Krome Studios Pty, Ltd. v. LaPorte Holdings, Inc.

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Krome Studios Pty, Ltd. v. LaPorte Holdings, Inc.

Case No. D2004-0707

1. The Parties

The Complainant is Krome Studios Pty, Ltd., Brisbane, Queensland, Australia, represented by Cowan, Liebowitz & Latman, PC, United States of America.

The Respondent is LaPorte Holdings, Inc., Los Angeles, California, United States

of America.

2. The Domain Name and Registrar

The disputed domain name <tythetasmaniantiger.com> is registered with

NameKing.com.

3. Procedural History

The Complaint in this case was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 2, 2004.

On September 3, 2004, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification.

On September 6, 2004, iHoldings.com Inc. d/b/a DotRegistrar.com submitted to the Center that it is not the registrar for the disputed domain name. The disputed domain name had been transferred to another registrar and to the current registrant, LaPorte Holdings, Inc.

By a subsequent communication dated September 8, 2004, the Center required the relevant registrar, namely, NameKing.com, to confirm whether the disputed domain name was registered with them. On October 11, 2004, NameKing.com confirmed that the disputed domain name has been locked. Within several communications with the Center, NameKing.com submitted the required information with regard to the disputed domain name.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy, (the “Policy”), the Rules of the 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, Paragraph 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 28, 2004.

In accordance with the Rules, Paragraph 5(a), the due date for response was November 17, 2004. The Respondent did not submit any response. Accordingly on November 19, 2004, the Center notified the Respondent of its default.

On November 25, 2004, the Center appointed the Administrative Panel consisting of a single member viz., Maninder Singh.

The language of the administrative proceeding is English.

4. Factual Background

The Complainant in this administrative proceeding is Krome Studios Pty, Ltd.

The Complaint is based on the following common law mark “TY THE TASMANIAN

TIGER”. Complainant has registered the domain names <tythetasmaniantiger2.com>

and <tythetasmaniantiger2.net>. The Complainant is also the owner of trademark

applications with respect to “TY THE TASMANIAN TIGER” in several

countries including the United States of America. The disputed domain name is

<tythetasmaniantiger.com>. The Complainant has requested transfer of the

disputed domain name <tythetasmaniantiger.com>.

5. Parties Contentions

A. Complainant

The Complainant is the largest video game development company in Australia. The Complainant has developed over a dozen titles, which are shipped around the world including the United States of America. Complainant’s video games include such hits as Sunny Garcia Surfing, Extremely Goofy Skateboarding, Barbie Beach Vacation, Jimmy Neutron: Jet Fusion and the product at issue here, TY THE TASMANIAN TIGER.

The TY THE TASMANIAN TIGER video game is set in Australia and amidst an animated 3D environment featuring a wild, boomerang-wielding character named the TY THE TASMANIAN TIGER, who must free the Tasmanian Tiger population from the alternate dimension in which they are trapped. The game TY TASMANIAN TIGER was first introduced in 2002 and is sold for use on the PlayStation2, Xbox and Nintendo GameCube systems. (The packaging of PlayStation2 version of the video game featuring TY THE TASMANIAN TIGER is set out in Exhibit B to the Complaint).

Complainant’s video game and the character has achieved enormous success and popularity. The TY THE TASMANIAN TIGER has become the number one selling Australian video game of all time with sales well in excess of one million units around the world. Since its introduction, the TY THE TASMANIAN TIGER video game has generated worldwide revenues in excess of US$ 25 million.

The TY THE TASMANIAN TIGER video game also won the Australian Game Developers Award for Best Character Design and the PSM Must Buy Award in 2002. The sequel of the original TY THE TASMANIAN TIGER game was scheduled for release in October 2004.

The Complainant also announced that it has partnered with the producer of the successful “The Simpsons” and “King of the Hill” cartoons, in order to introduce television and DVD animated productions featuring the TY THE TASMANIAN TIGER character from the video game.

The Complainant, as a result of these various activities, has built up a highly valuable goodwill in the TY THE TASMANIAN TIGER name and the trademark.

The Complainant has applied to register a range of trademarks consisting of or containing the word “TY THE TASMANIAN TIGER”, in several countries worldwide such as U.S.A., Canada, Benelux, Italy, European Union and Australia. (The details of trademark applications are set out in Exhibit A to the Complaint).

The Complainant is also the registrant and owner of domain names incorporating the TY THE TASMANIAN TIGER mark, namely, <tythetasmaniantiger2.com> and <tythetasmanaintiger2.net>. The former domain name has been set up to provide an “official newsletter” relating to the TY THE TASMANIAN TIGER character and the video game sequel. (The excerpts from the “www.tythetasmaniantiger2.com” website are set out in Exhibit C to the Complaint).

It has been contended by the Complainant that the disputed domain name <tythetasmaniantiger.com> of the Respondent is identical and/or confusingly similar to Complainant’s TY THE TASMANIAN TIGER trademark.

It is submitted by the Complainant that the only difference in the disputed

domain name and the trademark of the Complainant is the deletion of the spaces

between the words “TY THE TASMANIAN TIGER” and the addition of the

generic top level domain name “.com”. The Complainant relies upon

the decision in CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO

Case No. D2000-0834, while contending that elimination of spaces between

terms is dictated by technical factors and such differences, as well as addition

of generic top-level domain name “.com”, are without any legal significance.

The Complainant further relies upon Pomellato S.p.A. v. Richard Tonetti,

WIPO Case No. D2000-0493, wherein the

addition of the generic top level domain (gTLD) “.com” after Complainant’s

trademark POMELLATO was found to be irrelevant.

With regard to the issue of Respondent’s rights or legitimate interests in the domain name as per Policy, Paragraph 4(a)(ii), it has been stated by the Complainant that the Respondent does not own a trademark or service mark registration that is identical, similar or in any way related to the disputed domain name <tythetasmanaintiger.com> or to the TY THE TASMANIAN TIGER mark.

The Complainant further states that TY THE TASMANIAN TIGER is neither Respondent’s personal name, nor is Respondent known to the public under the name TY THE TASMANIAN TIGER.

The Complainant has claimed that the Respondent is not a licensee of the Complainant, nor has it ever been authorized by the Complainant to use the TY THE TASMANIAN TIGER mark or to register the <tythetasmaniantiger.com> domain name.

The Complainant has further contended that the Respondent has not been using

the contested domain name <tythetasmanintiger.com> in connection with

bona fide offering of goods or services. The Respondent rather is using the

disputed domain name for the purpose of redirecting the visitors to the search

engine “http://dp.information.com” and thereby earning revenue from

redirected traffic. (A print out of the redirected site is attached as Exhibit

D to the Complaint). The Complainant in this regard relies upon the decision

in AltaVista Company v. Andrew Krotov, WIPO

Case No. D2000-1091, wherein it was held that the use of domain name to

direct users to other unconnected websites does not constitute a legitimate

interest in the domain name.

The Complainant states that the prior registrant of the disputed domain name,

Horoshiy Inc., is in fact the alter ego of an individual called Henry Chan,

who has been found by numerous other panels to have registered various domain

names incorporating other parties’ trademarks in bad faith. The Complainant

relies upon the recent decision in Lowen Corp. v. Henry Chan, WIPO

Case No. D2004-0430, wherein the conduct of the registrant Henry Chan/ Horoshiy

Inc. was held not to constitute a bona fide offering of goods or services giving

rise to any rights or legitimate interests, and wherein the Panel expressly

noted that Mr. Chan had attempted to transfer the domain name at issue to Horoshiy

Inc., within days of the filing of the UDRP complaint against him. The Complainant

further relied upon several UDRP decisions wherein Henry Chan/ Horoshiy Inc.

have been found to be using third parties’ recognized trademarks in order

to divert users to registrant’s own website for financial gain, see: Gannett

Co., Inc. v. Henry Chan, WIPO Case No. D2004-0117,

Microcourt Limited v. Mr. Henry Chan, WIPO

Case No. D2004-0075, Cancer Treatment Centers of America, Inc. (CTCA)

v. Henry Chan, WIPO Case No. D2003-0611,

Deloitte Touche Tohmatsu v. Henry Chan, WIPO

Case No. D2003-0584.

In order to establish the point that the domain name has been registered in

bad faith, the Complainant has averred that the Respondent registered the domain

name <tythetasmanaintiger.com> with knowledge of Complainant’s TY

THE TASMANIAN TIGER video game and the character. It is stated that the disputed

domain name was registered, the domain name <tythetasmanaintiger.com>

being identical to Complainant’s trademark, in order to divert Internet

users to Respondent’s own website. The Complainant relied upon the decisions

in BrassRing, Inc. v. JCI Technologies, Inc., NAF Case No. FA 97154 (June 8, 2001);

National Football League Properties, Inc. and Chargers Football Company v.

One Sex Entertainment Co., a/k/a chargergirls.net, WIPO

Case No. D2000-0018, while contending that the use of a domain name in order

to create a likelihood of confusion with Complainant’s trademark is itself

an evidence of bad faith.

The Complainant asserts that in several UDRP decisions involving Mr. Henry Chan,

domain names were connected to “www.dp.information.com”, the very

same address where the Respondent links the disputed domain name at issue in

this case. The Complainant relies upon the decisions in NFO Research, Inc.

v. Henry Chan, WIPO Case No. D2004-0378; Costco

Wholesale Membership Inc., Costco Wholesale Corporation v. Henry Chan, WIPO

Case No. D2004-0218; and Deloitte Touche Tohmatsu v. Henry Chan,

WIPO Case No. D2003-0584.

The Complainant contends that Respondent’s registration of a domain name

incorporating the Complainant’s trademark is part of a flagrant pattern

of bad faith conduct on the part of Horoshiy Inc./ Henry Chan and the current

registrant, LaPorte Holdings, Inc., to trade upon the goodwill of other parties’

trademarks. The Complainant relies upon several UDRP decisions wherein Mr. Chan

has been found to have registered and used domain names in bad faith, e.g.:

Microcourt Limited v. Mr. Henry Chan, WIPO

Case No. D2004-0075 and NFO Research, Inc. v. Henry Chan, WIPO

Case No. D2004-0378.

Lastly, it is contended by the Complainant that there is no legitimate entity

called Horoshiy, Inc., conducting business out of the contact information that

is provided and such information is merely being used to conceal the true identity

of the domain name registrant, Henry Chan. Furthermore, the transfer of the

disputed domain name from Horoshiy Inc., to LaPorte Holdings, Inc., constitutes

further proof of Respondent’s bad faith and ongoing efforts to conceal

true ownership of the domain name in order to protect the Respondent’s

systematic cybersquatting activities. The Complainant relies upon the decisions

in Sterling Jewelers, Inc. v. InterMos and Cosmos1, WIPO

Case No. D2002-0899; Marian Keyes v. Old Barn Studios, Ltd., WIPO

Case No. D2002-0687; and Home Director, Inc. v. HomeDirector, WIPO

Case No. D2000-0111, wherein it was held that concealment of true identity

of the respondent constitutes bad faith.

B. Respondent

The Respondent has not furnished any response to the Complaint.

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(1) That the domain name registered by the Respondent is identical or confusingly similar to a service mark or trademark in which the Complainant has rights; and

(2) That the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) That the domain name has been registered and is used in bad faith.

A. Identical or Confusingly Similar

The Panel accepts the contention of the Complainant that the disputed domain name <tythetasmaniantiger.com> is identical and/or confusingly similar to the Complainant’s TY THE TASMANIAN TIGER trademark. Though the Complainant underlines the similarity between its trademark and the disputed domain name, it can be noted that not only the trademark but even the Complainant’s domain name is almost identical to the disputed domain name. The deletion of spaces and the addition of generic top-level domain “.com” deserves to be ignored as such addition is dictated by technical factors and thus the differences are without any legal significance.

There is every possibility that the consumers world wide and also in the United States of America would relate the disputed domain name <tythetasmaniantiger.com> with the Complainant’s trademark TY THE TASMANIAN TIGER on account of confusing similarity between the Complainant’s trademark and the disputed domain name.

The Panel therefore has no hesitation in holding that the disputed domain name <tythetasmaniantiger.com> is confusingly similar to the trademark of the Complainant.

B. Rights or Legitimate Interests

The record suggests that the Respondent does not own a trademark or service mark registration which is identical, similar or in any way related to the disputed domain name <tythetasmaniantiger.com> or the TY THE TASMANAIN TIGER mark. It is also clear that TY THE TASMANIAN TIGER is not Respondent’s personal name nor is it known in the public by that name. The Panel also finds that the Complainant has neither licensed nor otherwise permitted the Respondent to use any of its trademarks or any variations thereof or to apply for or use any domain name incorporating any of those marks or any variations thereof.

The Panel also finds substance in the Complainant’s contention that the Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services. The disputed domain name is rather being used for redirecting visitors to the search engine “http://dp.information.com” and the Respondent is thereby earning revenue from redirected Internet traffic.

Further, the Panel is convinced, based on the evidence

submitted in this case, that Horoshiy Inc., is in fact the alter ego of an individual

called Mr. Henry Chan. The Complainant rightly relies upon the UDRP decisions

including the recent decision in Lowen Corporation d/b/a Lowen Sign Company

v. Henry Chan, WIPO Case No. D2004-0430,

while asserting that Horoshity Inc./ Mr. Henry Chan is simply using the Complainant’s

trademark TY THE TASMANIAN TIGER to divert the internet users to its own site

for financial gain. Finally, the transfer of the disputed domain name to the

current registrant is merely an attempt to avoid the proceeding and proof that

the Respondent does not have rights or legitimate interests in the disputed

domain name. There is evidence to suggest that LaPorte Holdings, Inc., is simply

an alter ego for Horoshiy Inc./ Henry Chan, and no evidence suggesting that

it is a legitimate business with legitimate interests.

As such the Respondent has no rights or legitimate interests in relation to the disputed domain name <tythetasmaniantiger.com>.

C. Registered and Used in Bad Faith

In light of the popularity and sales of the video game of the Complainant in several countries including United States of America, the Panel also finds merit in the contention of the Complainant that the Respondent had registered the domain name <tythetasmanaintiger.com> being fully aware of the Complainant’s considerable reputation and the fact that the Complainant is the proprietor of the famous mark TY THE TASMANIAN TIGER. The Complainant has also rightly contended that this was done in order to divert Internet users to Respondent’s own website.

The Complainant relied upon several decisions including the decision in Lowen

Corporation d/b/a Lowen Sign Company v. Henry Chan, WIPO

Case No. D2004-0430, wherein the Panel expressly noted that Mr. Chan had

attempted to transfer the domain name at issue in that case to an entity named

Horoshiy Inc., within days of the filing of the UDRP complaint against him.

The Panel agrees with these decisions and finds that the transfer of the disputed

domain name to LaPorte Holdings, Inc., was an example of bad faith (cyberflight).

The transfer occurred after notice of Complaint was given, and the domain name

remained redirected to the same, for-profit, site used by Horoshiy Inc./ Henry

Chan.

The contention of the Complainant that there may be no legitimate entities called Horoshiy or LaPorte Holdings conducting business and such information is merely being used to conceal the true identity of the domain name registrant, Henry Chan, also deserves to be accepted.

The Panel is, therefore, of the opinion that the disputed domain name was registered

and is being used in bad faith.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel decides that the domain name <tythetasmaniantiger.com> should be transferred to the Complainant.

Maninder Singh

Panelist

Dated: December 12, 2004