The Complainant is K Limited of St. Julians, Malta, represented by Redd Solicitors LLP, United Kingdom of Great Britain and Northern Ireland ("United Kingdom").
The Respondent is Pablo Park of Seoul, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with TurnCommerce, Inc. DBA NameB (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 5, 2015. On October 6, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 7, 2015, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 8, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 28, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 29, 2015.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on November 9, 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 is an interactive social and mobile gaming company, which is part of the King Digital Entertainment PLC group of companies.
The Complainant has enjoyed recognition due to its mobile and social games, which include several titles.
The Complainant has reached over 324 million average users across its growing network on web and mobile platforms.
The Complainant is the owner of the following trademark registrations (among others):
Registration No.
Filing Date/Granting Date
Trademark
Class
Territory
13175047
August 14, 2014/January 6, 2015
BLOSSOM BLAST
9, 25 and 41
European Community
010452911
November 29, 2011/April 6, 2014
SAGA
9, 25 and 41
European Community
4762628
November 29, 2011/ June 30, 2015
SAGA
9, 25 and 41
United States of America
The Complainant is the owner of the following trademark applications (among others):
App. No.
Filing Date
Trademark
Class
Territory
14407671
July 24, 2015
BLOSSOM BLAST SAGA
9 and 41
European Community
14465819
August 12, 2015
BLOSSOM BLAST SAGA (stylized)
9 and 41
European Community
86703732
July 24, 2015
BLOSSOM BLAST SAGA
9 and 41
United States of America
86705271
July 27, 2015
BLOSSOM BLAST
9 and 41
United States of America
Previous UDRP decisions have acknowledged success in connection with Complainant's games (see K Limited v. WhoisGuard, Inc. / Nguyen Hung Manh,WIPO Case No. D2014-1448; K Limited v. Simon Collins,WIPO Case No. D2015-0718).
In March 2015, the Complainant released an early version of a game called "Blossom Blast", and in May 2015 the Complainant launched a revised version of that game under the title "Blossom Blast Saga".
The disputed domain name was registered on July 29, 2015. 5. Parties' Contentions A. Complainant
The Complainant argues the following: A. Identical or Confusingly Similar
That other UDRP panels have previously found that the incorporation of a trademark in its entirety in a disputed domain name may be sufficient to establish that a domain name is identical or confusingly similar to the trademark of a complainant.
That the generic Top Level Domain ("gTLD") ".com" is to be ignored when assessing the identity or confusing similarity between a trademark and a domain name.
That the use of a number of registered trademarks can give rise to their protection as a "family of registered marks". Where there is a "family" of trademarks, the likelihood of confusion results from the possibility that the consumer may be mistaken as to the provenance or origin of goods or services covered by the trademark applied for, or considers erroneously that the particular trademark is part of that family or series of marks.
That the disputed domain name incorporates both the trademark BLOSSOM BLAST and the trademark SAGA in their entirety, with only the addition of the suffix ".com", which is why the disputed domain name is identical to the Complainant's registrations taken together, and so it is confusingly similar to the Complainant's trademarks within the meaning of the Policy.
That the goodwill of its trademarks has generated unregistered common law rights in favor of the Complainant, adding to the confusing similarity between the disputed domain name and the Complainant's trademarks. B. Rights or Legitimate Interests
That, if the Respondent alleges that the disputed domain name was registered to create a fan site, other Panels have explained that, while "fan sites" may (depending on the facts) constitute legitimate noncommercial or fair use in the abstract (subject to an assessment of all relevant factors in each case), in order to constitute any such legitimate fair use the Respondent must have actually been using the disputed domain name (not simply allege to have made preparations for such use), which is why the Respondent has not been able to demonstrate a legitimate, noncommercial or fair use.
That neither the Complainant nor any other company in the Complainant's group of companies has authorized the Respondent to use the BLOSSOM BLAST or SAGA marks or any confusingly similar marks in any manner at all.
That as far as the Complainant is aware, the Respondent has not been commonly known by the disputed domain name, and that BLOSSOM BLAST SAGA has no ordinary meaning in common language.
That, on August 12, 2015, the website to which the disputed domain name resolved, advertised the disputed domain name for sale, requesting offers to purchase said domain name.
That contrary to the assertions of the Respondent stating "…I was intending to run a game community since Saga series has been my favourite games…" (found in the emails exchanged between the Complainant and the Respondent) the evidence on the record shows that the Respondent is seeking to exploit the BLOSSOM BLAST and SAGA names and trademarks and sell the disputes domain name. C. Registered and Used in Bad Faith
That the Respondent intentionally attempted 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.
That the Respondent acquired the disputed domain name primarily for the purpose of selling the domain name registration to the Complainant or to a competitor or other person for valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the disputed domain name.
That the Respondent used the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the Respondent's website (to which the disputed domain name resolved) by creating a likelihood of confusion with the Complainant's trademarks.
That the Respondent is attempting to profit from the reputation and goodwill of the Complainant.
That the Respondent admitted to be aware of the Complainant's games and that therefore it is reasonable to infer that, at the time the Respondent registered the disputed domain name, the Respondent was aware of the game BLOSSOM BLAST SAGA and the use by the Complainant of its corresponding trademarks and trademark applications.
That the registration and use in bad faith of the disputed domain name are supported by the fact that: (a) the Complainant owns trademark registrations for BLOSSOM BLAST and SAGA which had, at the date of registration of the disputed domain name, a strong and growing reputation; (b) the Respondent has no right or legitimate interests in the disputed domain name; (c) the Respondent has not hosted content at the website to which the disputed domain name resolves other than to offer it for sale; (d) the Respondent was aware of the use by the Complainant of its trademarks; and (e) the Respondent tried to sell the disputed domain name for sums in excess of reimbursement of its out-of-pocket costs of registration (mainly USD 1,800). B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant is requested to prove that each of the three following elements is satisfied:
(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.
As the Respondent has failed to submit a Response to the Complainant's contentions, the Panel may choose to accept as true all (or some) of the Complainant's reasonable allegations (Encyclopædia Britannica, Inc. v. null John Zuccarini, Country Walk,WIPO Case No. D2002-0487). A. Identical or Confusingly Similar
The Complainant is the owner of trademark registrations that cover the BLOSSOM BLAST and the SAGA brands.
The disputed domain name is confusingly similar to the Complainant's trademarks because it entirely incorporates the BLOSSOM BLAST trademarks and the SAGA trademarks.
The addition of the gTLD ".com" in this case is immaterial for purposes of assessing confusing similarity. It is a reiterated criteria that a UDRP panel will generally not take into account the gTLD ".com", because it has no legal significance (see Diageo p.l.c. v. John ZuccariniWIPO Case No. D2000-0541).
The Panel finds that the disputed domain name is confusingly similar to the Complainant's trademarks BLOSSOM BLAST and SAGA. The first requirement of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in the disputed domain name:
(i) Before any notice to the respondent of the dispute, the use by the respondent 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, a business, or other organization) has been commonly known by the disputed domain name, even if it 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.
There is no evidence showing that the Complainant has granted any license to the Respondent, or authorized the Respondent to use the trademarks BLOSSOM BLAST and/or SAGA in any manner.
The Panel finds that the Complainant made a prima facie case that the Respondent lacks rights or legitimate interest in the disputed domain name, which the Respondent, by not filing any response, did not rebut.
The Respondent did not submit any evidence showing any bona fide use, or preparations to use the disputed domain name with a bona fide offering of services, nor has the Respondent demonstrated that he is making a legitimate noncommercial or fair use of the disputed domain name. Since the Respondent's name seems to be Pablo Park (according to the Whois database), it is reasonable to infer that the Respondent has not been commonly known by the disputed domain name. On the contrary, the Complainant has proven to be the owner of trademarks such as BLOSSOM BLAST and SAGA.
The Respondent did not provide any evidence showing actual rights or legitimate interests, a situation that further indicates the apparent lack of rights or legitimate interests on the side of the Respondent (see Beyoncé Knowles v. Sonny Ahuja,WIPO Case No. D2010-1431; Six Continents Hotels, Inc. v. IQ Management Corporation,WIPO Case No. D2004-0272).
From the documents found on the electronic docket of this case file, there is no indication that may lead to consider that the Respondent might have rights or legitimate interests in the disputed domain name. Rather the opposite may be validly inferred (see K Limited and M Ltd. v. Whoisguard, Inc. / Raymond TanWIPO Case No. D2013-1986).
The evidence comprised on the record shows that the Respondent requested USD 1,800 in order to transfer the disputed domain name to the Complainant, and then (after noticing the possibility of facing a UDRP procedure) he requested USD 800 indicating that "...its 50% of the cost for filing a UDRP…".
This indicates that the Respondent was trying to obtain a commercial gain in excess of his documented out-of-pocket costs directly related to the disputed domain name, by registering a domain name incorporating the trademarks of the Complainant without any authorization or legitimate right to do so (see The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc.,WIPO Case No. D2000-0113). This fact demonstrates the Respondent's lack of rights or legitimate interests over the disputed domain name.
The second element of the Policy has been met. C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted 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 evidence found on the record shows the following:
a) That at the date of registration of the disputed domain name, the game BLOSOM BLAST SAGA had been downloaded in excess of 50,000 times and had received several reviews on Google Play;
b) That on August 3, 2015 the Complainant sent a letter to the Respondent indicating that the disputed domain name infringed the trademark rights of the Complainant and requested it to transfer the disputed domain name;
c) That on August 3, 2015 the Respondent replied to the Complainant's email stating that it was not his intention to infringe the rights of the Complainant and that he was only trying to run a game community since the "…saga series have been my favourite games…" (demonstrating his actual knowledge of the Complainant and its trademarks). The Respondent then asked for a sum of USD 1,800 to transfer the disputed domain name to the Complainant indicating that "…going into dispute will be a waste of time and resources for both of us…";
d) That on August 4, 2015, the Complainant indicated that it was only willing to pay for the fling costs of the disputed domain name;
e) That on August 6, 2015 the Respondent indicated "…I found that the cost of filing the UDRP is USD 1,500 and plus, so why don't you take the domain name from me at USD 800? This is 50% of the cost of filing the UDRP… if you reject the above offer I have no choice but to let you proceed with UDRP";
g) That on August 12, 2015 the website to which the disputed domain name resolved displayed a phrase indicating "…This domain is for SALE…Thank you for visiting our web site…If you have any inquiries please send us an email…[...]@…" . This assertion and document have not been challenged by the Respondent.
In light of the above, this Panel finds bad faith registration and use by the Respondent in connection with the disputed domain name due to the following:
(1) The Respondent did not rebut any of the arguments raised by the Complainant (and any of the evidence filed) finding that the Respondent knew of the Complainant and its trademarks when it acquired the disputed domain name (see MC Enterprises v. Mark SegalWIPO Case No. D2005-1270);
(2) There is no evidence of good faith by the Respondent in this case. The offer to sell the disputed domain name for valuable consideration in excess of the documented out-of-pocket costs, shows that the Respondent registered the disputed domain name in bad faith (a fact that has not happened in the present case) see Avnet, Inc. v. Aviation Network, Inc.,WIPO Case No. D2000-0046;
(3) The Panel notes that the website to which the disputed domain name currently resolves displays a picture of a water bottle with a lemon and the phrase "…Thank you for visiting our web site. If you have any inquiries please send us an email. email : […]@...".
In the absence of any credible evidence to suggest that the Respondent has any real intention to use the disputed domain name in connection with a fan site (as he indicated in the pre-commencement communications held with the Complainant), the Panel finds that the Respondent's intention was to derive commercial benefit from the disputed domain name on the back of the Complainant's goodwill; and
4) The clear intention of the Respondent was to sell the disputed domain name to the Complainant for a sum of money that exceeds the out-of-pocket costs related with the registration of the disputed domain name (see CBS Broadcasting, Inc. v. Gaddoor Saidi,WIPO Case No. D2000-0243; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Advance Magazine Publishers Inc. v Marcellod Russo,WIPO Case No. D2001-1049; and McMullan Bros., Limited, Maxol Limited, Maxol Direct Limited Maxol Lubricants Limited, Maxol Oil Limited Maxol Direct (NI) Limited v. Web Names Ltd,WIPO Case No. D2004-0078).
Therefore this Panel finds that the disputed domain name was registered and is being used in bad faith. The offer to sell the disputed domain name for a consideration exceeding the out-of-pocket registration costs constitutes bad faith registration and use under paragraph 4(b)(i) of the Policy (see Icar SPA v. ICAR WIPO Case No. D2000-0563)
The third element of the Policy has been met. 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.
Kiyoshi Tsuru
Sole Panelist
Date: November 23, 2015
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