The Complainant is Supercell Oy of Helsinki, Finland, represented by Roschier Brands, Attorneys Ltd., Finland.
The Respondent is Nathan Kupp of Tustin, Michigan, United States of America / Domains By Proxy, LLC, Scottsdale, Arizona, United States of America ("US"). 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 9, 2016. On February 9, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 9, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 12, 2016 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 February 15, 2016.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 17, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 8, 2016. On March 4, 2016 the Respondent requested an additional four (4) calendar days in which to respond to the Complaint, the Center granted the extension in accordance with Paragraph 5(b) of the Rules. The new date of the Response was March 12, 2016.
The Response was filed with the Center on March 11, 2016.
The Center appointed Adam Taylor as the sole panelist in this matter on March 22, 2016. 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 distributes "Clash of Clans", a successful game for mobile devices. For example, it was the second highest revenue-generating app on Apple's App Store during July 2013. In December 2015 it was the top revenue generator on the App Store, bringing in some USD 59.7 million in that month alone.
The Complainant owns various registered trade marks for the term CLASH OF CLANS including European Union Trade Mark no. 011158086 filed September 2, 2012 and US trade mark no. 4327980 filed September 6, 2012, both in classes 9, 28 and 41.
The disputed domain name was registered on February 11, 2015.
The Respondent has used the disputed domain name for a website branded "ClashAuto" which offered for sale (1) a "bot" (abbreviation of "software robot") which enabled certain aspects of Complainant's game to be played in an automated manner and (2) purchase of user accounts for the Complainant's game. 5. Parties' Contentions A. Complainant
The following is a summary of the Complainant's contentions:
The Complainant's trade mark CLASH OF CLANS enjoys a very high reputation.
The disputed domain name is confusingly similar to the Complainant's trade mark for the following reasons:
1. Both start with the word "clash"; in trade mark practice the beginning of the mark has more relevance in assessing similarity as consumers pay more attention to this part of the mark.
2. The word "auto" is descriptive and non-distinctive and part of a combined term representing "automatic" as in compound words such as "autoalarm", "autofeed" and "autofocus". In the disputed domain name, the word "auto" refers to software playing the Complainant's game automatically on behalf of the software owner. Minor variations such as additional descriptive words are usually sufficient to avoid user confusion. In Supercell Oy v. WhoisP Ltd / Jordan Rash, Application Automation LLC, WIPO Case No. D2015-1445, the panel found that the domain name was confusingly similar to the Complainant's trade mark.
3. There is evidence that in practice the Complainant's trade mark is often abbreviated to "CLASH", increasing the likelihood of confusion between the Complainant's trade mark and the disputed domain name.
4. The likelihood of confusion is enhanced by the content of the Respondent's website which contains many references to the term "Clash of Clans", giving the impression that the disputed domain name is somehow linked to the Complainant.
The Respondent lacks rights or legitimate interests. To the Complainant's knowledge, the Respondent has not applied for any trade mark reflecting the disputed domain name. The Complainant has not licensed the Respondent to register the disputed domain name. The onus has shifted to the Respondent to prove rights or legitimate interests.
The disputed domain name has been registered primarily to disrupt the business of a competitor, namely the Complainant. The automated software disrupts the Complainant's game.
The Respondent's bot enables breaches of the Complainant's terms of service causing bans and other negative consequence for users of the Complainant's game. The Respondent is aware of the consequences of breaches of those terms as it claims that use of the Respondent's bot can avoid bans by the Complainant.
The Respondent's website also enables sale of accounts for the Complainant's game, which also breaches the Complainant's terms of service.
The Respondent attracts users to its website for commercial gain by using the Complainant's reputation to generate sales of the Respondent's bot.
The criteria set out in Paragraph 4(b) of the Policy are non-exhaustive. In this case the Respondent's use of images from the game, which are the Complainant's copyright, on the Respondent's website and on advertisements on its social media sites constitutes additional evidence of bad faith. B. Respondent
The following is a summary of the Respondent's contentions:
The disputed domain name is not confusingly similar to the Complainant's trade mark.
The Complainant's mark consists of three words, whereas the Respondent's sign "Clash Auto" consists of two. Only the word "clash" matches. The Complainant has no trade mark for that word. Hundreds of the Complainant's competitors use the same descriptive term.
To establish a likelihood of confusion, the matching word must be formative, whereas in fact it is non- distinctive and descriptive. The word is used for many software products including those for which the Respondent also provides services. These include mobile applications such as "Clash of Kings", "Clash of Dragons", "Clash of Lords", "Clash of Gods" and hundreds of others.
In the Complainant's game, the object is to establish a "clan" and fight against (clash) opposing "clans".
Therefor the word "clash" simply describes the object of the Complainant's game as well as hundreds of other games on the mobile market.
The Respondent uses the word "clash" as part of the domain name to host a website that provides automatic software ("auto") for all games that involve a violent conflict between forces ("clash").
No customer will assume that the Respondent is the same as the provider of the Complainant's mobile application as the website provides resources for many other popular "clash" games.
Customers will not be confused as the Respondent's software is not a mobile application; it can only be downloaded from the Respondent's website and operated from a desktop computer. The Complainant's game is not a computer program, just a mobile application which can only be run from a mobile device or emulator.
The Respondent has a legitimate interest in using the disputed domain name, and registered it in good faith, to offer the same named downloadable software of the same name to customers who play any game that involves a "clash" or violent conflict between forces.
The website clearly states that neither the website nor the software has any relation to the games' developers; which include the Complainant.
The Respondent did not register and does not use the disputed domain name for the purpose to sell to, or block, the Complainant or attempt to create a likelihood of confusion with the Complainant's mark. The disputed domain name is not similar to the Complainant's mark and it is used for a computer game, whereas the Complainant's game is a mobile application. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has rights in the mark CLASH OF CLANS by virtue of its registered trade marks as well as unregistered trade mark rights deriving from the extensive worldwide use of that name.
Paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") makes clear that the threshold test for confusing similarity under the UDRP involves a comparison between the trade mark and the disputed domain name to determine likelihood of Internet user confusion and that, in order to satisfy this test, the relevant trade mark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion. Paragraph 1.2 adds that application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.
Is the trade mark recognisable within the disputed domain name?
The Respondent observes that the only word in common is the term "clash", which is non-distinctive and descriptive of the object of the Complainant's game as well as that of many other third party mobile games.
However, there is evidence that the Complainant's game, which is plainly known to a vast number of Internet users, is often abbreviated to the first word "CLASH". And both parties agree that the second part of the disputed domain name, "auto", is a descriptive term denoting "automatic software".
Given the likelihood that, to many Internet users, the disputed domain name represents automatic software useable in connection with the Complainant's game, the Panel considers that the Complainant's trade mark is indeed recognisable with the disputed domain name.
The Panel adds that the same approach was taken by the Panel in Supercell Oy v. WhoisP Ltd / Jordan Rash, Application Automation LLC, supra, concerning the domain name which was also used to provided automated software for use in connection with the Complainant's game. That case addressed very similar issues to those arising here.
The Panel's conclusion is not affected by the apparent existence of other mobile games whose names also start with the term "clash". This issue is discussed further below.
It is worth noting also that this first element under the Policy is essentially a standing requirement. See paragraph 1.2 of WIPO Overview 2.0.
For the above reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant's trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 2.1 of WIPO Overview 2.0 explains the consensus view concerning the burden of proof regarding lack of rights or legitimate interests in UDRP cases:
"While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, 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. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant."
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
As to paragraph 4(c)(i) of the Policy, has the disputed domain name been used for a bona fide offering of goods or services?
The Respondent says that it has a legitimate interest in using the disputed domain name to offer the downloadable software bearing the same name "ClashAuto" to those who play any game that involves a "clash" or violent conflict between forces.
For reasons explained under the third element below, the Panel is not convinced that the Respondent has used the disputed domain name principally for the purpose of offering its software to anyone playing a "clash" game as opposed to players of the Complainant's game in particular. And, for reasons also explained below, the Panel does not consider that the Respondent's product directed at the Complainant's game could be considered to be bona fide for the purposes of the Policy.
Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
As mentioned above, the Respondent claims that it registered the disputed domain name to offer its software to those who play any of the many "clash" games, not just the Complainant's game. In support, the Respondent offers screenshots of two pages from its website. The first bears only a logo plus the words "Clash of Kings Bot. Clash of Kings Players are Using Bots to Farm Over 18 Million Wood and Food per Day! plus a "GET NOW". The second page consists of the same logo plus the words "Clash Royale Hack". Clash Royale Players are Using this Hack to Cheat Unlimited Germs per Day!".
The Respondent has not provided any more detail about its alleged use of the website for those "clash" games, let alone other such games. There is no information about the total number of "clash" games listed on the Respondent's site, or when they were added to the site, or how they compare with the Complainant's game in terms of reputation.
Accordingly the evidence of the Respondent's registration and use of the disputed domain name for non-Complainant "clash" games in somewhat thin.
Whereas the Complainant has exhibited multiple pages from the Respondent's site which include very detailed information about the Respondent's "Clash of Clans Bot" including extensive user guidance notes.
When viewed by the Panel, the Respondent's website had been rebranded to "AttackAuto" and the only "clash" game mentioned on the homepage was the Complainant's.
Accordingly, the evidence indicates that the Respondent's primary, if not only, purpose in registering and using the disputed domain name was to offer its "Clash of Clans Bot".
The Respondent strongly disputes that there will be likelihood of confusion, for example on the grounds that the Respondent's product involves a software download to a computer, whereas the Complainant's game is a software app. While the lack of a likelihood of confusion may be debatable, it is not necessary for the Panel to reach any conclusion on the point. Paragraph 4(b)(iv) of the Policy is simply one of a number of non-exhaustive factors indicative of bad faith registration and use.
In the Panel's view, the following circumstances amount to registration and use in bad faith, without the need to resort to the non-exhaustive factors in paragraph 4(b) of the Policy:
1. the Panel's finding above that the Respondent registered and used the disputed domain name principally for the purposes of its "Clash of Clans Bot";
2. the fact that the bot disrupts the Complainant's game by helping the Complainant's users breach the Complainant's terms of service (which prohibits use of such bots), thereby exposing them to bans and other sanctions – not denied by the Respondent;
3. the fact that the Respondent's website is also used to offer for sale accounts for the Complainant's game, also in breach of the Complainant's terms of service – again not denied; and
4. the Respondent's unauthorised use of images from the Complainant's game on its website – not denied.
For all of the above reasons, the Panel finds that the Complainant has established the third element of paragraph 4(a) 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 name, be transferred to the Complainant.
Adam Taylor
Sole Panelist
Date: April 11, 2016
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