The Complainant is Scottgames, LLC of Union, New Jersey, United States of America (“US”), represented by Nissenbaum Law Group, LLC, US.
The Respondents are Ong Dai Vu Hao of Lang Son, Viet Nam; Tran Tich Quan of Hanoi, Viet Nam; Delvin Dragon of Hanoi, Viet Nam and Tran Dai of Ho Chi Minh, Viet Nam. 2. The Domain Names and Registrars
The disputed domain names and are registered with Mat Bao Trading & Service Company Limited d/b/a Mat Bao (“Mat Bao”) while the disputed domain names , , and are registered with N, Inc. (“N LLC”) (Mat Bao and N LLC shall be individually referred to as the “Registrar” and collectively as the “Registrars”).
The disputed domain names , , , , , and shall be individually referred to as the “Disputed Domain Name” and collectively as the “Disputed Domain Names”. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 5, 2016. On July 6, 2016, the Center transmitted by email to the Registrars requests for registrar verification in connection with the Disputed Domain Names.
On July 7, 2016, the Registrar, N LLC transmitted by email to the Center its verification response confirming that Tran Dai is listed as the registrant of the Disputed Domain Name , and Delvin Dragon is listed as the registrant of the Disputed Domain Names , and and providing the contact details.
On July 13, 2016, the Registrar, Mat Bao transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. Accordingly, the Registrar, Mat Bao confirmed that Ong Dai Vu Hao is listed as the registrant of the Disputed Domain Name , and Tran Tich Quan is listed as the registrant of the Disputed Domain Name and provided the contact details.
The Center sent an email communication to the Complainant on July 15, 2016 providing the registrants and their contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 20, 2016 (the “Amended Complaint”).
On July 21, 2015, the Center sent an email communication to the parties in both English and Vietnamese regarding the language of the proceedings. On July 22, 2016, the Complainant submitted its request that English be the language of the proceedings. On July 20, 21 and 22, 2016, two of the Respondents submitted their requests that Vietnamese be the language of the proceedings.
The Center verified that the Complaint together with 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 Respondents of the Complaint, in both English and Vietnamese, and the proceedings commenced on July 27, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 16, 2016. The Respondents did not submit any formal Response. Accordingly, the Center notified the parties about the commencement of panel appointment process on August 17, 2016.
The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on September 1, 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
Mr. Cawthon is the creator, author and intellectual property owner of the computer games/mobile applications entitled “Five Nights at Freddy’s”, “Five Nights at Freddy’s 2”, “Five Nights at Freddy’s 3”, “Five Nights at Freddy’s 4” and “FNAF World” (collectively, the “Five Nights Games”); and also the owner of the numerous US trademarks including the mark FIVE NIGHTS AT FREDDY’S (US Trademark Registration No. 4,755,325 dated June 16, 2015) and FIVE NIGHTS AT FREDDY’S (US Trademark Registration No. 4,855,473 dated November 17, 2015) (collectively, the “Five Nights Marks”).
The Complainant, Scottgames, is a US based company, which is the contracting entity through which Mr. Cawthon’s intellectual property is licensed to third parties. Mr. Cawthon has granted the Complainant a license for the use of the copyrights and trademark rights related to the Five Night Games and the Five Nights Marks.
The Five Nights Games have been marketed, sold and downloaded worldwide using the Five Nights Marks. Through the present date, over 900,000 total copies of Five Nights computer games have been sold in North America and over 9,000,000 mobile application copies of Five Nights Games have been sold worldwide.
The Disputed Domain Name was created on September 15, 2015. The Disputed Domain Name was created on February 20, 2016. The Disputed Domain Name was created on May 21, 2016. The Disputed Domain Name was created on March 25, 2016. The Disputed Domain Name
was created on February 20, 2016. The Disputed Domain Name was created on February 20, 2016.
The Disputed Domain Names are being used to promote unauthorized versions of the Complainant’s computer games.
As indicated in the case file, the Complainant’s attorneys sent to the Respondent (Mr. Dai Vu Hao) a cease and desist letter on May 12, 2016 in which they asked for a voluntary transfer of the Disputed Domain Name. However, the Respondent did not reply. 5. Parties’ Contentions A. Complainant
The Complainant requests a consolidation of complaints against all Respondents of all six Disputed Domain Names into one Complaint on the ground of paragraph 4.16, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
Proceeding further on that basis, the Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:
(i) The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant contends that Mr. Cawthon, the creator, author and intellectual property owner of the Five Nights Games’ computer games/mobile applications and the owner of the numerous US trademarks including: FIVE NIGHTS AT FREDDY’S mark, FNAF mark and FNAF WORLD mark, has granted the Complainant a license for the copyrights and trademark rights related to the Five Night Games and the Five Nights Marks, including but not limited to, taking any action to prevent any and all illegal use or misuse of the Five Nights Marks and/or entering into license agreements with third parties to exploit the aforementioned intellectual property.
The Complainant further contends that all Disputed Domain Names incorporate one or more of the Five Nights Marks, thereby causing likelihood of confusion as to the source and/or sponsorship of the Disputed Domain Names. Particularly, the Complainant submits that the Respondents have incorporated the Five Night Marks into every one of the Disputed Domain Names by arguing that:
The Disputed Domain Name fully incorporates the FIVE NIGHTS AT FREDDY’S” mark, thereby causing likelihood of confusion as to the source and/or sponsorship of such Disputed Domain Name. The addition of “full” to the end of the FIVE NIGHTS AT FREDDY’S mark in the Disputed Domain Name does not remove any likelihood of confusion and only serves to imply that the Disputed Domain Name provided access to unauthorized and/or pirated, complete (or “full”) versions of the Complainant’s Five Nights Games.
The Disputed Domain Name fully incorporate the FNAF and FNAF WORLD marks, thereby causing likelihood of confusion as to the source and/or sponsorship of such Disputed Domain Name. The addition of characters “az” to the end of the FNAF and FNAF WORLD marks in the Disputed Domain Name does not remove any likelihood of confusion.
The Disputed Domain Name incorporates the dominant portion of the FIVE NIGHTS AT FREDDY’S mark, thereby causing likelihood of confusion as to the source and/or sponsorship of such Disputed Domain Name. Particularly, the first and dominant part of the FIVE NIGHTS AT FREDDY’S mark is identical to the Disputed Domain Name .
The Disputed Domain Name fully incorporates the FIVE NIGHTS AT FREDDY’S mark and the FNAF mark, thereby causing likelihood of confusion as to the source and/or sponsorship of such Disputed Domain Name.
The Disputed Domain Name fully incorporates the FNAF mark, thereby causing likelihood of confusion as to the source and/or sponsorship of such Disputed Domain Name. The addition of the numeral “4” to the end of the FNAF mark in the Disputed Domain Name does not only remove any likelihood of confusion, but also increases the likelihood of confusion and informs Internet users that the corresponding website provides access to an unauthorized and/or pirated version of Complainant’s “Five Nights at Freddy’s 4” game.
The Disputed Domain Name fully incorporates the FIVE NIGHTS AT FREDDY’S mark, thereby causing likelihood of confusion as to the source and/or sponsorship of such Disputed Domain Name. The addition of characters “az” to the end of the FIVE NIGHTS AT FREDDY’S mark in the Disputed Domain Name does not remove any likelihood of confusion.
(ii) The Respondents have no rights or legitimate interests in respect of the Disputed Domain Names.
The Complainant submits that the Respondents have no rights or legitimate interests with respect to any of the Disputed Domain Names by arguing that none of the three circumstances demonstrating rights or legitimate interests in the Disputed Domain Names set forth in the Policy shall apply; and therefore, the burden of proving the existence of legitimate interest will be shifted to the Respondents:
First, the Complainant submits that the Respondents cannot demonstrate rights or legitimate interests in the Disputed Domain Names under paragraph 4(c)(i) of the Policy by arguing that: (i) the Five Nights Marks were registered with the United States Patent and Trademark Office (“USPTO”) before the Respondents registered any of the Disputed Domain Names; (ii) neither the Complainant nor Mr. Cawthon nor their agents have granted the Respondents any license or other authorization to use the Five Nights Marks; (iii) there is no evidence of the Respondents’ use of, or demonstrate preparations to use, the Disputed Domain Names or a name corresponding to the Disputed Domain Names in connection with bona fide offering of goods or services.
Second, the Complainant submits that the Respondents cannot demonstrate rights or legitimate interests in the Disputed Domain Names under paragraph 4(c)(ii) of the Policy by arguing that: (i) the WhoIs database records for the Disputed Domain Names reveal no evidence to suggest that the Respondents are commonly known or could be commonly known by the Disputed Domain Names; (ii) there is no other evidence in the record to suggest that the Respondents have been commonly known by the Disputed Domain Names or any other name similar to the Disputed Domain Names.
Third, the Complainant submits that the Respondents cannot demonstrate rights or legitimate interests in the Disputed Domain Names under paragraph 4(c)(iii) of the Policy by arguing that: (i) the Respondents have specifically chosen to utilize the Five Nights Marks in the Disputed Domain Names to direct Internet traffic to the corresponding websites, which provide unauthorized and/or pirated, playable versions of the Five Nights Games along with unauthorized derivative works of the Five Nights Games, therefore, generating advertising revenue from the use of the Five Nights Marks in the Disputed Domain Names; (ii) the Respondents use the Disputed Domain Names to compete with the Complainant by promoting unauthorized and/or pirated, free, payable versions of the Five Nights Games, which the Complainant offers for sale.
(iii) The Disputed Domain Names were registered and are being used in bad faith.
The Complainant contends that the Respondents have registered and currently use the Disputed Domain Names in bad faith:
First, the Complainant argues that the Respondents’ verbatim use of the Complainant’s famous Five Nights Marks is evidence of bad faith as (i) each of the Disputed Domain Names incorporates the Five Night Marks and five of six Disputed Domain Names contain at least one of the Five Nights Marks in its entirety; and (ii) neither the Complainant nor Mr. Cawthon nor their agents have authorized these actions.
Second, the Complainant contends that the Respondents’ use of the Disputed Domain Names is to promote, inter alia, unauthorized and/or pirated versions of the Five Nights Games and unauthorized, substandard derivative works, therefore, enabling them to attract Internet users to the associated websites and generate advertising revenue.
Third, the Complainant submits that the Respondents have demonstrated bad faith in attempting to avoid the Complainant’s efforts to enforce its intellectual property rights by arguing that: (i) in response to the Complainant’s notices of infringement, Mr. Dai Vu Hao, one of the Respondents, changed the Internet Service Provider (“ISP”) hosting the Disputed Domain Name several times, arguably seeking to avoid the consequences of the Complainant’s efforts to enforce its intellectual property rights; (ii) the Disputed Domain Name was created by the Respondents to evade the Complainant’s cease and desist efforts with regard to the Disputed Domain Name .
Fourth, the Complainant further submits that the fact that the Respondent Delvin Dragon registered three of the six Disputed Domain Names which incorporate the Complainant’s Five Nights Marks and are used to host unauthorized and/or pirated versions of the Five Nights Games can further evidences the Respondents’ bad faith.
Fifth, the Complainant also argues that the Respondents’ improper use of privacy services and the lack of accuracy of the underlying registrant’s contact information revealed by Respondents’ privacy services in this matter can be further evidence of the Respondents’ bad faith. B. Respondents
The Respondents did not submit any formal reply to the Complainant’s contentions. 6. Discussion and Findings A. Procedural Issues
(i) Respondent’s identity
The Panel notes that the present case involves privacy and/or proxy registration services. At the time the Complaint was filed on July 5, 2016, two of the Respondents were identified as Whois Privacy Protection Services, Inc. and Privacy Protection services, Inc. d/b/a PrivacyP. On July 7, 2016 the Registrar N revealed the underlying registrants as Tran Dai and Delvin Dragon. The registrar verification dated July 13, 2016 from the Registrar Mat Bao also revealed another underlying registrant, Tran Tich Quan, instead of Privacy Protection services, Inc. d/b/a PrivacyP as initially identified.
On July 19, 2016, the Complainant filed an Amended Complaint, replacing the respondents named in the initial Complaint by the underlying registrants, and submitted further evidence concerning these newly-identified Respondents.
Therefore, in accordance with paragraph 4.9, the WIPO Overview 2.0, the Panel determines the identity of the proper respondent in this case be the disclosed underlying registrants as named in the Amended Complaint filed on July 19, 2016.
(ii) Consolidation
The Complainant has requested that the Complaint be consolidated against all of the Respondents of all the Disputed Domain Names.
Paragraph 10(e) of the Rules provides for the consolidation of multiple domain name disputes: “A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules”. Under paragraph 4.16 of the WIPO Overview 2.0, proceedings against more than one respondent may be consolidated where “(i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties”.
UDRP panels have generally held that a single complaint may be brought against multiple respondents and domain names when the domain names or websites to which the domain names resolve are subject to common control, and where the consolidation would be fair and equitable to all parties.
In this case, the undisputed evidence indicates that all of the Disputed Domain Names are subject to common control. Particularly:
First, four of the Disputed Domain Names (i.e. , , and ) are registered with the same Registrar, N LL; and two of Disputed Domain Names (i.e. and ) are registered with the same Registrar, Mat Bao. In other words, all of the Disputed Domain Names are currently registered to one of two common Registrars, Mat Bao and N LLC. In addition, three of the Disputed Domain Names (i.e. , and ) were created on the same date of February 20, 2016. Further, three Disputed Domain Names , and share the same contact information (including addresses and phone numbers in Viet Nam) and the same email.
Second, it is sufficiently evidenced by the Complainant that five of the Disputed Domain Names (i.e. , , , , and ) have previously shared the exact same privacy/proxy service (i.e. WhoIs Privacy Protection Services, Inc) although presently, the Disputed Domain Name has been changed to Mat Bao.
Third, all of the Disputed Domain Names resolve to the same website (i.e. an almost identical layout, descriptions and host unauthorized and/or pirated versions of the Complainant’s computer games/mobile applications). Further, it is sufficiently evidenced by the Complainant that the Respondents’ websites share several identical descriptions of unauthorized and/or pirated versions of the Complainant’s computer games/mobile applications. Particularly, from the case file, it is clear to the Panel that as of June 29, 2016, five of six Disputed Domain Names (i.e. , , , , and ) include the following identical and erroneous description of the recent games in which the Complainant has rights, titled “FNAF World”: “…free online to get a bunch of interests and enjoyment now! Freddy, Bonnie, Chica, Foxy coming from FNAF games are waiting for you ahead in this awesome FNAF World game made by a fan. As you see, the fan-made game offers the familiar animatronics, but their personalities have completely changed! They have stalked you, they have attacked you, but now, they’re being very adorable and friendly! The game is about the battle between Freddy’s team and the wicked giant robot. There is a wide range of weapons and abilities of animatronics that you can use to fight against the enemy. Just choose from them and try your best to annihilate the foe. Keep an eye on the power”.
Fourth, it is clear to the Panel from the case file that five of six Disputed Domain Names have shared the same IP Address (i.e. 146.0.79.135). In addition, it is also evidenced that on May 16, 2016, four of six Disputed Domain Names shared the same Google Analytics Tracking ID and Property Number UA-77339520, while the other Disputed Domain Names had the same ID and Number UA-70503722. The Internet traffic is redirected between the Disputed Domain Names. Particularly, although being associated with three different registrants, it is clear that the Disputed Domain Names , have previously directed Internet traffic to the Disputed Domain Name .
In this instant case, the Panel also finds that consolidation would avoid unnecessary duplication of time, effort and expense and ultimately would be fair and equitable to all parties (e.g. Fulham Football Club (1987) Limited, v. Domains by Proxy, Inc./ Official Tickets Ltd ,WIPO Case No. D2009-0331).
Based on the above, the Panel is satisfied that the Disputed Domain Names are subject to common control, and it would be fair and equitable to all parties to proceed with the consolidation.
(iii) Language of the Proceedings
The Complaint was filed in the English language on July 5, 2016. The Amended Complaint was filed in the English language on July 20, 2016. On July 7, 2016, the Registrar, N LLC, informed that the language of registration agreements for four Disputed Domain Names (i.e. , , and ) is English. On July 13, 2016, the Registrar, Mat Bao, informed that the language of the registration agreement for remaining two Disputed Domain Names (i.e. and ) is Vietnamese.
On July 20, and July 21, 2016, Ong Dai Vu Hao an Tran Tich Quan, two of the Respondents and the registrants of the Disputed Domain Names and , respectively sent email communications requesting that Vietnamese to be the language of the proceeding and that all of documents of the Complainant must be translated into Vietnamese.
As the Complaint was filed in English, the Center, in its notification dated July 21, 2015, in English and Vietnamese, invited the Complainant to submit either (i) satisfactory evidence of an agreement between the Complainant and the Respondents to the effect that the proceeding should be in English, or a translation of the Complaint in Vietnamese, or (ii) a substantiated request for English to be the language of the proceeding.
On July 22, 2016, the Complainant confirmed its request that English be the language of the proceeding.
According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Similar to previous UDRP decisions, the Panel finds that the spirit of paragraph 11(a) of the Rules is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfortability with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors (see, e.g., Deutsche Messe AG v. Kim Hyungho,WIPO Case No. D2003-0679).
In the present case, in consideration of the above circumstances of the proceeding, including, but not limited to
(i) nationality of the parties (i.e. U.S. and Viet Nam);
(ii) the fact that four of the six Disputed Domain Names in this matter are subject to English language registration agreements, and that as mentioned above, all these six Disputed Domain Names are subject to a common control, indicating that the underlying registrants of these six Disputed Domain Names have knowledge of the English language;
(iii) all of the Disputed Domain Names resolve to websites in English; and
(iv) the Complainant does not appear to be able to communicate in Vietnamese, and therefore, if the Complainant was required to have the submitted documents translated into Vietnamese, the proceeding would be unduly delayed, and the Complainant would have to incur substantial expenses for translation;
(v) in the interest of fairness to both parties as well as the Panel’s obligation under paragraph 10(c) of the Rules, which provides that “the Panel shall ensure that the administrative proceeding takes place with due expedition”,
the Panel hereby decides, under paragraph 11(a) of the Rules, that the Panel accepts the Complaint and documentation submitted by the Complainant in English and shall render its decision in English.
(iii) The Respondents’ Failure to Respond:
The Respondent’s failure to file a response does not automatically result in a decision in favor of the Complainant (see, e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn,WIPO Case No. D2010-1413 and M. Corentin Benoit Thiercelin v. CyberDeal, Inc.,WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondents’ default.
In accordance with paragraph 4(a) of the Policy, in order to decide on the remedy sought by the Complainant, the Panel will examine whether each of the following three elements are present:
(i) the Disputed Domain Names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) the Disputed Domain Names have been registered and are being used in bad faith. B. Identical or Confusingly Similar
The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the Disputed Domain Names are identical or confusingly similar to its trademark.
Firstly, the Panel finds that the Complainant has clearly evidenced that it has trademark rights to Five Nights Marks before the Disputed Domain Names were registered. Particularly, the Complainant sufficiently demonstrated and evidenced that it has a license for use of the copyrights and trademark rights related to the Five Night Games and the Five Nights Marks granted by Mr. Cawthon, the creator, author and intellectual property owner of the Five Nights Games’ computer games/mobile applications and also the owner of the numerous US trademarks including: the FIVE NIGHTS AT FREDDY’S mark, “ FNAF mark and the FNAF WORLD mark; and the registration of the mark FIVE NIGHTS AT FREDDY’S (US Trademark Registration No. 4,755,325 dated June 16, 2015) is prior to the registration of all Disputed Domain Names. Also, the Complainant has sufficiently demonstrated and evidenced that it had a lengthy use of its trademark for its commercial activities, and in particular to sell copies of Five Nights computer games and mobile application of Five Nights Games worldwide.
Secondly, all of the Disputed Domain Names comprise a confusingly similar approximation with at least one of the distinctive Five Nights Marks in which the Complainant has trademark rights. Particularly:
The Disputed Domain Name comprises the Complainant’s distinctive FIVE NIGHTS AT FREDDY’S mark in which the Complainant has trademark rights. The difference between the Disputed Domain Name and the trademark is the addition of the descriptive term “full”, which in the field of online games, has a suggestive meaning to imply that Internet users can access to a “full” version of the “Five Nights at Freddy’s” games at the Disputed Domain Name. The Panel finds that “Five Nights at Freddy’s” remains the dominant element in the Disputed Domain Name. It is well established that the addition of a descriptive or common word after a distinctive trademark does not prevent confusing similarity, thus, in the Panel’s view, the addition of the said word does nothing to distinguish the Disputed Domain Name from the trademark FIVE NIGHTS AT FREDDY’S, nor to dispel confusing similarity, as it was found in previous UDRP decisions (see, e.g., Apple Inc. v. Ukolen, Poste restante / Domain Admin, Whois Protection Hulmiho,WIPO Case No. D2015-0461; AB Electrolux v. Ilgaz Fatih Micik,WIPO Case No. D2009-0777; Aktiebolaget Electrolux v. ibp,WIPO Case No. D2013-0795; AB Electrolux v. Ong Bui TrungKien,WIPO Case No. D2012-2320).
The Disputed Domain Name comprises the distinctive FNAF WORLD mark in which the Complainant has trademark rights. The difference between the Disputed Domain Name and the trademark FNAF WORLD is the addition of the characters “az” to the end of the FNAF WORLD mark. The Panel finds that FNAF WORLD remains the dominant element in the Disputed Domain Name. It is well established that the addition of a common word and/or characters after a distinctive trademark does not prevent confusing similarity, thus, in the Panel’s view, the addition of the said suffix does nothing to distinguish the Disputed Domain Name from the trademark, nor to dispel confusing similarity, as it was found in previous UDRP decisions (see, e.g., Apple Inc. v. Ukolen, Poste restante / Domain Admin, Whois Protection Hulmiho, supra; AB Electrolux v. Ilgaz Fatih Micik, supra; Aktiebolaget Electrolux v. ibp, supra; AB Electrolux v. Ong Bui TrungKien, supra).
The Disputed Domain Name incorporates the portion “Five Nights at” of FIVE NIGHTS AT FREDDY’S mark in which the Complainant has trademark right. In this regard, the Panel finds that (i) “Five Nights at” is the first and dominant portion of the FIVE NIGHTS AT FREDDY’S mark and (ii) while the Disputed Domain Name is not identical to the FIVE NIGHTS AT FREDDY’S mark, the first and dominant part of the mark is identical to the Disputed Domain Name. Similar to previous URRP decision, in comparing two marks, or a mark and a domain name, with respect to a likelihood of confusion, special attention should be paid to the first part of the mark (see, e.g., eCrush, Inc. v. M.H. Cho,WIPO Case No. D2006-0339; Workman Publishing Co., Inc., Patricia Schultz v. ICE,WIPO Case No. D2011-0414; Jackson National Life Insurance Company v. Transure Enterprise Ltd,WIPO Case No. D2012-0335). In this instant case, as noted, the first and dominant part of the Disputed Domain Name is identical to the FIVE NIGHTS AT FREDDY’S mark. As such, the Disputed Domain Name is confusingly similar to the FIVE NIGHTS AT FREDDY’S mark within the meaning of paragraph 4(a)(i) of the Policy, as it was found in previous UDRP decisions (see, e.g., eCrush, Inc. v. M.H. Cho, supra, Workman Publishing Co., Inc., Patricia Schultz v. ICE, supra; Jackson National Life Insurance Company v. Transure Enterprise Ltd, supra).
The Disputed Domain Name fully incorporates both of the Complainant’s FIVE NIGHTS AT FREDDY’S mark and the FNAF mark in which the Complainant has trademark rights separating them by a hyphen “-”. In this regard, the Panel, similar to previous UDRP decision, finds that the Disputed Domain Name is confusingly similar to the Complainant’s marks because it incorporates both of the Complainant’s marks in their entirety and the addition of a hyphen is insufficient to distinguish the Disputed Domain Name from the Complainant’s marks (see, e.g., Sony Ericsson Mobile Communications AB, Telefonaktiebolaget LM Ericsson, Sony Corporation v. Aylin Dzhelilova,WIPO Case No. D2006-1568).
The Disputed Domain Name comprises the distinctive FNAF mark in which the Complainant has trademark rights. The difference between the Disputed Domain Name and the trademark FNAF is the addition of the hyphen “-” and the number “4” to the end of the FNAF mark. The Panel finds that “FNAF” remains the dominant element in the Disputed Domain Name. It is well established that the addition of a number and/or a hyphen after a distinctive trademark does not prevent confusing similarity, thus, in the Panel’s view, the addition of the said number and hyphen does nothing to distinguish the Disputed Domain Name from the FNAF trademark, nor to dispel confusing similarity, as it was found in previous UDRP decisions (see, e.g., Sony Ericsson Mobile Communications AB, Telefonaktiebolaget LM Ericsson, Sony Corporation v. Aylin Dzhelilova, supra; NXP B.V. v. xu jie, guang zhou ye ma dian zi ke ji you xian gong si,WIPO Case No. D2016-0274).
The Disputed Domain Name comprises the distinctive FIVE NIGHTS AT FREDDY’S mark in which the Complainant has trademark rights. The difference between the Disputed Domain Name and the FIVE NIGHTS AT FREDDY’S trademark is the addition of the characters “az” to the end of the FIVE NIGHTS AT FREDDY’S mark. The Panel finds that FIVE NIGHTS AT FREDDY’S remains the dominant element in the Disputed Domain Name. It is well established that the addition of a common word and/or characters after a distinctive trademark does not prevent confusing similarity, thus, in the Panel’s view, the addition of the said suffix does nothing to distinguish the Disputed Domain Name from the trademark, nor to dispel confusing similarity, as it was found in previous UDRP decisions (see, e.g., Apple Inc. v. Ukolen, Poste restante / Domain Admin, Whois Protection Hulmiho, supra, AB Electrolux v. Ilgaz Fatih Micik,WIPO Case No. D2009-0777; Aktiebolaget Electrolux v. ibp, supra; AB Electrolux v. Ong Bui TrungKien, supra).
The Panel finds, similarly to other prior UDRP panels, that the addition of the generic Top-Level Domain “.com” to all of the Disputed Domain Names does not constitute an element so as to avoid confusing similarity for the first element purposes (see, e.g., Volkswagen AG v. Privacy Protection Services,WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz,WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc.,WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, the Panel finds that all of the Disputed Domain Names are confusingly similar to the Five Nights Marks in which the Complainant has trademark rights, and the first element under paragraph 4(a)(i) of the Policy is established. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondents’ rights or legitimate interests in the Disputed Domain Names for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:
“When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. 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 Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization of any kind to use the Five Nights Marks has been granted by Mr. Cawthon or the Complainant or their agent to any or all of the Respondents and there is no evidence that each or all of the Respondents hold such rights. Thus, the Respondents have no rights in the Five Nights Marks.
Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a rights or legitimate interests in a domain name if its use meets certain requirements, which are described in the decision Oki Data Americas, Inc. v. ASD, Inc, supra:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the Complainant trademarked goods;
- the site itself must accurately disclose the respondent’s relationship with the trademark owner; and
- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.
The Panel finds, similarly to other prior UDRP panels, that the Oki Data criteria are appropriate even when the respondent is not an authorized reseller, such as it is the present case (see, e.g., National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc.,WIPO Case No. D2007-1524).
However, in this particular case, the Panel finds that the Respondents do not fulfill the Oki Data criteria. On the websites under the Disputed Domain Names which provide unauthorized and/or pirated versions of the Complainant’s computer games/mobile applications and computer games/mobile applications from manufacturer/producer other than the Complainant, the Respondents do not place accurate statement or disclaimer disclosing the lack of relationship with the Complainant. Further, the use of the Complainant’s Five Nights Marks and copyrighted works from or related to Five Nights Games on the websites may be further evidence of the Respondents’ intention to create an impression that the Respondents are the Complainant or a false association with the Complainant.
For all foregoing reasons, the Panel finds the Respondents’ use of the Disputed Domain Names cannot be considered to be a bona fide offering of goods or services.
Moreover, the Panel finds that there is no evidence that would suggest that any or all of the Respondents, as an individual(s), business(es), or other organization(s), have been commonly known by the Disputed Domain Names. In fact, Delvin Dragon, the registrant of three Disputed Domain Names, sent an email to the Center on July 19, 2016, stating that “Please don’t provide information about domain which associated with me. It no help in this case”.
The Panel further finds that no evidence has been presented that the Respondents are making a legitimate noncommercial or fair use of the Disputed Domain Names. To the contrary, the Respondents have used the websites connected to the Disputed Domain Names to provide unauthorized and/or pirated versions of the Complainant’s computer games/mobile applications and computer games/mobile applications from manufacturer/producer other than the Complainant. In fact, as it appears following the Complainant’s assertions and evidence with regard to the Respondents’ registration of the Disputed Domain Names, the Respondents had full knowledge of the Complainant’s trademarks and had an intention to gain profit by riding on the good reputation of the Complainant and attract Internet users to websites that provide unauthorized and/or pirated versions of the Complainant’s computer games/mobile applications and computer games/mobile applications from manufacturer/producer other the Complainant.
Accordingly, the Panel finds that the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names. The second element under paragraph 4(a)(ii) of the Policy is established. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an instance of “registration and use of a domain name in bad faith”. Registration in bad faith
The Panel finds that the Complainant has put forth evidence that the Respondents have registered and used the Disputed Domain Names in bad faith. The Respondents did not reply to the Complainant’s contentions and, therefore, has not refuted the Complainant’s contentions.
The Panel has considered the Complainant’s assertions and evidence with regard to the Respondents’ registration of the Disputed Domain Names. In this regard, the Panel finds that the Complainant’s Five Nights Games have been sold on worldwide basis and the Complainant’s Five Night Marks have been registered in the US. Five of six Disputed Domain Names comprises at least one of the Five Nights Marks in its entirety, adding only the hyphen or common or descriptive words. “Five Nights at Freddy’s” is being used in the Complainant’s Five Nights Marks, trade name and Five Nights Games which predate the registration of all Disputed Domain Names.
Also, the Panel finds that given the fact that the registration of FIVE NIGHTS AT FREDDY’S mark predates the registration of all Disputed Domain Names and the Complainant’s Five Nights Marks indicate nothing, but, the Complainant’s widely known Five Nights Games, which are sold prior to the registration of all Disputed Domain Names, it is very unlikely that the Respondents would have registered the Disputed Domain Names incorporating the Five Nights Marks without knowledge of the trademark (see Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne,WIPO Case No. D2010-0240; Volkswagen AG v. Swiss Recruitment,WIPO Case No. D2013-0534).
These facts show that the Respondents did not register the Disputed Domain Name in a fortuity. Given the use of the Disputed Domain Names, the Respondents obviously knew of the Complainant and the Five Nights Marks in which the Complainant has trademark rights when they registered the Disputed Domain Names, and the Panel considers the registration an attempt by the Respondents as to take advantage of the Complainant’s goodwill. Use in bad faith
On the date of this Decision, the Panel accessed all Disputed Domain Names and found that: The Disputed Domain Names and resolve to inactive websites, and four remaining Disputed Domain Names resolve to active websites providing unauthorized and/or pirated versions of the Complainant’s computer games/mobile applications and computer games/mobile applications from manufacturer/producer other than the Complainant. In this regard, the Panel notes that it is well proved and evidenced by the Complainant that by the date on which the Complaint was filed, the websites under all of the Disputed Domain Names had been used for providing unauthorized and/or pirated versions of the Complainant’s computer games/mobile applications and computer games/mobile applications from manufacturer/producer other than the Complainant. The Respondents’ further taking down of the website does not alter the Panel’s finding.
With the said facts, the Panel finds that the Respondents intentionally registered and used the Disputed Domain Names for commercial gain and that the Respondents’ actual use of the Disputed Domain Names is to attract Internet users to websites that provide unauthorized and/or pirated versions of the Complainant’s computer games/mobile applications and computer games/mobile applications from manufacturer/producer other than the Complainant. Such behaviours are indicative of bad faith within the meaning of paragraph 4(b)(iv) of the Policy, on the part of the Respondent (see Aktiebolaget Electrolux v. Jose Manuel,WIPO Case No. D2010-2031).
In addition, the Panel notes the fact that the Respondents received a cease-and-desist letter and Notice of Infringement from the Complainant and none of the Respondents responded to it. Instead, the Respondents continued to use the Disputed Domain Names for active websites until the date they was notified of the commencement of the UDRP proceeding. In fact, until the date of this Decision, four Disputed Domain Names are resolving to active websites providing unauthorized and/or pirated versions of the Complainant’s computer games/mobile applications and computer games/mobile applications from manufacturer/producer other than the Complainant. This is further indication of the Respondents’ bad faith and their intention to capitalize on the reputation and goodwill of the Complainant’s trademarks even after the Respondents were informed by the Complainant under the cease-and-desist letter of such behaviors.
In addition, it is sufficiently evidenced by the Complainant that (i) in response to the Complainant’s notices of infringement, Mr. Dai Vu Hao, one of the Respondents, changed the Internet Service Provider (“ISP”) hosting the Disputed Domain Name several times, arguably seeking to avoid the consequences of the Complainant’s efforts to enforce its intellectual property rights; (ii) the Disputed Domain Name was created by the Respondents to evade the Complainant’s cease-and-desist efforts with regard to such Disputed Domain Name . These facts can be used to demonstrate the Respondents’ bad faith in attempting to avoid the Complainant’s efforts to enforce its intellectual property rights.
Taking into account all of the above and the available record, the Panel finds that the Disputed Domain Names were registered and are used by the Respondent in bad faith under paragraph 4(b)(iv) of the Policy, and the third element under paragraph 4(a)(iii) of the Policy is established. 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 Names, , , , , , and be transferred to the Complainant.
Pham Nghiem Xuan Bac
Sole Panelist
Date: September 15, 2016
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