Game Truck Licensing, LLC, of Tempe, Arizona, just lost a UDRP on the domain name GameTruck.com in a decision handed down by the WIPO Arbitration and Mediation Center (WIPO)
The decision is interesting because although the domain name was originally registered before the complaintant’s trademark was applied for, the domain holder just bought the domain name through DomainAdvisors.com in 2012, for a “for a significant sum”
Here are the relevant facts and findings by the three member panel:
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.
“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 GTTRUCK, 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 brandand its original design mark is GAME GTTRUCK. 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.
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.
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. T
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.
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.
However the panel stopped short of finding Reverse Domain Name Hijacking (RDNH)