The Complainant is K Limited of St Julians, Malta, M Ltd. of London, United Kingdom of Great Britain and Northern Island (“United Kingdom”), represented by Origin Ltd., United Kingdom.
The Respondent is Usman Khalid of Rawalpindi, Punjab, Pakistan. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2014. On May 13, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 14, 2014, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 20, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 9, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 10, 2014.
The Center appointed William R. Towns as the sole panelist in this matter on June 18, 2014. 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 is an interactive entertainment company that develops and markets online social and mobile games, including the popular “Candy Crush Saga”, “Farm Heroes Saga”, “Papa Bear Saga”, and “Pet Rescue Saga” games. The games (or “apps”) are available worldwide on several online platforms, including iOS and Android, and Facebook. The Complainant owns Community Trademark Registrations (“CTM”) for the following marks: CANDY, CANDY CRUSH, CANDY CRUSH SAGA, PET RESCUE, PET RESCUE SAGA, FARM HEROES, FARM HEROES SAGA, PAPA PEAR and PAPA PEAR SAGA. These registrations for these marks were issued on various dates between January 2, 2007, and October 6, 2013.
The Respondent registered the disputed domain names on various dates between October 22, 2013 and April 1, 2014. All but one of the disputed domain names resolves to websites offering online access to various games. Each website prominently displays the name of one of the Complainant’s “Saga family” of games, and includes graphical elements reminiscent to those used by the Complainant. The disputed domain name resolves to what appears to be a placeholder page.
After becoming aware of the registration of the disputed domain names, the Complainant contacted the Respondent seeking cancellation or transfer of the domain names. The Respondent declined to do so, unless the Complainant paid the sum of USD 30,000 to the Respondent, which the Respondent asserted he spent on search engine optimization for the websites. 5. Parties’ Contentions A. Complainant
The Complainant describes itself as a leading interactive entertainment company for the mobile world, which develops and markets online social and mobile games, including the hugely successful Candy Crush Saga, Farm Heroes Saga, Papa Pear Saga and Pet Rescue Saga games. According to the Complainant, Candy Crush Saga, Pet Rescue Saga and Farm Heroes Saga currently hold three of the five top spots as the applications on Facebook with the most monthly active users, and Candy Crush Saga has been positioned as the most popular game on Facebook and iOS.
The Complainant explains that its “Saga family” of games are played online and have a broad user base, many of which are fairly inexperienced online users. According to the Complainant, Candy Crush Saga was released on Facebook in March 2012 and on the iOS and Android platforms around November 2012; Pet Rescue Saga was released on Facebook in October 2012 and on the iOS and Android platforms around April 2013; and Farm Heroes Saga was released on Facebook in April 2013. The Complainant submits that Candy Crush Saga and Pet Rescue Saga are expanded versions of the Complainant’s Candy Crush and Pet Rescue games released in March 2011 and September 2009, respectively.
The Complainant maintains that the disputed domain names are each confusingly similar to a mark in which the Complainant has prior rights. The Complainant submits that the disputed domain names incorporate one or more of these marks in their entirety, and that the addition of descriptive terms such as “free”, “games”, and “hit” does not serve to distinguish the disputed domain names from the Complainant’s marks. The Complainant submits that the Respondent’s registration of the disputed domain name is evocative of typosquatting.
The Complainant asserts that the Respondent does not have rights or legitimate interests in the disputed domain names. The Complainant avers that the Respondent has not been authorized to use the Complainant’s marks, and that the Respondent has not been commonly known by the disputed domain names. According to the Complainant, the Respondent conceded in a communication predating the filing of the Complaint that his websites are commercial in nature. The Complainant submits, however, that the Respondent prior to any notice of this dispute was not using or making demonstrable preparations to use the disputed domain names with a bona fide offering of goods or services. The Complainant asserts that the Respondent was well aware of the Complainant’s rights when registering the disputed domain names, which are confusingly similar to the Complainant’s marks, and that the Respondent is using the disputed domain names to divert Internet users to websites likely to appear to a visitor as an official site of the Complainant, or endorsed by or affiliated with the Complainant.
In view of the foregoing, the Complainant contends that the Respondent registered and is using the disputed domain names in bad faith. The Complainant submits that the Respondent is using the domain names to intentionally attempt to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the site. The Complainant further asserts that the Respondent’s bad faith is evinced by his offer to sell the disputed domain names for USD 30,000, a price considerably higher than the out-of-pocket costs directly related to the disputed domain names. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 -177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that a complainant prove each of the following three elements to obtain a decision that a disputed domain name should be either cancelled or transferred:
(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 with respect to the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds that the disputed domain names are confusingly similar to the Complainant’s marks, in which the Complainant has established rights through registration and use. In considering this issue, the first element of the Policy operates essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar. In this case, each of the disputed domain names incorporates in its entirety one the Complainant’s “Saga family” of marks. The inclusion of descriptive terms such as “free”, “game”, and “hit” in the Panel’s view is not sufficient to dispel the confusing similarity of the disputed domain names to the Complainant’s marks. Further, the inclusion of an additional letter “a” in the disputed domain name is indicative of typosquatting.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. The disputed domain names are confusingly similar to the Complainant’s marks. It is undisputed that the Respondent has not been authorized to use the Complainant’s marks. The Respondent nevertheless has registered and has used the disputed domain names with commercial online gaming websites, and has reproduced the Complainant’s marks on these websites.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the disputed domain name, even if he has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain names within any of the “safe harbors” of paragraph 4(c) of the Policy.
Based on the record in this proceeding, the Panel considers it highly likely that the Respondent was aware of the Complainant and the Complainant’s marks when registering the disputed domain names. In the absence of any formal reply by the Respondent, the Panel concludes that the Respondent registered the disputed domain names in order to trade on the goodwill and reputation of the Complainant’s marks through the creation of Internet user confusion. Internet users could easily expect that disputed domain names would be linked to the Complainant’s website or another website that is affiliated with, or has the endorsement or sponsorship of, the Complainant. See Levantur, S.A. v. Media Insight,WIPO Case No. D2008-0774.
Accordingly, the record before the Panel does not reflect the Respondent’s use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services. Nor, in the circumstances of this case, can it be said that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names without intent for commercial gain to misleadingly divert consumers. As noted above, the Respondent has not been authorized to use the Complainant’s marks, and the Panel finds that the Respondent has not been commonly known by the disputed domain names within the meaning of paragraph 4(c)(ii) of the Policy. In sum, and absent any reply by the Respondent, there is nothing in the record before the Panel to support a claim by the Respondent of rights or legitimate interests in the disputed domain names.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (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) circumstances indicating that the respondent 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes that the Respondent was aware of the Complainant and the Complainant’s marks when registering the disputed domain names. In the absence of any reply by the Respondent, the Panel considers that the Respondent’s primary motive in relation to the registration and use of the disputed domain names was to capitalize on, or otherwise take advantage of, the Complainant’s trademark rights through the creation of Internet user confusion. The record reflects that the Respondent has registered and is using the disputed domain names in bad faith to intentionally attract for commercial gain Internet users to the Respondent’s websites, by creating a likelihood of confusion with the Complainant’s marks as to source, sponsorship or affiliation. See E, Inc. v. Ult. Search Inc.,WIPO Case No. D2001-1319.
That the Respondent may be passively holding the disputed domain name does not preclude a finding of bad faith registration and use in the circumstances of this case. See Telstra Corporation Limited v. Nuclear Marshmallows, supra. Considerations that supported a finding of bad faith in Telstra are present in this case as well, and this domain name registration in the Panel’s view is part and parcel of a clear pattern of cybersquatting by the Respondent as it concerns the Complainant’s marks.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 names , , , , , , and be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: July 2, 2014
1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2.
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