The Complainant is Supercell Oy of Helsinki, Finland, represented by Roschier Brands, Attorneys Ltd., Finland.
The Respondent is Sem Tulung.Allo of Jakarta, Indonesia.1 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with 1&1 Internet AG (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2015. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 16, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 20, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 21, 2015.
The Center verified that the amended 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 April 21, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 11, 2015. Apart from a brief email on April 23, 2015, the Respondent did not submit any response.
The Center appointed Jacob (Changjie) Chen as the sole panelist in this matter on May 22, 2015. 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 Supercell Oy is a mobile game development company founded in 2010. The Complainant is the owner of the trademarks SUPERCELL and SUPERCELL (figurative) in a number of jurisdictions, inter alia, Community trademarks registration No. 009704446 registered on October 29, 2013 and No. 012223863 registered on June 25, 2014, and also Finnish trademarks registration No. 261374 registered on June 13, 2014 and No. 261376 registered on June 13, 2014.
The Respondent is Sem Tulung.Allo. The Domain Name was registered by the Respondent on October 2, 2014 and does not resolve to any website at the time of decision. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to a trademark or service mark to which the Complainant has rights. The Complainant owns exclusive and valid prior rights to the trademarks SUPERCELL and SUPERCELL (figurative) registered in a number of jurisdictions. The difference between the Domain Name apart from its Top-Level Domain (TLD) suffix “.com” and the Complainant’s trademark SUPERCELL is the letter “l” which is so minor that it is considered identical to one another in practice. The Respondent’s registration of the Domain Name constitutes typosquatting which, by its definition, renders the Domain Name confusingly similar to the Complainant’s trademark.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent did not own any trademark rights or trade name rights in respect of the Domain Name when registering the Domain Name. The Respondent has not used the Domain Name for the offering of goods or services and the Respondent is not commonly known by the name of “Supercelll”. The Complainant has not licensed or permitted the Respondent to use the trademarks SUPERCELL or SUPERCELL (figurative).
The Complainant finally contends that the Domain Name was registered and is being used in bad faith. The Respondent previously directed the Domain Name to a website that offers online games, but the Complainant could not preserve any evidence since the content has been removed. The Respondent’s passive holding of the Domain Name amounts to bad faith. In addition, the practice of typosquatting itself is evidence of bad faith registration of the Domain Name.
In view of all the above, the Complainant requests the Panel to order the Domain Name be transferred to the Complainant. B. Respondent
The Respondent sent a brief email to the Center on April 23, 2015 stating that it would delete the Domain Name immediately. No other response was made to the Complaint. 6. Discussion and Findings
To succeed in the Complaint, the Complainant must, in accordance with paragraph 4(a) of the Policy, satisfy the Panel of the following three elements:
i. the Domain Name must be 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 Domain Name; and
iii. the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has provided evidence to establish its rights to the trademarks SUPERCELL and SUPERCELL (figurative).
The TLD suffix “.com” is usually disregarded under the confusing similarity test, therefore only “supercelll” is considered for the purpose of evaluating the confusing similarity between the Domain Name and the Complainant’s trademark SUPERCELL. The Panel notes that the Complainant’s trademark SUPERCELL has been reproduced in its entirety in the Domain Name with an addition of the letter “l”, of which the trademark SUPERCELL remains the dominant part. Addition of the letter “l” which is same to the last two letters of the Complainant’s trademark is a common misspelling of the Complainant’s trademark that is frequent for Internet users.
Paragraph 1.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) has made it clear that “A domain name which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name.”
For the reason above, the Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out that a respondent may establish rights or legitimate interests in a 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 domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant contends that the Respondent does not have any rights or legitimate interests in respect of the Domain Name by bringing forward that the Respondent did not register any trademark or trade name that corresponds to the Domain Name, nor has the Respondent been commonly known by the Domain Name. The Complainant further denies authorization or any other relation between it and the Respondent.
The Panel believes that the Complainant has made out a prima facie case with respect to the Respondent’s lack of rights or legitimate interests in the Domain Name. Consequently, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Domain Name in line with paragraph 4(c) of the Policy, failure of which, the Panel infers that the Respondent has no rights or legitimate interests in the Domain Name.
The Panel notes that the Respondent responded with only one sentence, stating that it would delete the Domain Name immediately. Such a Response fails to demonstrate the Respondent’s rights or legitimate interests in respect of the Domain Name. On the contrary, the Panel views it as an admission by the Respondent of its lack of rights or legitimate interests.
As such, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out the following circumstances which, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) 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 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 intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website 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 the respondent's website or location or of a product or service on its website or location.
The Complainant contends that the website to which the Domain Name resolves was once used to offer online games which were similar to the business of the Complainant but that this content has since been removed from the website. A visit to the website was made by the Panel when making this decision indicating the website was inaccessible. The Panel then checked the historical records for the website and noticed the website was indeed used to offer online games on around October 8, 2014, very close to when the Domain Name was registered. The Panel holds that the Respondent was aware of the Complainant and its trademark when registering the Domain Name and by registering the Domain Name, the Respondent was attempting to create a likelihood of confusion between the Domain Name and the Complainant’s trademark to attract Internet users to the website under the Domain Name in order for commercial gain. The Panel thus finds bad faith on the part of the Respondent.
The Panel notes that the Complainant relies on the Respondent’s current passive holding and typosquatting of the Domain Name in order to argue for the Respondent’s bad faith use of the Domain Name. The Panel finds, after examining the Complaint, in favor of the Complainant for the following reasons:
Paragraph 3.2 of the WIPO Overview 2.0 states that “panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity.”
The Panel holds that the Complainant’s contentions are, prima facie, in line with the spirit of paragraph 3.2 of the WIPO Overview 2.0 by introducing the reputation of the Complainant and its trademarks, attesting to the Respondent’s lack of rights or legitimate interests in the Domain Name, and uncovering the Respondent’s active concealment of its true identity by using a privacy service. For the same, the Panel finds the Respondent's passive holding of the Domain Name constitutes bad faith use of the Domain Name.
Additionally, the Panel notes that the Response indicates the Respondent would delete the Domain Name immediately. The Respondent had been granted a fair chance to rebut the Complainant’s contentions but chose not to do so. The Panel therefore views its Response as a further indication of the Respondent’s bad faith. The Panel is also aided in this finding by the Respondent’s previous use of the Domain Name, which clearly evinced the Respondent’s intent to capitalize on the Complainant’s trademark.
In view of all the above, the Panel decides that the Domain Name has been registered and is being used in bad faith. 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 Domain Name be transferred to the Complainant.
Jacob (Changjie) Chen
Sole Panelist
Date: June 11, 2015
1 The Complaint was originally filed against a privacy service. The Registrar subsequently revealed the underlying registrant.
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