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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Federation of Gay Games, Inc. v. Cary H. Hodgson and Gary Scanlon
Case No. D2000-0432
Complainant is The Federation of Gay Games, Inc., a California Corporation, with its principal place of business at 584 Castro Street, San Francisco, California, United States of America.
The Respondents are Mr. Cary H. Hodgson and Mr. Gary Scanlon, both with declared mailing address c/Isla de Cuba, 17 bajos, 08870, Sitges, Barcelona, Spain.
2. Domain Name and Registrar
The domain name at issue is "gaygames.com". The Registrar is Network Solutions, Inc. ("the Registrar"), 505 Huntmar Park Dr., Herndon, Virginia, USA.
3. Procedural History
The WIPO Arbitration and Mediation Center (henceforth "The Center") received the Complaint in hardcopy on May 15, 2000, and on May 17, 2000, by e-mail. The Complainant paid the required fee. On May 17, 2000, The Center sent an Acknowledgement of Receipt of the Complaint to the Complainant.
On May 17, 2000, The Center sent to the Registrar a Request for Verification of registration data. NSI’s Verification Response was received by the Center on May 19, 2000, confirming they are the registrar for the domain name in question, "gaygames.com", which is registered in the Respondents’ name.
On May 19, 2000, the Center sent a Notification of Complaint to the Respondents. The formal date of the commencement of this proceeding is May 19, 2000.
On June 7, 2000, The Center acknowledged receipt of the Response sent by the Respondents.
On June 14, 2000, The Center appointed the Administrative Panel.
4. Factual Background
Complainant provided copies (exhibits 3 and 4 of its Complaint) of certificates for trademark registrations issued by the United States Patent and Trademark Office and the Canadian Intellectual Property Office, both concerning trademark GAY GAMES. While the US registration refers to specifically "entertainment services, namely, organizing and conducting sporting events" from international class 41, the Canadian registration concerns a larger scope, embracing not only these services, but also an extensive list of goods, including apparel, jewelry, games, inter alia.
The Canadian registration was granted on February 20, 1997, and the United States registration dates July 27, 1999, resulting from an application filed on February 2, 1997. It is indicated in the United States certificate that the mark is in use since June 1, 1981.
Respondents obtained the registration for the subject domain name on September 30, 1999. Respondents used the domain name to promote sexually explicit sites until April 20, 2000. As of April 21, 2000, the site bore solely an indication that the subject domain was for sale, indicating the price as being US$ 1,000,000.00. Further the domain name led to a site promoting the sale of gay games, as well as on-line gay games.
5. Parties’ Contentions
Complainant contends that the domain name "gaygames.com" is identical to and confusingly similar with their registered trademark GAY GAMES, used since 1981 in connection with the world quadrennial sporting and cultural event known as "Gay Games". These events take place every four years in a different city and have so far attracted thousands of participants and millions of spectators, besides a wide journalistic coverage. The trademark GAY GAMES, directly related to the events, is licensed to several companies and is being used in connection with a carefully selected set of merchandise.
Once aware of the registration of the subject domain name, the Complainant addressed a cease and desist letter to Respondents, demanding the prompt stop of the unauthorized use of the mark and the immediate transfer of the registration of the domain to them. No response was addressed to the Complainant but on the following day the composition of the site was altered, to show the indication that the domain was for sale for the amount of US$ 1,000,000.00.
On May 1, 2000, the Complainant sent a second letter to the Respondents, whose site was then showing pictures of sexually explicit games. Respondents replied through an e-mail message, affirming to be the legal owner and registrant of the domain name and refusing an amount supposed to have been proposed by the Complainant for the assignment of the domain name.
Complainant contends that the Respondents have no rights or legitimate interest in the subject domain name and also that they have acted in bad faith. Complainant requested the subject domain name be transferred to the Complainant, in accordance with paragraph 4(b)(i) of the Policy.
Respondents allege that the subject domain name is one of a series of domain names registered by them aimed at the gay community in general. They also contend that they have obtained a copyright registration for the expression "gaygames.com", granted by the Canadian Intellectual Property Office.
According to the Respondents, if the Complainant was interested in the subject domain name, the Complainant should have registered it the same date it registered its domain name "gaygames.org. They also allege that they have been harassed with threats from the Complainant.
The Respondents state that they intend to register many more gay related domain names, in order to keep retailing gay products.
6. Discussion and Findings
The Policy, in its paragraph 4(a), determines that three elements must be present and duly proven by a complainant to obtain relief. These elements are:
i) the subject domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
ii) respondent has no rights or legitimate interests in respect to the domain name; and
iii) respondent’s domain name has been registered and is being used in bad faith.
A. Identical or confusing similarity between domain name and the Complainant’s trademark:
Regarding the first of the elements, the Panel understands that the Complainant presented competent proof to have rights on the mark GAY GAMES, which is being used as of 1981 and registered at least since 1997. Further, the Panel finds that the subject domain name "gaygames.com" is indeed identical to the trademark belonging to the Complainant, since this mark is entirely reproduced in the domain name registered by the Respondents.
Hence, the Panel concludes that the first of the elements is present in this dispute.
B. Respondents’ rights or legitimate interests in the domain name:
The Panel understands that the expression "GAY GAMES" is indeed linked to the Complainant, since it has been promoting events under this trademark for almost 20 years.
In this regard, the allegation of the Respondents, that their intention is basically to register several domain names containing the word "gay" to be used for retailing goods to the gay market, does not bring any evidence of their rights or legitimate interests in the subject domain name. In fact, it is quite clear that both the Complainant and Respondents have their activities directed to the gay market. Besides, this common market is aware, since 1981, of the existence of sporting and cultural events named "Gay Games". Hence, the Panel understands that the Respondents, being active in this market could not be unaware of these events and consequently of the mark that identifies them, Gay Games.
Thus, the Panel concludes that the Respondents have no rights or legitimate interests in the domain name, and the second element is present.
C. Existence of bad faith in Respondents’ registration and use of the domain name:
It is clear to the Panel that the Respondents have registered the domain name "gaygames.com" with the purpose of driving potential customers from the specific market to their site, were they provided links to several sexually explicit websites.
Besides, once summoned by the Complainant’s letter, the Respondents announced in that the domain name in question was for sale, at the extremely high amount of
Further, the Respondents changed once again the scope of their "gaygames.com" website, this time to offer to the gay market all sorts of games, namely, gay games, that could be acquired directly from them.
In addition, the Respondents applied and registered a copyright for the expression "gaygames.com" before the Canadian Intellectual Property Office on May 29, 2000, several days after the formal commencement of this Administrative Proceeding.
The Panel understands that all evidence as above shows that the Registrants obtained the registration and have been using the domain name in question in bad faith.
The Panel hence finds the third element is persent.
As outlined above, the Panel concludes that the domain name "gaygames.com" is identical to the Complainant’s registered trademark GAY GAMES; that the Respondents have no rights or legitimate interest in the domain name and that the Respondents registered and used the domain name in bad faith.
Therefore, pursuant to paragraph 4(i) of the Policy, the Panel orders that the domain name "gaygames.com" be transferred to the Complainant.
Alvaro Loureiro Oliveira
Dated: June 28, 2000