Voyetra Turtle Beach, Inc. v zhen tou

WIPO Case No. D2024-5196

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Voyetra Turtle Beach, Inc. v. zhen tou

Case No. D2024-5196

1. The Parties

The Complainant is Voyetra Turtle Beach, Inc., United States of America (“United States”), represented by

Sheppard, Mullin, Richter & Hampton, United States.

The Respondent is zhen tou, China.

2. The Domain Name and Registrar

The disputed domain name <theroccat.com> is registered with Name.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2024. On December 18, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 19, 2024, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name
Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for 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, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 3, 2025. In accordance with the Rules, paragraph 5, the due date for Response was January 23, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 24, 2025.

The Center appointed Zoltán Takács as the sole panelist in this matter on January 29, 2025. The Panel
finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration
of Impartiality and Independence, as required by the Center to ensure compliance with the Rules,
paragraph 7.

page 2

4. Factual Background

The Complainant in this administrative proceeding is a Delaware (United States) corporation that manufactures and markets high-quality gaming audio and console gaming headsets and accessories.

To expand its offerings, in 2019 the Complainant has acquired the German computer peripherals company
Roccat GmbH along with its trademarks.

The Complainant is among others owner of the International Trademark Registration No. 948759 ROCCAT registered since June 15, 2007.

The Complainant is also owner of the domain name <roccat.com>, which was registered on March 26, 2002, and resolves to its corporate website at “

The disputed domain name was registered on June 19, 2024, and has been used in relation to a website that displays the Complainant’s ROCCAT mark and appears to offer for sale various products similar to those manufactured and marketed by the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that:

- the disputed domain name that includes its ROCCAT mark is confusingly similar to it;

- the Respondent has no rights or legitimate interests in respect of the disputed domain name since it is

unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii), or (iii) of the Policy;

- the Respondent registered the disputed domain name with actual knowledge of the Complainant’s mark;
and

- the use of the disputed domain name for a website that offers counterfeit products and prominently feature its trademark, logo, and imagery is evidence of bad faith registration and use of the disputed domain name.

The Complainant requests that the disputed domain name be transferred from the Respondent to the

Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that:

(i)        the domain name is identical or confusingly similar to a trademark or service mark in which the

complainant has rights;

page 3

(ii)       the respondent has no rights or legitimate interests in respect of the domain name; and

(iii)      the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing
(or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison
between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel

Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the ROCCAT mark is reproduced and is recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms, here the term “the” may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized
that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task
of “proving a negative”, requiring information that is often primarily within the knowledge or control of the
respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or
legitimate interests, the burden of production on this element shifts to the respondent to come forward with
relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of
proof always remains on the complainant). If the respondent fails to come forward with such relevant
evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0,
section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

According to the documentary evidence submitted by the Complainant, the Respondent has been using the disputed domain name to deceive Internet users looking for the Complainant through redirecting them to its own website at which the Respondent appears to be offering for sale ROCCAT-branded products and the

Complainant’s other products which the Complainant assumes are counterfeit.

There is no evidence as to whether the goods offered on the Respondent’s website at the disputed domain name are counterfeit or “genuine”, or whether any of those goods ultimately exist. Also, there is no indication of any relationship of the Respondent with the Complainant as to the source of the products at issue and the website at the disputed domain name implies that the products offered for sale on the Respondent’s website originate with the Complainant. Consequently, even if the products appearing on the Respondent’s website

page 4

under the disputed domain name would exist and be genuine, the Respondent’s website would still not
qualify as fair use. WIPO Overview 3.0, sections 2.13.2 and 2.8.1 and Oki Data Americas, Inc. v. ASD, Inc.,
WIPO Case No. D2001-0903.

What is evident is that the Complainant has not authorized, licensed, or allowed the Respondent or any third party to use its ROCCAT mark or any other mark through the disputed domain name or in any other way that would confer validity or legitimacy upon such usage.

In the Panel’s view it is also evident that the Respondent has been impersonating the Complainant by using on its website at the disputed domain name the Complainant’s trademark, logo, and images in a way that implies that the products it offers for sale originate with the Complainant.

Panels have held that the use of a domain name for illegal activity, here impersonation/passing off can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

Moreover, the inherently misleading nature of the disputed domain name carries risk of implied affiliation.

WIPO Overview 3.0, section 2.5.1.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

In the present case, the Panel notes that the Complainant’s ROCCAT trademark is inherently distinctive and that its registration date predates the date of registration of the disputed domain name.

The website at the disputed domain name prominently references the Complainant and features the ROCCAT mark, logo, and images of products manufactured and marketed by the Complainant. Hence it is clear that the Respondent had actual knowledge of the Complainant and its trademark and registered the disputed domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. Paragraph 4(b)(iv) of the Policy.

The Respondent’s intent to target the Complainant’s trademark can be readily inferred from the contents of the Respondent’s website seeking to impersonate the Complainant by directing Internet traffic to its website in order to gain illegitimate profit through impersonation or false association. Visitors of the Respondent’s

website might reasonably believe that it is connected to or approved by the Complainant as it appears to
offer products under the Complainant’s trademark, logo, and imagery and gives the impression that the site
attached to the disputed domain name is official, while that is clearly not the case.

Panels have held that the use of a domain name for illegal activity, in this case impersonation/passing off constitutes bad faith. WIPO Overview 3.0, section 3.4.

The Panel finds that the Complainant has established the third element of the Policy.

page 5

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <theroccat.com> be transferred to the Complainant.

/Zoltán Takács/
Zoltán Takács
Sole Panelist
Date: February 11, 2025