COMPLAINANT
The Complainant submits that the disputed domain name is identical to Complainant’s”SFGAME” mark.
The Complainant claims that more than 40 million players have signed up worldwide to play “SFGAME” and that its’ revenues have reached an 8 digit volume of sales per year. It says that the Respondent does not have any rights or legitimate interests in the disputed domain name as it was inactive and unused until three weeks ago.
The Complainant further claims that the disputed domain name has been registered and is being used in bad faith by the Respondent as it confuses Internet users into thinking that the disputed domain name has some affiliation with, or resolves to the official website, of the Complainant’s game. The Complainant also alleges that the disputed domain name resolves to a website featuring Google ads and that the Respondent has been remunerated by Google accordingly.
The Complainant claims that the Respondent installed a forwarding search engine recently without any connection to the disputed domain name.
Finally, Complainant alleges that it has tried unsuccessfully to contact the Respondent since 2009 in order to acquire the disputed domain name.
RESPONDENT
The Respondent contends that the disputed domain name is neither identical nor confusingly similar to a trade mark for the purposes of the Policy as the Complainant does not have any registered trade mark but only applications and that it has failed to provide adequate proof of usage and rights under the Policy. The Respondent stresses that the disputed domain name was registered in August 2007, well prior to the development of Complainant’s game and that the Complainant’s other domain names incorporating “SFGAME” all point to a website for the game “Shakes & Fidget”. The Respondent adds that there is no mention of “SFGAME” anywhere on the Complainant’s website except in these domain names. The Respondent contends that the use of “SFGAME” in the disputed domain name does not provide the Complainant with trade mark rights.
The Respondent claims that the Complainant owns no registered trade mark for “SFGAME” and has merely made a couple of pending trade marks application in Europe but not in the United States. It notes that it does however have trade mark registrations for its “SHAKES & FIDGET” mark.
The Respondent states that the Complainant has no legitimate interest in the disputed domain name as it does not have a registered trade mark and has not demonstrated common law usage. As the disputed domain name was registered at least years prior to the commencement of Complainant’s activities, the Respondent says that it is the senior user. Moreover, the Respondent provides evidence from wayback machine that the disputed domain name has been used since early in 2005
The Respondent also states that San Francisco is commonly referred to as SF (and notes that the Respondent is based there) and says that there is no evidence that consumers recognise SF as standing for “SHAKES & FIDGET”.
The Respondent also claims that the disputed domain name could not have been registered and used in bad faith because the registration predates use by the Complainant of “SFGAME” by at least two years and therefore it predates any rights that the Complainant could have as the Respondent could not have contemplated the Complainant’s non-existent rights at the time of registration.
The Respondent states that it had never received any communication from the Complainant and that even if it had done so, it was under no obligation to negotiate with the Complainant as the disputed domain name was registered at least two years prior to the existence of the “SHAKES & FIDGET” game.
Finally, the Respondent alleges that this complaint amount to a reverse high jacking domain name by the Complainant as it should have known as a junior user that this complaint could not succeed and the fact that it wants the disputed domain name and that the Respondent does not wish to sell it is beside the point and amounts to an attempt to “hijack” the disputed domain name.
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