidenced by the website at the Domain Name. Evidence of the connection between Games Go2U and Rolling Video Games is also publicly available. For example, the Games Go2U business plan is currently available on Rolling Video Games’ website. Respondent also confirmed his association with Rolling Video Games and Games Go2U during a previous trademark dispute with Complainant.
On March 26, 2010, Complainant sent Respondent a letter concerning Rolling Video Games’ alleged infringement of Complainant’s trademarks. The letter specifically informed Respondent of Complainant’s ownership of the GAME GT TRUCK and GAME TRUCK marks and other related marks. The letter also demanded that Rolling Video Games cease and desist numerous instances of infringement of Complainant’s marks, including the use of the GAME TRUCK mark on its website. On April 5, 2010, Respondent responded by stating that “we do not intend to change our business practices.” Respondent’s response acknowledges that Rolling Video Games was formerly known as Games Go2U. Accordingly, Respondent was well aware of Complainant as of 2010 at the latest, and consciously disregarded Complainant’s trademark rights when he registered the Domain Name on May 5, 2012. In September 2012, complainant’s representative contacted Respondent to inquire about purchasing the Domain Name. Respondent said that he would get back to Complainant with a price. During a September 13, 2012, telephone conversation, Respondent informed Complainant’s representative that Respondent decided to hold onto the Domain Name. Complainant then informed Respondent that it had retained counsel and would initiate legal proceedings.
Complainant contends that Respondent registered the Domain Name to disrupt Complainant’s business and to divert its customers to its Games Go2U business. As discussed above, the site linked to the Domain Name and the site at ‘’www.gamesgo2u.com’’ are identical. Respondent’s registration strategy has the same effect as re-directing Complainant’s customers to GamesGo2U and has resulted in actual customer diversion. It is well settled that such a practice constitutes bad faith use and registration of a domain name. The fact that Games Go2U sells the same service as Complainant and is thus likely to benefit from diverting (potential) customers of Complainant further supports a finding of bad faith. Games Go2U and Respondent are well aware of Complainant’s good name and successes and are now attempting to improperly benefit from using Complainant’s service marks. This deliberate attempt to confuse Complainant’s customers must be put to an end.
Complainant asserts that Respondent’s bad faith is also supported by the fact that the website ‘’www.gamesgotoyou.com’’ is identical to ‘’www.gamesgo2u.com’’ and actually re-directs visitors to ‘’www.gamesgo2u.com’’. With these domains in hand, there was simply no purpose for Respondent to register the Domain Name other than to wrongly interfere with Complainant’s business, take advantage of Complainant’s good name, and divert its customers. In accordance with paragraph 4(i) of the Policy and for the reasons described above, Complainant requests that the Domain Name be transferred to it.
Respondent contends that this is a case of an overreaching competitor and trademark bully attempting to gain a monopoly on a common term used by competitors and the public alike, to identify vehicles that contain gaming systems, i.e., game trucks. Respondent asserts that it is hard to argue (although Complaint did just that before the trademark examiner) that “game truck” is anything but a generic term.
The Domain Name incorporates the generic term “game truck,” which is commonly used in the industry to refer to the obvious: a game truck. Across the game truck industry, businesses refer to their vehicles as “game trucks” and many use “game truck” directly in their domain name, business name, and logos.
Respondent contends that throughout the industry Complainant is known as GAME GT TRUCK. Even today, Complainant’s trucks, website (located at the domain name <gametruckparty.com>), and promotional materials are emblazoned with the GAME GT TRUCK mark, not the generic term “game truck” or the alleged word mark GAME TRUCK standing alone. Therefore, as more fully set forth below, under the totality of the circumstances, this is a case of reverse domain hijacking and there is simply no basis for transferring the Domain Name to Complainant.
Respondent explains that it began operating its game truck business in October 2007, and purchased the Domain Name from its prior owner after it was offered for sale by Domain Advisors (as broker). Respondent has a legitimate interest in the Domain Name and there is absolutely no evidence of bad faith registration or use. Because Respondent purchased the Domain Name with the intent to use, and has used, it in connection with the bona fide offering of services in connection with its obvious generic meaning (used widely across the industry and adopted by the public to refer to gaming trucks), and without intent to target Complainant, the claim should be denied. Respondent purchased the Domain Name because of its common third-party use and generic meaning. This common use by the public and competitors (including those that incorporate “game truck” directly into their domain names) supports Respondent’s claim and its rights to the Domain Name. It also supports the fact that Respondent did not engage in bad faith registration and use.
Respondent explains that in October 2007, like many other companies it started its own game truck business operating under the names “Gamesgo2U.com” and “RollingVideoGames.com”. Respondent has continued to operate its game truck business since 2007 and expanded its operations every year. Respondent is a franchise that has grown to 58 independent locations throughout the United States, Canada, and Africa. Respondent has continually referred to its services and gaming trucks as “game trucks” long prior to Complainant’s April 27, 2011, filing date for its trademark. Sometime in April or May 2012, Respondent received an email from a broker with Domain Advisors advising that the Domain Name was available and for sale from its prior owner. Respondent thought the Domain Name would be an excellent source for direct type-in traffic and an excellent generic domain for its business. Soon thereafter, Respondent contacted the owner of the Domain Name and engaged in negotiations to purchase it. Respondent purchased the Domain Name from its prior owner on May 3, 2012, for a significant sum. Respondent’s sole reason for purchasing the Domain Name was because it is a generic “.com” domain that relates directly to its business of mobile game truck parties, and it believed that anyone was entitled to register a domain name like the Domain Name, <gametruck.com>, which describes Respondent’s business.
Respondent states that it did not register the Domain Name with Complainant’s trademark in mind and had no knowledge of Complainant’s alleged trademark. Respondent states that he had knowledge of Complainant as GAME GT TRUCK, and its web site at <gametruckparty.com> and as a competitor in the industry.
Respondent asserts that the game truck industry has continually expanded since 2007, and the term “game truck” is commonly used to describe a business for hire that provides a mobile gaming environment in a truck – a “game truck.” Many third party competitors that use the term “game truck” directly in their name include but are not limited to the following competitors:
People commonly refer to Respondent’s trucks and competitor trucks and services by the plain words “game truck.” Respondent asserts that it did not register the Domain Name to prevent Complainant from owning a domain name incorporating its trademark. After Respondent purchased the Domain Name, Complainant contacted Respondent and asked to buy the Domain Name. During two phone conversations, Respondent advised Complainant that it did not wish to sell the Domain Name and that it was evaluating how the Domain Name was performing for its business.
No Enforceable Rights to a Trademark Identical or Confusingly Similar to the Domain Name:
Respondent contends that even though Complainant was granted a trademark, its GAME TRUCK mark is generic because it designates the exact service that Complainant and its competitors provide – a game truck for children’s parties. The public and competitors use “game truck” to refer to all game trucks. The UDRP is not designed to preclude use of generic terms. If there is significant public and competitor use in a generic sense, this is strong evidence the term should retain a generic legal status. This principle follows the reasoning that no matter how much money and effort the user of a generic term has poured into promoting the sale of its merchandise and what success it has achieved in securing public identification, it cannot deprive competing manufacturers of the right to call an article by its name. According to Respondent, the issue before this Panel exemplifies why a generic name of a product or service can never function as a trademark. A term should be considered generic when its principal significance to the public is to indicate the product or service itself, rather than its source.
Respondent also argues that Complainant’s trademark appears to have been granted under false pretenses. Respondent submits that Complainant’s newly registered trademark should never have been granted. “Game truck” is a generic term as used by Complainant and many others for trucks containing games. Complainant conveniently ignores that its brand and its original design mark is GAME GT TRUCK. Complainant was specifically required to disclaim any rights to the use of “game” and “truck” apart from the mark. Complainant applied for a second mark, GAME TRUCK, and it sought to overcome an United States Patent and Trademark Office (“USPTO”) Office Action by relying on use of its original design mark GAME GT TRUCK with the disclaimed terms. Complainant argued to the USPTO’s trademark examiner that it continually used the mark “game truck,” even though it was really using its brand, GAME GT TRUCK, which is a trademark that expressly disclaims any exclusive right to the terms “game” and “truck.” Respondent urges that such an argument flies in the face of logic and is an abuse of the trademark system. Complainant could never have been awarded its original trademark without the term “GT,” and should not have been awarded the second mark, GAME TRUCK.
Respondent states that third party use of the terms “game truck” is obvious and militates strongly against a finding that Complainant is exclusively known in the marketplace by such a generic term. Indeed, it would be preposterous to claim that no one is allowed to refer to a “game truck” or use the generic term when referring to their game trucks. Under the right factual circumstances, a Panel may question the validity of a registered trademark for purposes of determining a Complainant’s rights under the UDRP. Respondent argues that genericness, if established, will defeat a claim of trademark rights even in a mark which is the subject of an incontestable registration.
According to Respondent, under the facts presented the Panel is free to conclude that Complainant’s trademark is generic for purposes of the UDRP and to deem it unenforceable under the Policy. It is especially warranted here, where the trademark was granted based on what appears to be misrepresentations, through affidavits, concerning Complainant’s exclusive use of the generic term “game truck” and the lack of such use by competitors. Accordingly, because Complainant’s mark is generic and commonly used by its competitors and consumers alike to refer to the services provided, it should have no enforceable trademark rights under the Policy. The Complaint must, therefore, be dismissed. Alternatively, if the Panel accepts Complainant’s trademark registration for purposes of satisfying paragraph 4(a)(i) of the Policy, the alleged generic or descriptive nature of the term used in a Domain Name is highly relevant to assessment of rights, interests and bad faith sections below. Therefore, the Complaint should be denied on those bases as well.
Respondent has Rights and a Legitimate Interest in the Domain Name:
Respondent asserts that the registration of generic domain names, such as <gametruck.com>, ipso facto establishes Respondent’s legitimate interest, provided the Domain Name was not registered with a trademark in mind. In cases such as this, where a Domain Name consists of generic words or a descriptive term, the dispositive factor is whether a respondent registered and is using it to describe his product/business or to profit from the generic value of the word without intending to take advantage of a complainant’s rights in that word.
Here, Complaint does not have exclusive rights to the generic term “game truck.” Moreover, the well documented third-party generic use of the term supports Respondent’s claim that it purchased and is using the Domain Name because of its generic value. Therefore, Complainant cannot prove Respondent’s registration and use targeted Complainant. Moreover, Respondent has provided testimony that it had no knowledge of Complainant’s alleged trademark, but rather knew Complainant (as it holds itself out) under the GAME GT TRUCK brand and by its domain name <gametruckparty.com> (like so many other competitors that incorporate “game truck” in their domains). Even today, Complainant’s own materials clearly brand itself exclusively as GAME GT TRUCK (emblazoned on its website, its promotional materials, and its trucks), not as “game truck.” Considering Complainant had existing trademark rights and exclusively used GT (and the GAME GT TRUCK design) as its brand, Respondent would not have known that Complainant was purportedly seeking to obtain a trademark for “game truck.” Complainant has not provided, and cannot provide, any evidence that Respondent targeted Complainant and/or that “game truck” is anything but a commonly used generic term.
Under the Policy, legitimate interests in a domain name may be demonstrated by showing that before any notice of this dispute, respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. It is clear that Respondent is using a generic domain in connection with its commonly understood public meaning – namely game trucks. Respondent only uses the term “game truck” in a generic sense and therefore is not targeting Complainant. Accordingly, Respondent has demonstrated that it has rights and a legitimate interest in the Domain Name and the Complaint must be dismissed.
Domain Name was not Registered or Used in Bad Faith:
Respondent contends that there is no evidence of bad faith registration or use of the Domain Name. Respondent registered the Domain Name simply because it incorporated a generic industry term that became available when its prior owner offered it for purchase. This is not a case of a cybersquatter looking for trademarks upon which to prey. To the contrary, Respondent, like most of its competitors, has a genuine interest in promoting its business with a generic term. Registration of domain names in this manner not only fails to support a finding of bad faith registration, it negates such a finding. The acquisition of a domain name previously registered and available to register anew raises the presumption that it is available and can be registered in good faith.
Further, Respondent states that absent specific proof of intent to profit from Complainant’s mark, bad faith registration cannot be established. Here, there is no evidence that the Domain Name represented anything but a generic domain name for a common industry term.
In addition, Respondent states that the use of a privacy service does not constitute bad faith. Privacy services generally are recognized to perform a legitimate function by shielding registrants from “spam” as a result of their contact details being made publicly available on the WhoIs database. Respondent was not “hiding” because it was obvious from the website how it could be contacted. Accordingly, the use of a privacy service is not bad faith. Therefore, because Complainant has failed to establish that Respondent registered or used the Domain Name in bad faith.
Reverse Domain Name Hijacking:
Respondent contends that there is absolutely no basis for Complainant’s claim and Complainant should have known that before filing its Complaint. Complainant’s own materials clearly brand itself as GAME GT TRUCK, not “game truck.” Even at the time of filing the Complaint, Complaint’s trucks and promotional materials use the GAME GT TRUCK design mark. As such, the public knows Complainant by the GT brand and not by its alleged generic use of “game truck.”
Respondent states that Complaint knew when it filed the Complaint that it could not prove bad faith registration, an essential element of the Policy. Complainant has filed this Complaint to hijack the Domain Name from its rightful owner and gain exclusive use of a generic industry term. This claim is not only an abuse of the Policy, but it also represents an abuse of the trademark system. The fact that Complainant obtained its GAME TRUCK trademark under allegedly misleading circumstances confirms that it should not be rewarded in this action. Complainant is hoping the Panel will not pay attention to the facts and feel compelled to rule in its favor because it has presented a trademark registration. Under these unique circumstances, this is an abuse of the Policy and warrants a finding of reverse domain high jacking.
In summary, Respondent urges that because Complainant knowingly brought forth a case with no basis, using a trademark that was granted under a questionable set of facts, the Panel should find that Complainant has abused these proceedings and issue a decision finding that Complainant has engaged in reverse domain name hijacking.
C. Supplemental Filings:
Complainant submitted a supplemental filing making several points, as follows:
– This is not an appropriate forum for attacks on the enforceability of Complainant’s service marks; such arguments should be (but have not been) made to the United States Patent and Trademark Office.
– Complainant actively polices and enforces its GAME GT TRUCK and GAME TRUCK marks. Entities and individuals using these marks without authorization spring up from time to time and Complainant has successfully resolved several past instances of unauthorized use of the marks. Unfortunately, doing so does not prevent new instances from springing up. As a consequence, Complainant is currently aware of several instances of entities or persons using the GAME TRUCK marks without authorization. Complainant is in the process of resolving these instances of unauthorized use, just as the present proceeding is part of the process of resolving Respondent’s unauthorized use of the marks.
– Complainant refers to “Go Big Game Truck” as an instructive example of a competitor’s use of game truck. On January 17, 2012, Complainant and one of its franchisees, EuCo LLC, commenced a trademark infringement action in Texas against Tammy Frazier, d/b/a “Go Big Game Truck.” The parties agreed to settle the action on December 13, 2012. Pursuant to the settlement agreement, Frazier agreed “not to use the words ‘GameTruck’ or ‘Gametruck”‘ in her business, including her domain names. Frazier also agreed to change the name of her business.
– Complainant also refers to “Ultimate Game Truck” as an example of “competitor use” of “game truck.” In August 2012, Complainant became aware of and protested Ultimate Game Truck, LLC’s application to register ULTIMATE GAME TRUCK as a service mark. On December 12, 2012, the USPTO issued an office action refusing the application because of a likelihood of confusion with Complainant’s GAME TRUCK marks.
Respondent submitted a reply to Complainant’s supplemental filing, asserting the following points:
– Respondent objects to this late submission. However, in the event that the Panel considers the submission, Respondent notes that Complainant’s supplement to the record does nothing to change the fact that Complainant obtained its trademark under questionable circumstances. Curiously, the “supplement” seems to prove Respondent’s claim that the trademark was granted based on what appear to be misrepresentations concerning Complainant’s exclusive use of the generic term “game truck” and the lack of such use by competitors.
– While Complainant seeks to prove its rights, the additional submission further confirms that Complainant’s GAME TRUCK mark is really a generic term and subject to significant third-party industry use. Moreover, and perhaps most importantly, the additional submission bolsters Respondent’s claim that it has a legitimate interest in the Domain Name and that it registered it in good faith. Complainant’s supplement shows that other parties view “game truck” a generic term and that it is subject to widespread use wholly unrelated to Complainant. Thus, Respondent reasserts here, the argument that it has a legitimate interest in the Domain Name and did not register or use it in bad faith.
– The outcome of this claim should not be decided on a misguided decision by the USPTO. The record demonstrates that “game truck” is a generic, industry term known by the public to refer to game trucks and not to exclusively identify Complainant. To the contrary, even if the Panel accepts Complainant’s rights under 4(a)(i) of the Policy, the facts demonstrate that Respondent should prevail under both paragraphs (4)(a)(ii) and 4(a)(iii) of the UDRP, and the Complaint should be denied.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel 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. Under paragraph 4(a) of the Policy, Complainant must prove each of the following:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4(a)(iii) of the Policy are evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) of the Policy sets out three illustrative circumstances, any one of which if proved by Respondent may be evidence of Respondent’s rights to or legitimate interests in the Domain Name for the purpose of paragraph 4(a)(ii) above.
A. Identical or Confusingly Similar
Complainant is required under paragraph 4(a)(i) of the Policy to prove that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights.
The Panel finds that the Domain Name <gametruck.com> is identical to Complainant’s GAME TRUCK service (word) mark, entirely incorporating the terms while adding the “.com” top-level domain, which does not change the overall impression. One might consider whether the Domain Name is also arguably confusingly similar to Complainant’s GAME GT TRUCK mark if only the words and two-letter term are considered;
however, this mark is registered as a design mark as presented below:
Because the Panel finds that the Domain Name is identical to Complainant’s GAME TRUCK word mark as stated above, the Panel does not reach the question of whether the Domain Name is confusingly similar to Complainant’s GAME GT TRUCK design mark. The Panel does question whether Complainant’s United States trademark registration for the word mark, GAME TRUCK, should have been granted in view of the generic character of this phrase in the game truck industry. The Panel is persuaded by Respondent’s evidence that the term is generic and descriptive of the industry and the services provided by those parties in the industry. This Panel, however, is not in position to reassess the work of the USPTO and such a determination is not necessary to the outcome of this case.
Accordingly, the Panel concludes that Complainant has established this element of the Policy.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the Domain Name.
A complainant is normally required to make out a prima facie case that respondent lacks rights or legitimate interests. Complainant stated that it is not aware of Respondent having any legitimate rights to the use of the GAME TRUCK mark, and that Respondent is using the site linked to the Domain Name for the purpose of promoting a direct competitor of Complainant named Games Go2U. Complainant has no relationship with Respondent or Games Go2u and has never authorized Respondent or Games Go2U to use the Domain Name. Further, Complainant has indicated that actual customer confusion has occurred, with Respondent’s Domain Name having diverted a customer away from Complainant. Complainant’s asserts this is not a legitimate use of the GAME TRUCK mark.
In response to these allegations, Respondent has made several submissions. Respondent has argued that in cases such as this, where a Domain Name consists of generic words or a descriptive term, the dispositive factor is whether a respondent registered and is using the disputed domain name to describe his product/ business and to profit from the generic value of the words without intending to take advantage of a complainant’s rights in the words. The Panel agrees with this view. As noted above, the Panel finds that the phrase “game truck” is descriptive of the industry in which Complainant and Respondent operate. Further, the evidence before the Panel is that Respondent has been using the Domain Name, even before any dispute arose, in connection with a legitimate business. Respondent’s website (linked to the Domain Name) does not imitate Complainant’s website, and Complainant’s own materials brand Complainant as GAME GT TRUCK (rather than just GAME TRUCK), using Complainant’s design mark described above.
Respondent has provided testimony that it had no knowledge of Complainant’s GAME TRUCK trademark, but rather knew Complainant under the GAME GT TRUCK brand and by its domain name, <gametruckparty.com>, just as other competitors incorporate “game truck” into their domains.
Finally, Respondent has submitted evidence of widespread third party use of the phrase “game truck,” which supports Respondent’s claim that the term is a generic description of the industry and services provided by those who operate in it, and that Respondent is using the Domain Name for its generic value. The Panel also observes that the Domain Name was first registered in May 2005, even though it was subsequently purchased by Respondent from a prior owner on May 3, 2012. As it could not have been an identifier of goods or services in 2005 because there was no one who then made what we now know as game trucks, the expression in 2005 must have had a generic or similar meaning, or been just two dictionary words joined together. This further strengthens Respondent’s argument that the expression is a generic one as it always was (or at least as far back as 2005).
On the balance of the probabilities, therefore, the Panel finds that Respondent has successfully rebutted Complainant’s claim that Respondent has no rights or legitimate interests in the Domain Name. The Panel finds that Respondent has been using the Domain Name in a manner that is legitimate and consistent with the generic meaning of the term.
For all these reasons, the Panel finds that Respondent has established its rights or legitimate interests with respect to the Domain Name under paragraph 4(a)(ii) of the Policy, and the Complaint must be dismissed.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that Complainant must, in addition to the elements set out above, further demonstrate that the Domain Name has been registered and used in bad faith.
As discussed above, the Panel is persuaded that Respondent did not target Complainant when it registered the Domain Name; that the phrase “game truck” is descriptive of the industry in which Complainant and Respondent operate; and that Respondent registered and has used the Domain Name in a manner consistent with its generic, descriptive meaning.
For all of the above reasons, the Panel determines that Complainant has failed to prove that the Domain Name was registered and has been used in bad faith.
D. Reverse Domain Name Hijacking
In view of the circumstances of this case, the Panel determines that Complainant’s actions do not constitute reverse domain name hijacking. As the owner of two service marks issued by the USPTO, Complainant might understandably (at least to a lay person) have felt aggrieved and justified in trying to defend its marks by bringing this Complaint. The careful analysis in this case demonstrates that the Panel’s decision was not obvious from the outset.
For the foregoing reasons, the Complaint is denied.
Christopher S. Gibson
The Hon Neil Brown Q.C.
Date: January 12, 2013