The Complainant is K Limited of St. Julians, Malta, represented by Origin Ltd., United Kingdom of Great Britain and Northern Ireland (“UK”).
The Respondent is CID-518927CAN of Turkey. 2. The Domain Name and Registrar
The disputed domain name is registered with Nics Telekomünikasyon Ticaret Ltd. Sti. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2013. On October 25, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 30, 2013, 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.
On November 6, 2013, the Center transmitted the language of the proceedings document to the parties in both English and Turkish. On November 8, 2013, the Complainant requested English to be the language of the proceedings. The Respondent did not submit its comments.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 12, 2013. On November 12, 2013, the Center informed the parties that, given the provided submissions and circumstances of this case, it had decided to: 1) accept the Complaint as filed in English; 2) accept a Response in either English or Turkish; 3) appoint a panel familiar with both languages mentioned above, if available. In accordance with the Rules, paragraph 5(a), the due date for Response was December 2, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 3, 2013.
The Center appointed Gökhan Gökçe as the sole panelist in this matter on December 9, 2013. 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. 4. Factual Background
The Complainant develops and markets online, social and mobile games, including the Candy Crush Saga game, which was over 9 million daily active users and is available on several online platforms including Facebook in several countries in the world.
The game Candy Crush Saga is an expanded version of the game Candy Crush which was released by the group company M Limited in March 2011. The name of “Saga” designates that this is a game in the Complainant's “Saga family” of games. The Saga family of games allows the player to progress over a map and play the game at each level as indicated by nodes on the map. The Saga games are played online and have a broad user base, many of which are fairly inexperienced online users.
Candy Crush Saga was released by the Complainant in March 2012. Before the disputed domain name was registered in September 2013, Candy Crush Saga was the number one game on a well-known social network platform. Candy Crush Saga has more than 15 million daily users and 700 million game plays a day.
The Complainant owns a number of trademark registrations and applications worldwide including European Community Trademark (CTM) CANDY CRUSH SAGA filed on March 12, 2012 with the number 010718542 and registered on August 9, 2012; and CANDY CRUSH SAGA & Design (figurative trademark) filed on February 8, 2013, with the number 011560448 and registered on July 5, 2013.
The Respondent registered the disputed domain name on September 29, 2013. At the time of this Decision, this Panel notes that the disputed domain name does not resolve to an active website. 5. Parties’ Contentions A. Complainant
In accordance with paragraph 4(a) of the Policy, the Complainant requests that the disputed domain name be transferred to the Complainant. The Complainant submits the grounds for these proceedings listed in paragraph 4(a) of the Policy. Identical or Confusingly Similar
The Complainant asserts that disputed domain name consists of the four words “Candy Crush Saga Games” and the phrase “Candy Crush Saga” is identical to several registered and unregistered trademarks in which the Complainant has rights. The Complainant states that the disputed domain name includes “Candy Crush Saga” with the addition of a generic descriptive word “games” which is related to the type of services that are core to the Complainant. Moreover, the Complainant alleges that the Complainant’s Candy Crush Saga game is in the casual social game genre and the group of players is varied with a weight towards inexperienced game players and online users. In this respect, the addition of the descriptive word “games” to Candy Crush Saga in the disputed domain name does not stop the general Internet user from confusion as to the origin of the disputed domain name.
The Complainant further asserts that the generic Top-Level Domain (“gTLD”) “.com” is not relevant in determining whether the domain name is confusingly similar to a trademark. Rights or Legitimate Interests
The Complainant asserts that the Respondent’s websites is primarily set up for commercial gain that takes unfair advantage of the Complainant’s trademarks and business success and the website features several of the Complainant’s registered trademarks and also several copyrighted elements. The Complainant contends that the Respondent is not authorized to offer any of its games to play on the website nor has it authorized the use of the Complainant’s copyrighted material such as Crush Saga and Pet Rescue Saga icons and description in text.
Further, the Complainant asserts that each page of the website contains at least one advertisement banner/panel that is hosted through an ad network and the website is set up to attract viewers and/or “clicks” on those banners for the commercial gain of the Respondent. The Complainant, accordingly, asserts that the website at the disputed domain name is not used for a bona fide offering of goods and services and to the Complainant’s knowledge there are no demonstrable preparations for such use.
The Complainant states that the website is used for commercial gain from the Complainant’s trademarks and business success. Moreover, the Complainant alleges that the Respondent is clearly not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the Complainant’s trademarks.
Moreover, the Complainant points out that the Respondent is not known by a name consisting in whole or in part of the wording “Candy Crush Saga” or its substantial equivalent and the Respondent also is not an agent or licensee of the Complainant.
The Complainant further asserts that the use of copyrighted material in connection with a website that attempted to cause confusion with and tarnish the Complainant’s trademarks and otherwise reflected obvious disregard for the Complainant’s intellectual property rights cannot establish a right or legitimate interest in the disputed domain name.
The Complainant concludes that the Respondent has no rights or legitimate interests in the disputed domain name. Registered and Used in Bad Faith
The Complainant alleges that the Respondent registered and is using the disputed domain name with an intentional attempt to attract for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and/or of a product on Respondent’s website or location.
The Complainant points out that the Respondent registered the disputed domain name on September 29, 2013, several years after the launch of Candy Crush and more than 1.5 year after the release of Candy Crush Saga.
Moreover, the Complainant contends that Candy Crush Saga had experienced a tremendous commercial success in 2012 and 2013 and was in September 2013 the No. 1 game on Facebook. The game has more than 15 million daily users and 700 million game plays a day. The Respondent clearly noticed Candy Crush and Candy Crush Saga’s success before registering the disputed domain name.
Additionally, the Complainant asserts that the Respondent posted an illegally retained version of the Complainant’s game on the website and the website to which the disputed domain name has been directed is commercial in nature.
The Complainant further states that the website uses the Complainant’s CANDY CRUSH SAGA family of marks and copyrighted artwork and the actual game in such a manner as to appear to a visitor to be an official website for the Complainant or a website being endorsed or affiliated with the Complainant.
Moreover, the Complainant states that the website generates income for the Respondent through displaying advertising on the website and inviting the users to follow those links. Thus, the Respondent uses the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the website.
The Complainant concludes that since the Respondent does not have the permission to use the Complainant’s copyrighted works or registered trademark, and has not tried to seek permission from the Complainant to incorporate the Complainant’s copyrighted works or trademark into the website, this further evidences the Respondent’s bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceedings shall be the language of the Registration Agreement. In the present case, the language of the Registration Agreement is Turkish.
The Complainant submitted its Complaint in English and requested the language of the proceedings to be English. The Respondent has not submitted a response. The Center notified the Respondent in both English and Turkish, and taking into account the Respondent’s default, the Panel concludes that, according to Rules, paragraph 11(a), the language of the proceedings shall be English, Inter-IKEA Systems B.V. v. SC Agis International Sport S.R.L,WIPO Case No. DRO2006-0001.
Therefore, the Panel has decided to 1) accept the Complainant’s filings in English; and 2) issue a decision in English. 6.2. Substantive Elements of the Policy
As the Respondent has not filed a Response, the Panel may decide the dispute based on the Complaint and may accept all factual allegations as true. The Panel may also draw appropriate inferences from Respondent’s default. Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009.
According to paragraph 4(a) of the Policy, the following three elements must be proven by the Complainant, to merit a finding that the disputed domain name be transferred to the Complainant:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Policy requires the Complainant to demonstrate that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel is satisfied that the Complainant is the owner of several trademark registrations for CANDY CRUSH SAGA.
Although the disputed domain name contains the Complainant’s trademark in its entirety, it is coupled with a generic word “games” which is the core service of the Complainant and does not negate the confusing similarity with the Complainant’s trademark. The addition of a generic or common term does not change the overall impression of the disputed domain name as being a domain name connected to the Complainant, PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS),WIPO Case No. D2003-0696. On the contrary, the nature of the generic term used would tend to reinforce users’ erroneous conclusion that the website to which the disputed domain name resolves is somehow legitimately connected to the Complainant as an online game platform. Therefore, addition of “games” to the Complainant’s trademark in the disputed domain name does nothing to reduce confusing similarity with the Complainant's trademark, Nintendo of America, Inc. v. Gray West International,WIPO Case No. D2000-1219.
The Panel further finds that the addition of the gTLD “.com” is irrelevant when determining whether the disputed domain name is confusingly similar to the Complainant’s trademark, PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189. The addition of the gTLD “.com” is one of only several such gTLDs, and “.com” does not serve to identify a specific service provider as a source of goods or services, Busy Body, Inc. v. Fitness Outlet Inc.,WIPO Case No. D2000-0127.
The Panel recognizes the Complainant’s rights and concludes that the disputed domain name is confusingly similar with the Complainant’s CANDY CRUSH SAGA trademark.
The Panel finds that the requirements of paragraph 4(a)(i) of the Policy are fulfilled. Consequently, the Panel finds for the Complainant on the first element of the Policy. B. Rights or Legitimate Interests
In accordance with paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It is established in numerous UDRP decisions that it is difficult for a complainant to prove a negative and for that reason the complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in a domain name, K Limited and M Ltd. v. Peng Chan / WhoisGuard Protected, WIPO Case No. D2013-1405.
Once the Complainant makes a prima facie case, the burden of demonstrating rights or legitimate interests in the disputed domain name shifts to the Respondent.
The Policy, at paragraph 4(c), provides various ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Complainant states that the Respondent does not have any rights or legitimate interests in the disputed domain name; the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services; the Respondent is not commonly known by the disputed domain name and the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The Complainant alleges that the Respondent’s reason for registering the disputed domain name is to have commercial gain illegitimately by using the Complainant’s reputation. The Respondent has not rebutted the prima facie showing and has failed to submit proof of any rights or legitimate interests in the disputed domain name.
The Respondent registered this disputed domain name several years after the launch of Candy Crush game and more than one year after the release of the Candy Crush Saga game. Furthermore, as far as this Panel is aware the trademark CANDY CRUSH SAGA has not been used by anyone as a game name until the Complainant created it. It is obvious that it is the fame of the trademark that has motivated the Respondent to register the disputed domain name. The Panel accepts that the Respondent has not been commonly known by the disputed domain name.
The Complainant has submitted evidence that the website to which the disputed domain name resolved included at least one advertisement banner/panel on almost each page. The Respondent had furthermore copied the trademark as well as its iconic cartoon characters. For these reasons, there is no evidence before the Panel to suggest that it would be appropriate to make a finding that the Respondent has rights or legitimate interests.
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. 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 provided evidence of its rights or legitimate interests in the disputed domain name.
The Panel, therefore, concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
The requirements of paragraph 4(a)(ii) of the Policy are fulfilled and, consequently, the Panel finds in favor of the Complainant on the second element of the Policy. C. Registered and Used in Bad Faith
Finally, the Complainant must show that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the respondent's website or location.
The Complainant’s trademark CANDY CRUSH SAGA was registered and used before the Respondent’s registration of the disputed domain name. Further, the Respondent’s website offered the game Candy Crush. It is highly unlikely that the Respondent was unaware of the Complainant’s trademark rights when the Respondent registered the disputed domain name since the Complainant had released its Candy Crush Saga game in March 2012 and allegedly had 9 million daily active users as of January 2013, before the date the disputed domain name was created. The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that actual knowledge of the Complainant’s trademark at the time of registration of the disputed domain name is to be considered as an inference of bad faith, Orbis Holdings Limited v. Lu A Feng (First Respondent) and Orbis Search (Second Respondent),WIPO Case No. D2007-0515
Further, the disputed domain name generates income by attracting Internet users to play the game Candy Crush and placing advertisements on almost each page. Thus, the Respondent uses the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the website.
After examining all circumstances surrounding the registration and use of the disputed domain name, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. Accordingly, the Panel finds in favor of the Complainant on the third element of the Policy. 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 be transferred to the Complainant.
Gökhan Gökçe
Sole Panelist
Date: December 24, 2013
Full & Egal Universal Law Academy