So Fly – Epstein Drangel Knocks Two Counterfeit Birds off the Web with One UDRP

Copyright © 2009-2013 Rovio Entertainment Ltd.

Epstein Drangel received a favorable decision from the National Arbitration Forum today in Rovio Entertainment Ltd. v. Liyanghua / yanghua li / angrybirdsite, FA1304001495026 (Nat. Arb. Forum, June 18, 2013), ordering that the domain names angrybirdsmart.com and angrybirdsite.com be transferred to Rovio.

On the preliminary issue of multiple Respondents, although the WHOIS information reflected that the registrant for angrybirdsmart.com was different from the registrant for angrybirdsite.com, the Forum Panel accepted the argument that the domains were commonly owned and controlled by the same entity given that the evidence submitted by Complainant’s counsel proved that that: both websites originate in China and were selling counterfeit ANGRY BIRDS products, that until recently, both websites were identical in look feel and content, that both domains were hosted on the same web server, that the registrar for both domains was BIZCN.com, Inc., and that the banner that appears on angrybirdsite.com reading “Angry Birds Mart” is identical to the one that appeared on angrybirdsmart.com.

Complainant’s U.S. Trademark Registration for “ANGRY BIRDS” adequately established its rights in the mark under Policy ¶ 4(a)(i). Since angrybirdsmart.com and angrybirdsite.com fully incorporate Complainant’s registered trademark(s) in its/their entirety, adding only the generic terms “mart” and “site” and the gTLD “.com”, the Panel agreed with Complainant’s assertion these difference are not sufficient to distinguish Respondent’s domains from Complainant’s marks, and accordingly, that the angrybirdsmart.com and angrybirdsite.com domain names are confusingly similar to Complainant’s ANGRY BIRDS marks.

The Panel held that Respondent (domain-name holder) should be considered as having no rights or legitimate interests in respect of the domain name(s) because, among other reasons, Respondent’s sale of counterfeit ANGRY BIRDS products in violation of Complainant’s registered trademarks and copyrights shows that Respondent is not using the domain names in connection with a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.

Finally, the Panel determined that Respondent is using the domain names in bad faith under Policy ¶ 4(b)(iv), accepting the argument that Respondent intentionally registered and is using the disputed domain names to sell counterfeit ANGRY BIRDS products in direct competition with Rovio and to capitalize on Rovio’s commercial success by diverting consumers who wish to purchase authentic ANGRY BIRDS products to Respondent’s website for commercial gain.

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