BIGFISHGAMES.NET Ordered Transferred to Big Fish Games, Inc.

In the case of Big Fish Games, Inc. v. Download Soft, the National Arbitration Forum ruled that that the domain name bigfishgames.net be TRANSFERRED from Respondent to Complainant.

Paragraph 4(a) of ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that the Complainant prove each of the following three elements to obtain an order that a domain name should be canceled 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 this case, the Administrative Panel (the "Panel") found that it is not necessary for Complainant to hold a registered trademark in order for it to acquire rights in its BIG FISH GAMES mark. Common law rights in a mark are sufficient to satisfy Policy ¶ 4(a)(i). Additionally, the Panel found that the Complainant held registrations in both Chile and Hong Kong. Such registrations were therefore deemed sufficient to establish Complainant’s rights in the mark. The question of Complainant’s rights in its mark was therefore found in favor of the Complainant.

Respondent also did not deny that its domain name was identical to Complainant’s BIG FISH GAMES mark because the domain name uses Complainant’s mark in its entirety and merely adds to it the generic top-level domain (“gTLD”) “.net”. The Panel correctly held that the addition of a gTLD is not a distinguishing difference under Policy ¶ 4(a)(i). Accordingly, the Panel found Policy ¶ 4(a)(i) had been satisfied.

The Panel then sought to determine whether there was any basis for concluding that Respondent had rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c). The Panel first noted that Complainant alleged that Respondent was using the domain name to redirect Internet users to Respondent’s website selling Complainant’s goods and services as well as competing goods and services. Respondent’s use of the disputed domain name to sell Complainant’s goods and competing goods and services was found not to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Additionally, Respondent had offered no evidence suggesting that Respondent was commonly known by the domain name. Respondent’s WHOIS information identified the Respondent as “Download Soft”. Therefore, Respondent failed to establish rights or legitimate interests in the domain name under Policy ¶ 4(c)(ii).

On the question of whether the Respondent had registered the domain name in bad faith, the Panel noted that there was no dispute that Respondent was using the domain name to redirect Internet users to Respondent’s website, which sells both Complainant’s goods and services and competing goods and services. Because Respondent’s domain name was substantively identical to Complainant’s BIG FISH GAMES mark, Internet users could become confused as to Complainant’s possible affiliation with Respondent’s website. The Panel presumed that Respondent profited from that confusion through the sale of goods and services. As a result, Respondent's use of the domain name constituted bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(iv).

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concluded that the relief requested must be GRANTED, and therefore the domain name was ordered TRANSFERRED.