Complainant is Scottgames, LLC of New Jersey, United States of America ("United States"), represented by Nissenbaum Law Group, LLC, United States.
Respondents are Domain Administrator, PrivacyG of Phoenix, Arizona, United States / Kris Miranda, DTDAFF of San Francisco, California, United States / Dang Ngo of Ho Chi Minh City, Viet Nam / Thuan Tran of Ho Chi Minh City, Viet Nam / Wiley Prince, DTD of New York, New York, United States / Duong Ngo Huynh, DTD SOFTWARE CO., LTD of Ho Chi Minh City, Viet Nam / Fidel Vance, Spiritual of Los Angeles, California, United States. 2. The Domain Names and Registrars
The following disputed domain names are registered with NameSilo, LLC (the "Registrar"): , , , , , , , , , , , , , , , , , and . The disputed domain name is registered with Tucows Inc. (the "Registrar"). All of these disputed domain names are referenced in this decision as the "Domain Names." 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 22, 2016. On November 23, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On November 23, 2016, the Registrar Tucows Inc. transmitted by email to the Center its verification response confirming that Respondent Kris Miranda, DTDAFF is listed as the registrant of the Domain Name and providing the contact details. On November 24, 2016, the Registrar NameSilo, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the remaining Domain Names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to Complainant on November 30, 2016 providing the registrant and contact information disclosed by the Registrars, and inviting Complainant to submit an amendment to the Complaint. In its communication, the Center also noted that pursuant to Rules, paragraph 3(c), "[t]he complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder." Accordingly, the Center requested that Complainant either:
(i) amend the Complaint adding the Registrar-disclosed registrants as formal Respondents and provide relevant arguments or evidence demonstrating that all named Respondents are, in fact, the same entity and/or that all domain names are under common control; and/or
(ii) file a separate complaint for any domain name(s) for which it is not possible to demonstrate that all named Respondents are in fact the same entity and/or that all domain names are under common control and indicate which domain name(s) will no longer be included in the current Complaint.
The Center also indicated that if Complainant chose to amend the Complaint, it "may also wish to consider including further facts or arguments in light of the new registrant information (e.g., as to the Respondent's rights or legitimate interests or bad faith)."
Complainant filed an amended Complaint on December 5, 2016. In its email conveying the Amended Complaint, Complainant stated that it added the Registrar-disclosed registrants as formal Respondents in the case and provided relevant arguments and evidence demonstrating that all Domain Names are under common control.
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 Respondent of the Complaint, and the proceedings commenced on December 6, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 26, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 28, 2016.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on January 10, 2017. 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
Scott Cawthon is the creator, author and intellectual property owner of the computer games/mobile applications titled "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"). Mr. Cawthon is also the owner of the United States registered trademarks FIVE NIGHTS AT FREDDY'S (Trademark Registration No. 4,755,325 registered June 16, 2015, with a date of first use in commerce of July 24, 2014) and FIVE NIGHTS AT FREDDY'S (Trademark Registration No. 4,855,473 registered November 17, 2015, with a date of first use in commerce of August 8, 2014)
Complainant, Scottgames, is a United States-based company and the entity through which Mr. Cawthon's intellectual property is licensed to third parties. Mr. Cawthon is the sole member of Scottgames and he has granted Complainant a license for the use of the copyrights and trademark rights related to the Five Night Games and the FIVE NIGHTS AT FREDDY'S marks.
The Five Nights Games have been marketed, sold and downloaded worldwide using the FIVE NIGHTS AT FREDDY'S marks. The Five Nights Games are available for purchase and download for personal computers on Valve Corporation's Steam digital distribution platform ("Steam"). As of the date of the amended Complaint, Steam has sold over 1,900,000 copies of the Five Nights Games for personal computers worldwide. In addition, the Five Nights Games are available for mobile devices through Apple's App Store, Google's Google Play Store and Amazon's Appstore. Over 9,000,000 mobile application copies of the Five Nights Games have been sold worldwide through Amazon and Apple's App Store. On October 7, 2016, Mr. Cawthon released the most recent of the Five Nights Games, "Five Nights at Freddy's: Sister Location."
In addition to the Five Nights Games, Mr. Cawthon and Complainant have marketed and exploited the related intellectual property using its trademarks under numerous license agreements. For example, a major motion picture studio has optioned feature film rights relating to the Five Nights Games. In addition, Mr. Cawthon and Complainant have entered into over a dozen major license agreements to create merchandise related to the Five Nights Games.
This case concerns the following 20 Domain Names, which were registered on the dates as listed:
A. registered January 28, 2016;
B. registered February 29, 2016;
C. , registered July 22, 2015;
D. registered November 10, 2015;
E. registered October 21, 2016;
F. registered December 22, 2015;
G. registered October 20, 2016;
H. registered December 24, 2015;
I. registered January 4, 2016;
J. registered January 22, 2016;
K. registered January 27, 2016;
L registered February 20, 2016;
M. registered March 11, 2016;
N. registered February 27, 2016;
O. registered August 18, 2016;
P. registered December 12, 2015;
Q. registered January 9, 2016;
R. registered January 26, 2016;
S. registered December 16, 2015; and
T. registered December 24, 2015.
The Domain Names are being used to promote unauthorized versions of Complainant's computer games. 5. Parties' Contentions A. Complainant (i) Consolidation
Complainant requests consolidation into one Complaint of the complaints against all of the Respondents for the 20 Domain Names. Complainant refers to the grounds set forth in paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), providing that complaints brought 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." Complainant provided an assessment of the Domain Names pursuant to the consolidation principles espoused in the WIPO Overview 2.0. (ii) Identical or Confusingly Similar
Complainant states he is the owner of the registered FIVE NIGHTS AT FREDDY'S trademarks, but in addition claims he has rights in the famous "FNAF WORLD" and "SISTER LOCATION" game titles and the Five Nights at Freddy's abbreviation, "FNAF", all of which Complainant contends serve as trademarks in their own right (collectively, the "FIVE NIGHTS marks").
Complainant asserts that UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name. Complainant contends a comparison between the Domain Names and the FIVE NIGHTS marks shows that Respondents have incorporated at least one of the marks into every one of the Domain Names. In particular, Complainant states that:
- The Domain Names , , , and incorporate the FIVE NIGHTS AT FREDDY'S marks, thereby causing likelihood of confusion as to their source and/or sponsorship. The addition of "game" and "online" to the end of the FIVE NIGHTS AT FREDDY'S marks in the and Domain Names does not remove any likelihood of confusion and only serves to imply that the Domain Names provide "online" access to unauthorized and/or pirated versions of Complainant's Five Nights Games.
- The fact that the Domain Names , and misspell the FIVE NIGHTS AT FREDDY'S marks does not remove any likelihood of confusion. The Domain Name simply replaces the word "five" with the numeral "5," which does nothing to remove any likelihood of confusion.
- The Domain Names:
- ;
- ;
- ;
- ;
- ;
- ;
- ;
- ;
- ;
- ;
- ;
- ;
- ; and
-
incorporate the FNAF mark, thereby causing likelihood of confusion as to their source and/or sponsorship. The addition of "3d," "game," "online," "play," "free," "unblocked" and "download" to the FNAF mark in the Domain Names does not remove any likelihood of confusion and only serves to imply that they provide free access to playable and/or downloadable unauthorized and/or pirated versions of Complainant's Five Nights Games. Moreover, UDRP panels have found the addition of the word "download" actually increases the likelihood of confusion where a complainant's software is typically downloaded. Further, in addition to the FNAF mark in which Complainant has rights, Complainant states that, upon information and belief, the Domain Name also contains a mark in which a third-party has rights.
- The addition of the word "world" in the Domain Names , , , and only serves to incorporate or reference Complainant's famous FNAF WORLD mark, thereby causing likelihood of confusion.
- The Domain Names and incorporate the famous FIVE NIGHTS AT FREDDY'S: SISTER LOCATION and SISTER LOCATION marks, thereby causing likelihood of confusion as to the source and/or sponsorship of the Domain Names. The Domain Name consists solely of the SISTER LOCATION mark. Further, the Domain Name incorporates both the FNAF mark and a portion of the famous FIVE NIGHTS AT FREDDY'S: SISTER LOCATION and SISTER LOCATION marks to create an even stronger association with Complainant and the Five Nights Games, thereby increasing the likelihood of confusion.
In sum, the Domain Names all incorporate the FIVE NIGHTS marks, causing likelihood of confusion as to the source and/or sponsorship of the Domain Names. Therefore, under paragraph 4(a)(i) of the Policy, all of the Domain Names are "identical or confusingly similar to a trademark or service mark in which the complainant has rights." (iii) Rights or Legitimate Interests
Complainant contends that Respondents cannot demonstrate rights or legitimate interests in the Domain Names under paragraph 4(c)(i) of the Policy. Neither Complainant nor Mr. Cawthon nor their agents have granted Respondents any license or other authorization to use the FIVE NIGHTS marks. Moreover, to Complainant's knowledge, there is no evidence that Respondents used, or demonstrably prepared to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services prior to Complainant's use of the FIVE NIGHTS marks. To the contrary, Complainant asserts that Respondents' only use of the Domain Names in this matter is in connection with their infringement of Complainant's intellectual property. Furthermore, when examining this potential showing, Complainant contends that UDRP panels have found that registration with the United States Patent and Trademark Office ("USPTO") gives respondents constructive notice of a complainant's rights in a mark. Indeed, as noted in the timeline below, certain of the FIVE NIGHTS marks were registered with the USPTO before Respondents registered of any of the Domain Names. Moreover, three of the Five Nights Games were released prior to Respondents creating any of the Domain Names. This is demonstrated by the following timeline:
- On July 24, 2014, Mr. Cawthon first used the FIVE NIGHTS AT FREDDY'S mark in commerce.
- On August 8, 2014, the Five Nights at Freddy's game was first released.
- On November 10, 2014, the Five Nights at Freddy's 2 game was first released.
- On March 2, 2015, the Five Nights at Freddy's 3 game was first released.
- On June 16, 2015, Mr. Cawthon registered the first FIVE NIGHTS AT FREDDY'S mark with the USPTO.
- On July 22, 2015, Respondents registered the first Domain Name, .
- On July 23, 2015, the Five Nights at Freddy's 4 game was first released.
- On September 15, 2015, FNAF World was first announced by Mr. Cawthon.
- On November 10, 2015, Respondents registered the Domain Name.
- On November 17, 2015, Mr. Cawthon registered the second FIVE NIGHTS AT FREDDY'S mark with the USPTO.
- On December 12, 2015, Respondents registered the Domain Name.
- On December 16, 2015, Respondents registered the Domain Name.
- On December 22, 2015, Respondents registered the Domain Name.
- On December 24, 2015, Respondents registered the and Domain Names.
- On January 4, 2016, Respondents registered the Domain Name.
- On January 9, 2016, Respondents registered the Domain Name.
- On January 21, 2016, the FNAF World game was first released.
- On January 22, 2016, Respondents registered the Domain Name.
- On January 26, 2016, Respondents registered the Domain Name.
- On January 27, 2016, Respondents registered the Domain Name.
- On January 28, 2016, Respondents registered the Domain Name.
- On February 8, 2016, the FNAF World game was updated and re-released.
- On February 20, 2016, Respondents registered the Domain Name.
- On February 27, 2016, Respondents registered the Domain Name.
- On February 29, 2016, Respondents registered the Domain Name.
- On March 11, 2016, Respondents registered the Domain Name.
- On May 21, 2016, the first trailer for the Five Nights at Freddy's: Sister Location game was released on YouT.
- On August 18, 2016, Respondents registered the Domain Name.
- On October 7, 2016, the Five Nights at Freddy's: Sister Location game was first released.
- On October 20, 2016, Respondents registered the Domain Name.
- On October 21, 2016, Respondents registered the Domain Name.
Complainant contends, in sum, that there is no evidence that Respondents used, or demonstrably prepared to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services prior to Complainant's use of the FIVE NIGHTS marks. Respondents' only use appears to be to infringe upon Complainant's intellectual property.
Complainant further contends that Respondents cannot demonstrate rights or legitimate interests in the Domain Names by showing that they have been commonly known by the Domain Names. UDRP panels have held that a respondent is not commonly known by a disputed domain name where there is no evidence in the record, including the relevant Whols information, to indicate the respondent was commonly known by the domain name. In this case, the WhoIs database records for the Domain Names reveal no evidence to suggest that Respondents are commonly known or could be commonly known by the Domain Names. Moreover, there is no other evidence in the record to suggest that Respondents have been commonly known by the Domain Names or any other name similar to the Domain Names. Consequently, Respondents cannot show rights or legitimate interests with regard to the Domain Names under paragraph 4(c)(ii) of the Policy.
In addition, Complainant contends that Respondents cannot demonstrate that they "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." Policy at paragraph 4(c)(iii). In the instant matter, Respondents' use of the Domain Names is quite the opposite. It appears that Respondents have specifically chosen to use the FIVE NIGHTS marks in the Domain Names to direct Internet traffic to the corresponding websites, which provide unauthorized and/or pirated, playable and/or downloadable versions of the Five Nights Games along with unauthorized derivative works of the Five Nights Games. In doing so, Respondents presumably profit by generating advertising revenue from the use of the FIVE NIGHTS marks in the Domain Names. Furthermore, Respondents use the Domain Names to compete with Complainant by promoting unauthorized and/or pirated, free, playable and/or downloadable versions of the Five Nights Games, which Complainant offers for sale. UDRP panels have found a lack of rights and legitimate interests under similar circumstances. (iv) Registered and Used in Bad Faith
Complainant contends that Respondents have registered and currently use the Domain Names in bad faith. All of the 20 Domain Names contain at least one of the FIVE NIGHTS marks in its entirety. Neither Complainant, nor Mr. Cawthon, nor their agents have authorized these actions. Complainant states that Respondents' verbatim use of the famous FIVE NIGHTS marks is evidence of bad faith.
Complainant also submits that Respondents' use of the Domain Names to promote, inter alia, unauthorized and/or pirated versions of the Five Nights Games and unauthorized, substandard derivative works is further evidence of bad faith. Respondents' use of the Domain Names and the FIVE NIGHTS marks enables them to attract Internet users to the associated websites and generate advertising revenue. The fact that Respondents are intentionally using the Domain Names to attract Internet users to the associated websites in order to promote infringing, unauthorized and/or pirated content while presumably generating advertising revenue demonstrates Respondents' bad faith.
In addition, Complainant states that Respondents' pattern of conduct is evidence that the Domain Names have been registered in bad faith. The Policy expressly includes as evidence of bad faith circumstances where "[the respondent] ha[s] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent] ha[s] engaged in a pattern of such conduct[.]" Policy at paragraph 4(b)(ii). Complainant notes that Respondent Wiley Prince was previously found to have registered the domain name in bad faith. See C LLC v. Wiley Prince / PrivacyG,WIPO Case No. D2015-0397. In this case, the Domain Names incorporate the FIVE NIGHTS marks and are used to host unauthorized and/or pirated versions of the Five Nights Games. The websites associated with these Domain Names similarly "trade-off the goodwill and reputation of Complainant's trademark or otherwise create a false association with Complainant." See C LLC v. Wiley Prince / PrivacyG, supra. The prior finding of bad faith by a UDRP panel, coupled with Respondents' registration of 20 Domain Names that contain the FIVE NIGHTS marks, indicates a pattern of conduct to "register[] the [D]omain [N]ames in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name." Policy at paragraph 4(b)(ii). Complainant contends this pattern of domain name registration further evidences Respondents' bad faith. B. Respondent
Respondents did not submit a reply to Complainant's contentions. 6. Discussion and Findings A. Procedural Issues - Consolidation
Complainant has requested that the Complaint be consolidated against all of the Respondents for all of the 20 Domain Names. Paragraph 10(e) of the UDRP Rules grants a panel the power to consolidate 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." Procedural efficiency should also be a consideration in determining whether consolidation is appropriate. Moreover, UDRP panels have considered a range of factors to assess whether consolidation is appropriate in particular cases. These items are sometimes found in combination in a given case, including (i) the registrants' identities (including pseudonyms); (ii) the registrants' contact information including email addresses, postal addresses or phone numbers; (iii) relevant IP addresses, name servers, or webhosts associated with the disputed domain names; (iv) the content of websites corresponding to the domain names; (v) the ownership and nature of the trademarks at issue (e.g., where the registrants targets a specific sector); (vi) any naming patterns in the domain names, (vii) the language of the domain names; (viii) any evidence of respondent affiliation and ability to exercise common control over the domain names; (ix) any changes by the respondents relating to any of the above items following communications regarding the domain names; and (x) any prior pattern of similar respondent behavior.
In this case where there are seven named Respondents (including the privacy shield service, PrivacyG), the evidence indicates that all of the Domain Names are subject to common control. The following evidence, in particular, leads to this conclusion:
- When this case was filed, 19 of the 20 Domain Names shared the same privacy/proxy service, PrivacyG, and the same Registrar, Namesilo. See Sharman License Holdings, Limited v. Dustin Dorrance/Dave Shullick/Euclid Investments,WIPO Case No. D2004-0659.
- The Domain Names themselves exhibit a common naming pattern in their use of names and acronyms that build off of Complainant's FIVE NIGHTS marks.
- The Domain Names are used in a nearly identical fashion, targeting Complainant, its FIVE NIGHTS marks and Five Night Games. Panels have found common control where multiple domain names "all direct[] to essentially identical websites." Sharman License Holdings, Limited v. Dustin Dorrance/Dave Shullick/Euclid Investments, supra; see Gap (Apparel) LLC v. c/o Network Solutions, Akinsanya Odunayo Emmanuel, Salam Hassan,WIPO Case No. D2013-2126 ("Further evidence of common control is demonstrated through the almost identical layout of the websites and the fact that both have utilized many of the same images and videos derived from the Complainant's website and advertisements."). In the instant matter, all of the Domain Names are used to direct Internet traffic to websites that share the substantially the same selection of layout, structure, design and purpose and host unauthorized and/or pirated versions of Complainant's computer games/mobile applications. The Domain Names share a common scheme to generate advertising revenue by attracting Internet users to these websites providing unauthorized and/or pirated versions of Complainant's computer games/mobile applications.
- Nearly all of the 20 Domain Names contain hyperlinks or other connections that attempt to promote Internet traffic between websites associated with the Domain Names. Almost every homepage associated with the Domain Names contains a link at the top or bottom to another one of the Domain Names. For example, the homepage contains a section titled "Partner Sites" containing hyperlinks that lead Internet users to the , , , and Domain Names. Notably, not all of these Domain Names are registered to the same Respondent. The , , and Domain Names are registered to Respondent Dang Ngo, while the Domain Name is registered to Respondent Wiley Prince, and the Domain Name is registered to Respondent Fidel Vance. In other words, Respondent Dang Ngo is using the Domain Name to direct Internet traffic to Domain Names registered to Respondents Wiley Prince and Fidel Vance. In doing so, Respondent Dang Ngo characterizes the Domain Names registered to Respondents Wiley Prince and Fidel Vance as "Partner Sites". These cross-references between Respondents' websites provide evidence of an association and common scheme between Respondents.
- Nearly all of the Domain Names are associated with Facebook and/or Twitter accounts with the username @fnafworldgame. These @fnafworldgame social media accounts promote and direct Internet traffic to the Domain Names. Similarly, over half of the Domain Names contain hyperlinks directing Internet traffic to the @fnafworldgame social media accounts and asking users to follow those accounts.
- Nearly all of the 20 Domain Names (18 of 20) share one of four common IP addresses. Panels have found domain names subject to common control where groups of domain names shared IP addresses. See Yahoo! Inc. v. Mahesh Rohatgi, Prakhar Rastogi, B / Prakhar Rastogi, Best Web Experts / Privacy Protection Service INC d/b/a PrivacyP / Prashant Mishra, Vipra Busines Solution / Rina Rohatgi / Wemo Tech Support / Charu Rohatgi / Alina Jain / Raju Hirani, Alfa Infosystem / Brijesh Pandey, IBS Infosystem / Registration Private, Domains By Proxy, LLC / Amit Singh / Satya Prakash / Rajveer Singh Chawla / Pooja Pandey, Innovative Business Solutions,WIPO Case No. D2015-2323 (finding domain names subject to common control where, inter alia, groups of the domain names were registered to the same IP addresses and were part of the same phishing scheme).
- The WhoIs information for 3 of 6 of the Respondents lists some variation of "DTD" as the registrant's organization. For example, the WhoIs information for Respondent Wiley Prince lists "DTD" as Respondent's organization; the WhoIs information for Respondent Kris Miranda lists "DTDAFF" as Respondent's organization; and the WhoIs information for Respondent Duong Ngo Huynh lists "DTD Software Co., LTD" as Respondent's organization.
To the extent that there are questions about any of these items, Respondents are in a clear position to shed light on them by providing a Response and objecting to consolidation. However, none of the Respondents have submitted a Response in this case to challenge these points. Accordingly, the Panel determines, on the balance of the probabilities, that the substantial connections between all of the Domain Names indicate that they are subject to common control.
In addition, consolidating this Complaint against all of the Respondents is procedurally efficient and fair and equitable to all of the parties because there are significant common facts and issues in this matter. In particular, the websites associated with the Domain Names share a similar collection of layouts, and the Domain Names appear to have been registered with a similar purpose: to generate advertising revenue by attracting Internet users to websites that host unauthorized and/or pirated versions of Complainant's computer games/mobile applications. See Yahoo! Inc. v. Mahesh Rohatgi, supra (finding the consolidation of disputes fair and equitable and procedurally efficient where domain names appear to be registered "with a similar purpose in mind" and "[t]here is a commonality of facts and issues for each disputed domain name."). B. Merits
In order to succeed on the merits of its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Names registered by Respondents are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondents have no rights to or legitimate interests in respect of the Domain Names; and
(iii) Respondents have registered and are using the Domain Names in bad faith.
A respondent's failure to file a response does not automatically result in a decision in favor of Complainant. However, a panel may draw appropriate inferences from a respondent's default. UDRP Rules, paragraph 14(b). (i) Identical or Confusingly Similar
Under the Policy the Panel first must determine whether the Domain Names are identical or confusingly similar to a trademark in which Complainant has rights.
Complainant has submitted evidence to show that it owns trademark registrations dating from 2014 for its FIVE NIGHTS AT FREDDY'S trademarks, and that it has developed rights in its other registered and unregistered FIVE NIGHTS marks in the field of online gaming. Complainant's rights in several of the FIVE NIGHTS marks have also been recognized by a previous UDRP panel in Scottgames, LLC v. Ong Dai Vu Hao, Tran Tich Quan, Delvin Dragon and Tran Dai,WIPO Case No. D2016-1367 ("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 applications of Five Nights Games worldwide.").
All of the Domain Names incorporate one or more of the FIVE NIGHTS marks, while making certain variations to the marks: (i) adding a hyphen between the words comprising the FIVE NIGHTS marks, (ii) misspelling a word or adding a numeral, such as "5" in exchange for the word "five," or (iii) adding the following words to the FIVE NIGHTS marks, all of which serve to accentuate the association with Complainant's marks – "game," "online," "play," "download," "unblocked," and "free."
The Panel determines that these alterations to Complainant's FIVE NIGHTS marks, made in the 20 Domain Names, result in confusing similarity with the marks such that Internet users might be confused as to the source and/or sponsorship of the Domain Names and their associated websites. See WIPO Overview 2.0, paragraph 1.2 ("[t]he threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion."); see alsoWachovia Corporation v. Peter Carrington,WIPO Case No. D2002-0775 ("[Purposeful misspelling], commonly referred to as 'typo squatting,' creates a virtually identical and/or confusingly similar mark to the Complainant's trademark under paragraph 4(a)(i) of the Policy."); CPP, Inc. v. Virtual Sky,WIPO Case No. D2006-0201 ("The replacement of the word 'one' with the numeral '1', found in the domain name in dispute, results in a confusingly similar use of the Complainant's trademark SKILLSONE."); Lime Wire LLC v. David Da Silva / C,WIPO Case No. D2007-1168 (holding that the addition of the word "download" to the complainant's mark in the domain name "actually increase[ed] the likelihood of confusion" since the complainant's software is typically downloaded); Nintendo of America, Inc. v. Gray West International,WIPO Case No. D2000-1219 (holding that the word "games" in a domain name "does nothing to reduce its confusing similarity with Nintendo's 'POKEMON' marks.").
Accordingly, the Panel finds that Complainant has established the first element of paragraph 4(a) of the Policy. (ii) Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the Domain Names. A complainant is normally required to make out a prima facie case that a respondent lacks rights or legitimate interests in a domain name. Once such prima facie case is made, the burden shifts to respondent to demonstrate rights or legitimate interests. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel finds that Complainant has made out a prima facie case in the Complaint that Respondents lack rights or legitimate interests in the Domain Names. Moreover, Respondents have failed to submit a Response or make any effort to attempt to refute Complainant's prima facie case.
The record is clear that Complainant has not authorized or licensed Respondent to use its FIVE NIGHTS marks. In addition, the Domain Names have not been used in connection with a bona fide offering of goods or services or for noncommercial or fair use purposes. Instead, the evidence submitted by Complainant shows that the Domain Names were chosen for their similarity to Complainant's FIVE NIGHTS marks and have been linked to webpages that provide unauthorized and/or pirated, playable and/or downloadable versions of the Five Nights Games, along with unauthorized derivative works. The Panel also finds that none of the Respondents have been commonly known by the Domain Names or names that are identical or similar to Complainant's FIVE NIGHTS marks. There is no evidence in the record (including the WhoIs database records for the Domain Names) to suggest that Respondents are commonly known or could be commonly known by the Domain Names.
Accordingly, the Panel determines that Complainant has met its burden to show that Respondents have no rights or legitimate interests in the Domain Names. Complainant has satisfied the second element of paragraph 4(a) of the Policy. (iii) Registered and Used in Bad Faith
The Panel also determines that the Domain Names have been registered and used in bad faith. First, the naming pattern used by Respondents for the 20 Domain Names – each using one of Complainant's FIVE NIGHTS trademarks and making some alteration to it, whether by adding a hyphen, making an intentional misspelling, or adding a descriptive word – is itself strong evidence that Respondents intentionally targeted Complainant and its marks. In addition, the use of the Domain Names as discussed above – to link to webpages that provide unauthorized and/or pirated, playable and/or downloadable versions of Complainant's Five Nights Games, along with unauthorized derivative works – clearly establishes bad faith use. The Panel finds, on the balance of the probabilities, that Respondents intentionally use the Domain Names to attract Internet users to the associated websites to promote infringing, unauthorized and/or pirated content, while also generating advertising revenue. In this regard, the Panel agrees with the analysis in Wilcom Pty Ltd v. Jinsu Kim,WIPO Case No. D2009-0670, where the panel stated:
"In this case, the Respondent has improperly used the disputed domain name in bad faith, selling pirated copies of the Complainant's software. The fact that the Respondent has used the disputed domain name to sell pirated copies of the Complainant's software gives rise to a strong inference that the Respondent was aware of the Complainant and its rights in the WILCOM trademark. It is not unreasonable to suggest that the Respondent has intentionally sought to profit from the sales of pirated copies of the Complainant's software by creating consumer confusion between the Respondent's disputed domain name and the Complainant's trademark."
Finally, the Panel also notes that one of the Respondents in this case, Respondent Wiley Prince, was previously found to have registered the domain name in bad faith. See C LLC v. Wiley Prince / PrivacyG, supra. The panel there was confronted with similar facts:
"The website displayed at the Domain Name uses a similar color scheme, claims that the source of the website is Cool Math Games and provides access to online games targeted to school age children. Troubling to the Panel is that Respondent's website purports to be educational in nature but provides numerous games that are purely entertainment in their nature. This fact cuts against any inference that the name was not intended to divert Internet traffic away from Complainant. Thus, as discussed above, without a response by Respondent, there is no credible explanation for Respondent to have chosen to use the words 'coolmath' in the Domain Name other than to trade-off the goodwill and reputation of Complainant's trademark or otherwise create a false association with Complainant."
Accordingly, the Panel concludes that, in view of all of the above circumstances, the Domain Names were registered and are being used in bad faith, satisfying the third element 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 Domain Names, , , , , , , , , , , , , , , , , , , and be transferred to Complainant.
In accordance with Complainant's request, and paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, be cancelled.
Christopher S. Gibson
Sole Panelist
Date: February 14, 2017
Full & Egal Universal Law Academy