The Complainants are K Limited of St. Julians, Malta; and M Ltd. (hereafter the “Complainant”) of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Origin Ltd., UK.
The Respondent is Robertson J M Price of New York, United States of America (“USA”); Domains By Proxy, LLC of Scottsdale, Arizona, USA; Robertson Price of New York, USA; and Scrapple Labs of Miami Beach, Florida, USA. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , and (the “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 June 23, 2014. On June 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 23, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names The Center sent a communication to the Complainant regarding the existence of multiple Respondents. Additionally, in response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on June 27, 2014. Hereafter the Amended Complaint filed on June 27, 2014 is known as the “Complaint”.
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 30, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 20, 2014. The Response was filed with the Center on July 20, 2014.
The Center appointed Nicholas Smith as the sole panelist in this matter on July 28, 2014. Following appointment, the Panel extended the due date for decision until September 5, 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, based out of the United Kingdom. It develops and markets online social and mobile games, including Candy Crush Saga, Farm Heroes Saga, Papa Pear Saga and Pet Rescue Saga. In December 2013, an average of 128 million daily active users played the Complainant’s games more than 1.2 billion times per day. In particular Candy Crush Saga had 93 million average daily active users and 1,085 million average daily games played across all platforms in December 2013.
The Complainant is the owner of a number of trademarks consisting of the words CANDY CRUSH (the “CANDY CRUSH Mark”), PET RESCUE (the “PET RESCUE Mark”), FARM HEROES (the “FARM HEROES Mark”) and PAPA PEAR (the “PAPA PEAR Mark”) (Collectively the “Complainant’s Marks”) in jurisdictions across the world, including the United States and the European Union. The CANDY CRUSH Mark has a priority date of August 8, 2012. The PET RESCUE Mark has a priority date of October 29, 2012. The FARM HEROES Mark has a priority date of March 12, 2013. The PAPA PEAR Mark has a priority date of August 10, 2012.
The Domain Names were registered on the following dates: Domain name Registration date
October 13, 2013
May 2, 2013
October 15, 2013
September 4, 2013
September 5, 2013
May 30, 2013
May30, 2013
May 30, 2013
May 30, 2013
May 30, 2013
The Domain Names , , , and (collectively, along with , the Consent Domain Names) are currently inactive. The Domain Names , , , , (collectively, other than the “Remaining Domain Names”) resolved to similar websites (the “Respondent’s Websites”), which feature a guide to solving each level of the corresponding Complainant games. In particular the Domain Name contains some 2,800 pages. The Respondent’s Websites include significant commercial advertising and the pages viewed by the Panel appeared to contain a proportionally large number of advertisements at various points of the page as compared to the game-related content. They also contain a disclaimer at the top left of each page stating “this is an unofficial [name of game] website. We are not affiliated with K Limited in any way”. Prior to the commencement of these proceedings the disclaimer was at the bottom of each page. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Names are identical or confusingly similar to the Complainant’s Marks;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered and are being used in bad faith.
The Complainant is the owner of the Complainant’s Marks. It owns trade mark registrations for the “CANDY CRUSH Mark, PET RESCUE Mark, FARM HEROES Mark and PAPA PEAR Mark in various jurisdictions around the world.
The Domain Names consist of the Complainant’s Marks and the various nouns, being “world”, “cheats”, “respuestas” (Spanish for “answers”) and “trucos” (Spanish for “hacks”). Each of these words does not distinguish the Domain Name from the Complainant’s Marks. The Domain Names are confusingly similar to the Complainant’s Marks as the dominant part of each of the Domain Names is one of the Complainant’s Marks.
The Respondent has no rights or legitimate interests in the Domain Names. The Respondent is not affiliated with the Complainant in any way or is commonly known by reference to the Complainant’s Marks. The Complainant has not authorized the Respondent to use and register the Complainant’s Marks or to seek the registration of any domain name incorporating the Complainant’s Marks. The Domain Names , , , , all resolve to similar websites which reproduce the Complainant’s copyrighted material to drive website traffic and in turn revenue from the extensive commercial advertisements on each page, i.e., the Respondent is merely engaged in a the provision of a pay-per-click (PPC) site. None of the websites resolving at these Domain Names are even close to providing a genuine bona fide offering of goods and services or a non-commercialfair use of the Domain Names.
The Respondent’s Websites are not protected under any fair use doctrine. Specifically, the content on the websites reproduce substantial parts of the Complainant’s games verbatim and the publication of the websites adversely affects the potential market for authorized publications (online, print or other format) about the games. The Respondent’s Websites are “capitalizing” on the interest of the Complainant’s games, rather than being a genuine attempt to offer goods or services or provide material (even under the fair use doctrine).
The Domain Names , , , and do not resolve to any websites and there is no basis to suggest that there is a bona fide use of those sites.
The Domain Names were registered and are being used in bad faith. The Domain Names were registered several years after the launch of Candy Crush and well over a year after the release of Candy Crush Saga, Pet Rescue Saga, Papa Pear Saga and Farm Heroes Saga. The Respondent’s Websites use the Complainant’s Marks and copyrighted artwork in such a manner as to appear to a visitor to be an official site for the Complainant or a site being endorsed or affiliated with the Complainant. Only subsequent to being warned that the Complainant intended to assert its rights did the Respondent add any language to the websites suggesting that the websites are not affiliated with the Complainant.
The Respondent’s Websites generate income for the Respondent. Thus, the Respondent uses the Domain Names 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 site. This, in itself, is a basis for finding the requisite bad faith. B. Respondent
The Respondent consents to the transfer of the Consent Domain Names to the Complainant.
With respect to the Remaining Domain Names, the Respondent’s factual and legal contentions (in summary) are set out below.
The Respondent is offering a bona fide good or service at the Remaining Domain Names. Each of the Remaining Domain Names resolve to a website at which an extensive online guide to the Complainant’s game is located. Each guide has been compiled by the Respondent at great expense. Furthermore there is little chance that gamers would be confused between the Respondent’s Websites and the Complainant as gamers can clearly distinguish between an official website of the Complainant and a website, such as the Respondent’s Websites, that contains a guide/manual/walkthrough to the game that has been compiled unofficially.
Furthermore, the Respondent is providing a legitimate service, being a guide or walkthrough to the Complainant’s games, such as Candy Crush Saga. It is exceedingly difficult to provide this service without incorporating the name of the game. The Respondent has spent extensive sums on this service, for example employing two rounds of 10 people and spending over USD 100,000 to create its 2,800 page online guidebook for Candy Crush Saga. The fact that the Respondent receives income by means of advertisements does not change the fact that its activities are bona fide.
The Respondent is not acting in bad faith. It has not registered the Remaining Domain Names for the purposes of selling to the Complainant, or disrupting the Complainant’s business, nor were they registered with the intent of creating a likelihood of confusion with the Complainant’s Mark. Rather the Remaining Domain Names were registered for the purpose of creating an online manual for the games Candy Crush Saga, Papa Pear Saga, Farm Heroes Saga and Pet Rescue Saga. The Respondent submits that it is clear from the content of the Respondent’s Website that there has been no attempt to create a likelihood of confusion with the Complainant. 6. Discussion and Findings A. Identity of the Respondent and Consolidation of Proceedings
There was a question raised in the Complaint regarding the identity of the Respondent and the possible need to consolidate the proceedings against multiple respondents. These have been clarified by the Response. The Response confirms that each of the Domain Names are registered to the same person either known as Robertson Price or Robertson JM Price, but that Mr. Price owns these names on behalf of Scrapple Labs LLC. In short there is no question of consolidation of the proceeding involved as each of the Domain Names is owned by the same person who holds the Domain Names on behalf of Scrapple Labs LLC. B. Consent to Transfer
The Response indicates that the Respondent consents to the transfer of the Consent Domain Names. While the Panel acknowledges that in some cases it may be justified to proceed to a substantive determination of the matter on the merits,1 given the complexity of the matter the Panel will adopt the position taken in Infonxx.Inc v. Lou Kerner, WildS,WIPO Case No. D2008-0434, namely “that a genuine unilateral consent to transfer by the Respondent provides a basis for an order for transfer without consideration of the paragraph 4(a) elements. […] This is clearly the most expeditious course.”
On the basis of the unilateral and unambiguous consent by the Respondent, and without consideration of the paragraph 4(a) elements, the Panel orders the transfer of the Consent Domain Names, namely , , , , and . The remaining aspects of the decision will only consider the Remaining Domain Names. C. Identical or Confusingly Similar
To prove this element, the Complainant must have trade or service mark rights and the Domain Names must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the Complainant’s Marks. It owns trade mark registrations for the CANDY CRUSH Mark, PET RESCUE Mark, FARM HEROES Mark, and PAPA PEAR Mark, having registrations for the Complainant’s Marks as trade marks around the world and in particular the USA and European Union.
The Domain Name consists of the CANDY CRUSH Mark with the addition of “-cheats”. The Domain Name consists of the PAPA PEAR Mark with the addition of “-cheats”. The Domain Name consists of the FARM HEROS Mark with the addition of “cheats”. The Domain Name consists of the PET RESCUE Mark with the addition of “-cheats”.
In each of these cases the addition of a generic noun to the Domain Name that otherwise incorporates one of the Complainant’s Marks in its entirety does not prevent a finding of confusing similarity. The Panel finds that each of the Remaining Domain Names is confusingly similar to the Complainant’s Marks. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. D. Rights or Legitimate Interests
In connection with the question of rights or legitimate interests, it is useful to discuss the present nature of the Respondent’s Websites as reflected in this case record.
The Complainant has alleged that the Respondent’s Websites contain the Complainant’s copyrighted material as the main body of content to drive website traffic, which results in revenue from commercial advertisements on the websites. It argues that the Respondent’s use of the Remaining Domain Names cannot be bona fide because the non-advertising content of the websites contains the Complainant’s copyrighted material and none of the websites offer any product that a website user can buy or service that a website user can subscribe to. The Complainant describes the Respondent as trading in the PPC business and asserts that the Remaining Domain Names incorporate the Complainant’s Marks which lure unwitting users to the landing page of the Respondent’s Websites where their arrival is immediately monetized.
The Respondent acknowledges that it is running a commercial business that depends on advertising content, but also submits that it is providing a bona fide service, namely “cheats” for the Complainant’s games created at the Respondent’s expense.
The Panel, upon examining the pleadings and visiting the Respondent’s Websites (as panels have occasion to do, see Société des Produits Nestlé SA v. Telmex Management Services,WIPO Case No. D2002-0070), notes that as viewed, each of the Respondent’s Websites appears to be almost 50 percent advertising (for example, the first website page reached at “www.” contains approximately 21 advertisements or sponsored links). At the same time, each of the Respondent’s Websites contains original content in the form of guides (in the form of “cheats” or “hints”) for each of the over 600 Candy Crush Saga levels. Even if the content of each of the Respondent’s Websites also includes a large number of game screenshots and YouTube videos showing the completion or partial completion of each level, overall, these guides themselves, and the assembly or arrangement thereof, appear to the Panel (and there is nothing in the present record of this administrative dispute resolution proceeding to suggest otherwise) to be original work.
While the Panel does not see evidence in the record for the Respondent’s claim that the Respondent employed 20 people to create its websites and online guidebook at “www.”, the Panel observes that time and effort has clearly been spent compiling the cheat/guide at each of the Respondent’s Websites (effectively by “reverse engineering” the Complainant’s games). The Panel acknowledges the Respondent’s documentary evidence that the Respondent’s Websites receive a large number of visitors and that the average visitor (after removing “less than one second” visitors) spends up to four minutes on the Respondent’s Websites. The Panel thereby notes that the amount of time visitors spend on a site is not determinative of the existence of rights or legitimate interests under the Policy. Nor is it, on the present limited record, determinative of any potential user confusion.
The Complainant describes the Respondent as trading in the PPC business. Whether or not this is an appropriate characterization of the Respondent’s Websites, it is clear from the materials submitted, as well as the Panel’s own visit, that the links on the Respondent’s Websites do not relate in a “dictionary” or descriptive sense to the subject of the respective domain name; rather, they appear to point to a dynamic range of largely unrelated third-party sites and services. By comparison, the Respondent-produced content may itself be considered as corresponding to the phrase “candy crush cheats” in a more descriptive manner relevant to the overall inquiry. On balance, the Respondent-produced content on its websites is sufficient for the Panel to conclude that the Respondent does not lack rights or legitimate interests for purposes of the Policy in the Remaining Domain Names.
The Panel thereby notes that in a broader sense the Respondent’s use of the Remaining Domain Names is not self-evidently bona fide, nor on the other hand is it self-evidently mala fide. The Panel’s conclusion as to rights or legitimate interests under the Policy is made on the particular factual situation as it exists before the Panel presently, and takes into account a range of use-related factors which may be deemed relevant to these circumstances, such as and by way of example, potential tarnishment or dilution of the Complainant’s Marks, potential consumer expectations, the nature of commercial links (here apparently non-competitive), and the character of the website content (whether transformative and materially value-additive). The Panel does not consider that any one of these factors would be individually dispositive of the particular outcome here, which outcome involves questions of the application of trademark law principles in the context of Policy proceedings; the instant proceeding raises complex questions of the permissible extent to which a commercial enterprise may use the identity (including, here, purportedly copyrighted material) of another for its own purposes.
On finely balanced facts and circumstances, the Panel here ultimately concludes that the Complainant has failed to prove, on the record before it and in the particular circumstances, that the Respondent lacks rights or legitimate interests in the Remaining Domain Names. Were it to become apparent, however, that the Respondent’s use of the Complainant’s Marks (and, here, purportedly copyrighted content) has merely been a pretext for unfair commercial gain, i.e., in Policy terms, should future facts and circumstances suggest that the Respondent’s current behaviour masks an intent “to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [its] web site or location or of a product or service on [its] web site or location”, there may be grounds to consider a refiled complaint, subject to the applicable criteria. E. Registered and Used in Bad Faith
In the light of the above discussion, it is unnecessary for the Panel to consider this Policy element. 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 Consent Domain Names, , , , , and be transferred to the Complainant.
In respect of the Remaining Domain Names , , , , for the foregoing reasons, the Complaint is denied.
Nicholas Smith
Sole Panelist
Date: September 2, 2014
1 See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) section 4.13.
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