The Complainant is Humble Bundle, Inc. of San Francisco, California, United States of America, represented by The McArthur Law Firm, United States of America.
The Respondent is Domain Admin, Whois Privacy Corp. of Nassau, Bahamas. 2. The Domain Name and Registrar
The disputed domain name is registered with Internet Domain Service BS Corp (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2016. On May 6, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 9, 2016, 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 proceeding commenced on May 11, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 31, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 1, 2016.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on June 7, 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 is a corporation founded in 2010. It provides a digital storefront for independent games, sold as “bundles”, the proceeds of which benefit a number of charities. The Complainant is the owner inter alia of United States of America (“USA”) registered trademark no. 4501010 for the word mark HUMBLE BUNDLE in international class 35 (online retail store services) filed on July 17, 2013 and registered on March 25, 2014, claiming a first use in commerce of December 17, 2010. The Complainant claims that its charitable contributions have given it significant notoriety and that the HUMBLE BUNDLE trademark is famous and extremely valuable.
Little is known of the Respondent, the name and address of which appear on the WhoIs record for the disputed domain name and appear to reference a privacy or proxy service situated in the Bahamas. No underlying registrant was revealed by the Registrar during the Center’s verification process. The disputed domain name was created on June 10, 2014. The website associated with the disputed domain name states that it offers free activation codes or access keys and downloads for computer games. The Complainant says that the Respondent is in fact distributing malware which purports to be free access keys and that the games are similar to those offered by the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to a trademark in which the Complainant owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant notes that the disputed domain name wholly incorporates the Complainant’s HUMBLE BUNDLE trademark and that it has expended a substantial amount of time and money promoting and marketing goods and services under such name and mark. The Complainant submits that the Respondent has never been an authorized representative or agent of the Complainant and that the disputed domain name was created long after the Complainant established its name and branding and filed and registered the HUMBLE BUNDLE trademark. The Complainant states that it would never grant authorization to use its mark to such a third party. The Complainant adds that the disputed domain name has not been used in connection with a bona fide offering of goods and services and is used in connection with the distribution of malware in an attempt to trade upon the Complainant’s goodwill. The Complainant contends that the Respondent’s use of the disputed domain name does not qualify as fair use. The Complainant asserts that the website associated with the disputed domain name gives the false impression that it is authorized or affiliated with the Complainant.
The Complainant contends that the Respondent registered the disputed domain name almost a year after the Complainant’s mark was registered and some four years after the Complainant began using the name “Humble Bundle” to identify its goods and services. The Complainant asserts that the Respondent intentionally uses the Complainant’s mark in image and likeness to lure consumers into believing that the website associated with the disputed domain name is affiliated with the Complainant. The Complainant adds that bad faith registration and use is an inescapable conclusion arising from the use of the disputed domain name for malware distribution and the fact that the Respondent uses nearly identical content to effect such distribution. The Complainant states that it would defy common sense to believe that the Respondent coincidentally selected the disputed domain name without knowledge of the Complainant and its trademark and that there is no plausible explanation for the Respondent’s registration and use of the disputed domain name other than a deliberate attempt to trade on the Complainant’s mark.
The Complainant asserts that it is more likely than not that the Respondent engaged in the alleged conduct with a bad faith intent to gain a commercial advantage in that the disputed domain name would necessarily result in the attraction of Internet users to the Respondent’s website in the belief that it has some connection with the Complainant’s trademark as to source, affiliation or endorsement when there is no such connection. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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. A. Identical or Confusingly Similar
The Panel notes that the disputed domain name is alphanumerically identical in the second level to the Complainant’s trademark with the substitution of a hyphen for the space between the two words “humble” and “bundle”. This substitution is of no significance as white space may not be represented in a domain name for technical reasons and it is common either to leave the space out, as in the Complainant’s own domain name , or to substitute a suitable character to denote a separation between individual elements within a domain name. The generic Top-Level Domain (“gTLD”) “.net” is required for technical reasons and is similarly of no significance for the purposes of comparison between the Complainant’s mark and the disputed domain name.
In these circumstances, the Panel finds that the Complainant has established the first element under the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain
name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for
commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or
legitimate interests in a domain name. Where the panel finds that a complainant has made out such a prima facie case, the burden of production shifts to the respondent to bring forward evidence of such rights or
legitimate interests (see the discussion in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
The Complainant has established the requisite prima facie case to the Panel’s satisfaction in this proceeding by virtue of its submissions that the Respondent has never been an authorized representative or agent of the Complainant, that the Complainant would not authorize the Respondent to use its HUMBLE BUNDLE mark in any event, that the disputed domain name has not been used in connection with a bona fide offering of goods and services, that the disputed domain name has been used in connection with the distribution of malware in an attempt to trade upon the Complainant’s goodwill and that such use does not qualify as fair use. In these circumstances, the burden of production shifts to the Respondent to bring forward evidence of its rights or legitimate interests. However, the Respondent has not filed a Response in the administrative proceeding, nor has it communicated in any other manner with the Center. Furthermore, the Panel has been unable to identify any potential rights or legitimate interests which the Respondent might have put forward had it engaged with the process.
In these circumstances, the Panel considers that the Respondent has failed to rebut the Complainant’s prima facie case regarding rights and legitimate interests and finds that the Complainant has established the second element under the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, 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 trade mark or service mark) or to a competitor of that complainant for valuable consideration in excess of respondent’s 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 trade mark 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 is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online 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.
In the present case, the record is somewhat lacking in evidential detail which might support the Complainant’s allegations, first, regarding the Respondent’s activities using the disputed domain name and secondly, relating to the extent and duration of the Complainant’s fame and goodwill allegedly established under the HUMBLE BUNDLE mark before the disputed domain name was created. In particular, there is almost no evidence before the Panel to support the Complainant’s submission that it began to offer computer games under the HUMBLE BUNDLE mark in 2010. The Panel has only been able to identify the first use in commerce date in the Complainant’s trademark as supportive of that contention and this is insufficient on its own to establish such use since 2010 (see the discussion in Dow Jones & Company, Inc. v. Idea Studios LLC dba Envent, WIPO Case No. D2009-1033 regarding limitations on the evidentiary value of such first use in commerce dates).
Nevertheless, the record does show that the Complainant’s HUMBLE BUNDLE trademark was registered in March 2014, some three months before the disputed domain name was created and that the mark itself was filed in July 2013, some eleven months earlier than such creation date. The Complainant has therefore demonstrated to the Panel’s satisfaction that it used the mark HUMBLE BUNDLE in connection with the supply of computer games before the disputed domain name was created.
The word “bundle” might be seen as a descriptive term for computer games which are supplied in a combined pack. However, the juxtaposition of this word with the word “humble” in connection such supply does not strike the Panel as an obvious one which a third party, unaware of the Complainant’s use of that term, would originate on a genuinely independent basis. Accordingly, and in the absence of any comment from the Respondent, the Panel considers that the Complainant has established on the balance of probabilities that the Respondent had knowledge of and may have intended to target the Complainant’s rights through its selection of the name “humble-bundle” for the second level of the disputed domain name.
To go any further, however, would require something more than the Complainant’s allegations and the scant evidence which is before the Panel. Nevertheless, the Panel has determined that in the particular circumstances of this case it is reasonable for it to undertake limited factual research restricted to visiting both the Complainant’s website and the website associated with the disputed domain name (see paragraph 4.5 of the WIPO Overview 2.0 on the topic of independent research by UDRP panels). The Panel has also determined that it is not necessary to issue a procedural order in this case inviting the Parties to comment on its review of such websites on the basis that the alleged content of both websites has already been described in the Complaint, that a screenshot of the Respondent’s website was supplied albeit somewhat cropped, and that that it is reasonable for the Panel to presume that each of the Parties is fully aware of the content which they have selected and published on their respective websites.
The Panel notes that the Respondent’s website follows a pattern that is similar to the Complainant’s website in the sense that each provides computer games or relative access codes for download with each game or bundle of games in a tiled or boxed format. The Panel further notes that the terms and conditions on the Respondent’s website terms reference the law of the USA, being the same jurisdiction as that in which the Complainant is based, thus indicating that this is the marketplace in which the Respondent operates or wishes to give the impression of operating, rather than the Bahamas, as the address in the WhoIs record for the disputed domain name might otherwise have indicated. In the Panel’s opinion, the similarity of the website structures and offerings, together with the identity of apparent jurisdiction and marketplace, coupled with the unusual nature of the Complainant’s name and mark are all features of this case that are strongly indicative of targeting and thus registration and use in bad faith in respect of the disputed domain name in accordance with the circumstances described in paragraph 4(b)(iv) of the Policy. Furthermore, the Respondent’s use of a privacy registration service which has continued the concealment of the “true” or “underlying” registrant constitutes an additional such indication in the circumstances of this case (see the discussion in paragraph 3.9 of the WIPO Overview 2.0).
Finally, the Complainant has made a direct allegation that the Respondent is distributing malware via the website associated with the disputed domain name in an attempt to confuse the Complainant’s consumers to download such malware in the belief that they are obtaining games bundles from the Complainant. If made out, this would in the Panel’s view constitute a further indication of registration and use in bad faith. However, the Complainant has provided no supportive evidence of the existence such malware and merely relies upon a bald assertion of distribution. On its own, and absent such evidence, the Panel would not typically find such an allegation to be made out. That said, when the allegation is considered in the context of the apparent targeting of the Complainant’s rights and the concealment of the Respondent’s identity, in terms of the features of the case outlined above, the Panel considers that as a bare minimum it calls for an answer from the Respondent. Indeed, the Panel considers that this is an allegation which the vast majority of respondents would want to address, given that it necessarily implies abusive conduct of a particularly serious nature. In the Panel’s opinion, such conduct goes well beyond the activities of the typical cybersquatter.
Despite this, the Respondent has chosen not to engage with the administrative proceeding to any extent. It has neither provided any explanation for the coincidence between its selection of the “humble bundle” name for the disputed domain name nor for its use of such name for a computer games website with similarities to that of the Complainant, nor for its continued concealment behind an apparent privacy service. Given the severity of the malware allegation, the Panel determines that it is appropriate to draw an adverse inference from the Respondent’s silence in that particular respect and considers that in the circumstances of this case such silence is a further indication of registration and use in bad faith.
In all of the above circumstances, the Panel finds that the disputed domain name has been registered and is being used in bad faith and accordingly that the Complainant has established the third element under 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.
Andrew D. S. Lothian
Sole Panelist
Date: June 21, 2016
Full & Egal Universal Law Academy