The Complainants are K Limited and M Ltd of St. Julians, Malta and London, United Kingdom of Great Britain and Northern Ireland, respectively, represented by Origin Ltd.
The Respondent is Trump Coins Inc. of Menominee, Michigan, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Wild West Domains, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 30, 2014. On May 30, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 June 16, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 6, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 7, 2014.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on July 16, 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 two Complainants are wholly owned subsidiaries of King Digital Entertainment plc. The Complainants, or the corporate group to which they belong, are the publishers under the name “King” of, amongst other things, Candy Crush Saga, Farm Heroes Saga, Papa Pear Saga and Peter Rescue Saga.
According to the Complaint, Candy Crush Saga has on average 93 million daily active users. It is the most popular game on Facebook and iOS. It is also available on several online platforms. Pet Rescue Saga has on average 15 million daily active users and Farm Heroes Saga has 8 million daily active users on average. Papa Pear Saga has 5 million daily active users on average.
The first Complainant has a number of registered trademarks. Those identified in the Complaint are:
(a) Community Trademark No. 11268646 for KING in respect of a range of goods and services in International Classes 9, 38, 41 and 42. This trademark was registered on March 14, 2014;
(b) Community Trademark No. 001559558 for KING.COM in respect of a range of goods and services in International Classes 35, 38 and 42. This trademark was registered on May 29, 2002;
(c) Community Trademark No. 004995999 for KING.COM in respect of a range of goods and services in International Classes 9, 41 and 42. This trademark was registered on October 5, 2007.
On February 18, 2014, the Complainants’ parent, King Digital Entertainment announced it had applied to be registered for trading on the New York Stock Exchange. Its stock commenced being traded on the New York Stock Exchange on March 26, 2014. This listing attracted considerable media attention. There were also very significant spikes in Google searches of the expression “King Digital Entertainment” around the time of the February announcement and in the lead up to the commencement of stock trading on the New York Stock Exchange.
On March 25, 2014, the Respondent registered the disputed domain name. Since then, it has resolved to a web page headed “Welcome to ”. The next line states that “This Web page parked FREE courtesy of Ez-DomainNameR”. There are options to search for similar domain names, to establish a website and an offer of the disputed domain name tor sale. The bulk of the page consists of a number of links to various advertisers or advertising categories, what the Complainants characterize as a link farm. 5. Discussion and Findings
No Response has been filed. The Complaint has been served, however, on the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Complaint has been properly served on the Respondent.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainants must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have 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.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable. A. Identical or Confusingly Similar
The first element that the Complainants must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainants’ trademark rights.
There are two parts to this inquiry: the Complainants must demonstrate that they have rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The first Complainant has proven ownership of the registered trademarks identified in section 4 above. The Complainants’ group would also appear to have a very well established reputation in the name “King” in relation to computer games and related services. Further, the announcement of the planned listing on the New York Stock Exchange and the associated media attention is of a kind which courts and UDRP panels have recognized can, and in this case does, confer rights in the name King Digital Entertainment. See, e.g., Pacific-10 Conference v. Kevin LeeWIPO Case No. D2011-0200. As the first Complainant is the owner of the registered trademarks identified in the Complaint, it would appear that the first Complainant is the entity within the group that holds the group’s trademark rights.
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainants’ proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol,WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin,WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
The Panel finds that the disputed domain name is identical to the name of the group’s parent, King Digital Entertainment apart from the addition of the generic Top-Level Domain “.com”. That difference can be disregarded as a functional aspect of the domain name system: Telstra Corporation Limited v. Ozurls,WIPO Case No. D2001-0046, Ticketmaster Corporation v. DiscoverNet Inc.,WIPO Case No. D2001-0252.
The disputed domain name is also confusingly similar to the first Complainant’s registered trademarks having regard to the role of this requirement under the Policy and the significance of “King” in the expression “King Digital Entertainment”: Cheezburger Inc. v. WeKnowMemes LLC,WIPO Case No. D2012-2452.
Accordingly, the Panel finds that the Complainants have, or at least the first Complainant has, established that the disputed domain name is identical with or confusingly similar to trademarks in which the Complainants have, or at least the first Complainant has, rights and the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests
The second requirement the Complainants must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] 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] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] 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.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the complainant. UDRP panels have recognized the difficulties inherent in disproving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
The Complainants have not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with them. The disputed domain name is plainly not derived from the Respondent's name.
The use of the disputed domain name for a parking page with pay-per-click advertising does not qualify as a bona fide offering of goods or services under the Policy in the circumstances of this case. The expression “King Digital Entertainment” does consist of three ordinary or plain English words. However, their use in combination in that order is neither descriptive nor a commonly used term. It has significance only as an identifier of the Complainants’ parent and its corporate group. The use of the Complainants’ trademark to attract Internet Users without authority is not bona fide: see WIPO Overview 2.0, paragraph 2.6.
In these circumstances, the Complainants have established a clear prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not sought to rebut that prima facie case.
Accordingly, the Panel finds the Complainants have established the second requirement under the Policy also. C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainants must establish that the disputed domain name has been both registered and used in bad faith by the Respondent.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The disputed domain name was registered at the time there was considerable media attention and greatly increased Google activity around the listing of the Complainants’ parent on the New York Stock Exchange. The Complainants’ parent’s name does consist of individual, ordinary English words. As noted above, however, the words in the particular combination they have been registered have no ordinary accepted meaning other than as the name of the Complainants’ parent. There is a very strong inference, therefore, that the Respondent knew of the plans to list on the New York Stock Exchange the Complainants’ parent and sought to take advantage of that.
That inference is reinforced by the use made of the disputed domain name after registration as a web page with pay-per-click advertising unrelated to the Complainants’ products and which includes an invitation soliciting inquiries to purchase the disputed domain name.
The Respondent has not sought to rebut these inferences or otherwise justify its registration or use of the disputed domain name.
In these circumstances, therefore, the Panel finds that the disputed domain name has been registered and used in bad faith. 6. 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 K Limited.
Warwick A. Rothnie
Sole Panelist
Date: July 26, 2014
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