Social Point, S.L. of Barcelona, Spain, just lost it attempt to grab the domain name socialpoint.com who was represented by Erika L. Hengst, Esquire of Florida
The domain name SocialPoint was registered on August 30, 2001.
The Complainant is the developer of social games such as “Social Empires”, “Dragon City”, “Monster Legends” and “Social Wars” that can be played through the website “www.facebook.com” on streaming or downloaded to be played with iOS and Android apps.
The Complainant is the owner of the following trademark registrations for SOCIAL POINT (word and design): Spanish trademark No. 2861768, registered on June 22, 2009, in class 41; Community trademark No. 1137571, registered on July 6, 2012, in class 41; and United States trademark No. 4394443, registered on July 6, 2012, in class 41.
The Complainant is also the owner of the domain name <socialpoint.es>, registered on September 30, 2008.
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating any of the circumstances listed at paragraph 4(c) of the Policy.
In the case at hand, it is undisputed that the Complainant did not provide any authorization to the Respondent to register and use its trademark as a domain name.
According to the records, the disputed domain name was in fact registered by the Respondent in 2001, several years before the foundation of the Complainant and the registration of the Complainant’s trademarks.
In addition, the Respondent appears to have actually registered the disputed domain name because of its generic or dictionary term since it has engaged since 1998 in the registration of domain names constituted by the word “social” in addition with other generic terms, building a domain name portfolio which counts today a number of “social- related domain names” (such as <socializing.com> and <socialcenter.com>, registered in 1998, <socialbar.com>, registered in 2000, <socialagent.com>, registered in 2003, <socialparty.com> and <socialbrokers.com>, registered in 2005, <socialchallenge.com>, registered in 2006).
The Panel finds that – since: i) the disputed domain name is constituted by generic terms, ii) was registered in 2001 several years before the foundation of the Complainant and the registration of the Complainant’s trademarks, iii) no formal communication was ever sent by the Complainant prior to the filing of the present Complaint highlighting the existence of the registered trademark and/or the presence on November 20, 2013 of links referring to the Complainant’s services on the corresponding web page and iv) in light of the fact that the Respondent is engaged since 1998 in the registration of domain names constituted by the word “social” in addition with other generic terms – on balance, the Complainant has not discharged its burden of showing that the Respondent has no legitimate interest in respect of the disputed domain name.
In the case at hand, the Complainant concedes that the Respondent did not register the disputed domain name in bad faith, as it acquired the disputed domain name in 2001, several years before the Complainant came into existence. However, the Complainant submits that the registration date for the purpose of assessing the bad faith registration requirement must be the last renewal date, which occurred on August 21, 2013.
Based on the records, the Panel finds that the Complainant has failed to provide sufficient evidence to demonstrate that the Respondent has, at any time after registering the disputed domain name in 2001, held and renewed the disputed domain name registration in bad faith. Indeed, the Respondent has denied to have been aware of the Complainant’s trademark prior to the notification of the Complaint and has proved that it has built a portfolio of several “social-related domain names.
In view of the above and considering the generic nature of the words constituting the disputed domain name, the Panel finds that the disputed domain name was registered and is, on balance, being maintained by the Respondent in light of its inherent value.
The fact that the disputed domain name was redirected, for an undefined period of time (as the Complainant has submitted only a screenshot dated November 20, 2013 and the Respondent has stated that it was only for a “short period” / “few occasions”), to a web page featuring also links related to the Complainant’s online games, is not sufficient, in view of the circumstances of the case, to demonstrate that the Respondent has registered and used the disputed domain name in bad faith.