The Complainant is Supercell Oy of Helsinki, Finland, represented by Roschier Brands, Attorneys Ltd., Finland.
The Respondent is Jason M Jordan of Indiana, United States of America (“US”). 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Google Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2017. On March 16, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 18, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 20, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 21, 2017.
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 Respondent of the Complaint, and the proceedings commenced on March 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 16, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 20, 2017.
The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on May 3, 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
The Complainant Supercell Oy is a mobile game development company founded in 2010 in Finland.
The Complainant engaged in the business of games for mobile devices, including but not limited to “Clash Royale”, “Clash of Clans”, “Boom Beach” and “Hay Day”.
The Complainant is the owner of the trademarks SUPERCELL and SUPERCELL (figurative) in a number of jurisdictions, including but not limited to:
(i) European Union trademarks registration in the European Union by OHIM under registration No. 9704446 registered on October 29, 2013, and No. 12223863 registered on June 25, 2014;
(ii) Finnish trademark registration No. 261374 registered on June 13, 2014, and No. 261376 registered on June 13, 2014; and
(iii) US trademark registration No. 4705895 registered on March 24, 2015.
The Respondent registered the Disputed Domain Name on July 30, 2016.
The website under the Disputed Domain Name is a forum for sale and purchase of game accounts of several popular games of the Complainant and offers apparently a cheap game top-up service. 5. Parties’ Contentions A. Complainant
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 Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant asserts that it owns exclusive and valid prior rights to the trademarks SUPERCELL and SUPERCELL (figurative) registered in a number of jurisdictions, including European Union (i.e.,registration numbers 9704446 and 12223863), Finland (i.e., registration numbers 261374 and 261376) and the US (i.e.,registration number 4705895),all of which predate the registration date of the Disputed Domain Name..
The Complainant further asserts that the so-called second level domain “shopsupercell” of the Disputed Domain Name is confusingly similar to the Complainant’s trademarks SUPERCELL and SUPERCELL (figurative) by arguing that:
First, the Complainant’s trademarks and the Disputed Domain Name share the identical dominant and distinctive element “supercell”.
Second, the additional element “shop”, which is an English term and means “an establishment offering goods and services”, in the Disputed Domain Name, , is descriptive and non-distinctive in relation to the use the Disputed Domain Name.
Third, the Respondent’s website at the Disputed Domain Name “www.” (offering user accounts of the Complainant’s games for sale and using the Complainant’s trademarks and other intellectual properties) is against the Terms of Service of the Complainant.
Therefore, the Complainant submits that the likelihood of confusion between the Complainant’s trademark and the Disputed Domain Name is clear.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and did not register it as a trademark, service mark or company name when registering the Disputed Domain Name. The Complainant has not licensed or permitted the Respondent to register the Disputed Domain Name.
The Complainant further contends that there is no relationship between the Complainant and the Respondent and that the website under the Disputed Domain Name is used for illegitimate and commercial bad faith purpose.
The Complainant asserts that it has thereby made out a prima face case so far as lack of rights or legitimate interests is concerned and that the burden of proof shifts to the Respondent in this respect.
(iii) The Disputed Domain Name was registered and is being used in bad faith.
The Complainant contends that the Respondent has registered and currently is using the Disputed Domain Name in bad faith:
First, the Complainant asserts that the main purpose of the Respondent in registering the Disputed Domain Name has been to disrupt the business of the Complainant by arguing that:
(i) the Respondent is aware of the Complainant’s SUPERCELL trademarks and of the public license limitations stated in the Terms of Service of the Complainant, according to which, any use of the Complainant’s games or related services in violation of the license limitations is strictly prohibited, can result in the immediate revocation of the limited license and may subject to liability for violations of law.
(ii) the Respondent has known of the Complainants trademark rights at the time of registering the Disputed Domain Name due to the significant popularity of the Complainant and its games, and as evidenced by the infringing content of the website under the Disputed Domain Name.
(iii) the Complainant has an exclusive right to utilize their company and game brands commercially, create the terms of service and license the games; and the Respondent’s website under the Disputed Domain Name is also enabling the violations of the Complainant’s Terms of Service causing bans, termination of licenses and other negative consequences to the users of the website under Disputed Domain Name.
Second, the Complainant asserts that the Respondent intentionally attempts to attract, for commercial gain, Internet users to the website under the Disputed Domain Name by arguing that:
(i) the Respondent’s distribution and selling of game accounts of the Complainant’s games causes commercial harm to the Complainant and at the very least potential commercial gain to the Respondent;
(ii) noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademarks of the Complainant is unthinkable or at the very least extremely unlikely.
In view of all the above, the Complainant requests the Panel to order the Disputed Domain Name be transferred to the Complainant. B. Respondent
The Respondent did not 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 March 16, 2017, the Respondent was identified as “Contact Privacy Inc. Customer 124721728”. On March 18, 2017, the Registrar, revealed the underlying registrant of the Disputed Domain Name as “Jason M Jordan”.
On March 21, 2017, the Complainant filed an Amended Complaint, replacing the respondent named in the initial Complaint with the Respondent, the underlying registrant revealed by the Registrar.
Therefore, in accordance with paragraph 4.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the Panel determines the identity of the proper respondent, in this case, be the disclosed underlying registrant as named in the Amended Complaint filed on March 21, 2017.
(ii) The Respondent’s 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; M. Corentin Benoit Thiercelin v. CyberDeal, Inc.,WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent’s 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 is present:
(i) the Disputed Domain Name registered by the Respondent 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. 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 Name is identical or confusingly similar to its trademark.
First of all, the Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to SUPERCELL well before the Disputed Domain Name was registered. 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 develop and sell its mobile games worldwide.
Secondly, the Disputed Domain Name comprises the Complainant’s SUPERCELL mark in its entirety. The difference between the Disputed Domain Name and the trademark is the addition of the term “shop” meaning “an establishment/place where you can buy goods and/or services” in English. The term “shop” is a descriptive term. The customers are likely to perceive “shopsupercell” as an establishment / place where they can buy the Complainant’s goods and/or services.
As such, the Panel finds that “supercell” remains the dominant element in the Disputed Domain Name. It is well established that the addition of a descriptive term (such as “shop”) to a trademark does not prevent confusing similarity, thus, in the Panel’s view, the addition of the said term does nothing to distinguish the Disputed Domain Name from the trademark, nor to dispel the confusing similarity, as it was found in previous UDRP decisions (see, e.g., 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 Trung Kien,WIPO Case No. D2012-2320).
Thirdly, as long established under the UDRP, the generic Top-Level Domain “.com” is typically disregarded when assessing identity or confusing similarity.
On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s SUPERCELL trademark, and the first element under paragraph 4(a) of the Policy is established. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the following circumstances, in particular, but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy:
“(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 that the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent did not refute the Complainant’s contentions.
Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization of any kind to use the Complainant’s trademarks has been granted to the Respondent. There is no evidence available that the Respondent holds any registered or unregistered trademark rights in any country in the world. Thus, the Panel finds that the Respondent has no rights in the trademarks SUPERCELL.
The Panel also finds that before the date of notice to the Respondent of the dispute and as of the date of this decision, the Disputed Domain Name resolves to a website which serves as a forum for, amongst others, selling and buying the Complainant’s game accounts and offers of apparently cheap game top-up services. On such website, it is asserted by the Complainant that its trademarks and intellectual properties are prominently displayed.
While strictly speaking this case is not a true reseller-type situation, the Panel proceeds with the test in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (“Oki Data”) as instructive.
Normally, a reseller or distributor can be making a bona fide offering of goods and services, and thus have rights or legitimate interests in the domain name if its use meets certain requirements, which are described in the Oki Data decision:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other 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 UDRP panels, that the Oki Data criteria are appropriate even when the respondent is not an authorized reseller, such as it is the case in this dispute (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 use of the Disputed Domain Name does not fulfill the Oki Data criteria.
The Panel finds that as of the date of this decision, the Disputed Domain Name is used not only for trading of game accounts and top-up service relating to the Complainant’s games, but also for promoting some other goods / services of other parties. Thus, there is the possibility that the Respondent is using the Complainant’s trademark in the Disputed Domain Name to bait consumers and then switch them to other goods / services.
In addition, the Panel finds on the website under the Disputed Domain Name, no disclosure as to the Respondent’s relationship with the Complainant, except for a statement that “ShopSuperCell was officially established on August 1, 2016 for purchase and sale of accounts of all SuperCell’s games and offer cheap Gems top up” at the left end of website. In this regard, the Complainant has put forth sufficient evidence that the Respondent did not disclose its relationship with the trademark owner in any way.
Further, by displaying and using the Complainant’s trademarks and other intellectual properties from Complainant’s games on the website under the Disputed Domain Name, without any evidence of consent or permission by the Complainant, the Respondent intended to mislead the consumer into believing that either the Respondent’s sites originate with, or are endorsed by the Complainant, or that there is an association or relation otherwise between the Respondent and the Complainant, where in fact no such connection exists.
The Panel finds that the Respondent’s use of the Disputed Domain Name cannot be considered a bona fide offering of goods or services under the Policy.
Moreover, taking into account the fact that the Disputed Domain Name is registered under a privacy service, the Panel finds no evidence that would suggest that the Respondent, as an individual, business, or other organization, has been commonly known by the Disputed Domain Name.
The Panel further finds that no evidence has been presented that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. In fact, as it appears following the Complainant’s assertions and evidence with regard to the Respondent’s registration of the Disputed Domain Name and the appearance of the website resolved to by the Disputed Domain Name, the Respondent 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 conducting activities apparently against the Complainant’s Terms of Service.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and 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:
“(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 website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.
Each of the four circumstances in paragraph 4(b) of the Policy, if found, is evidence of “registration and use of a domain name in bad faith”.
The Panel finds that the Complainant has put forth sufficient evidence that the Respondent has registered and used the Disputed Domain Name in bad faith. The Respondent did not reply to the Complainant’s contentions and, therefore, did not refute the Complainant’s contentions.
The Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registration of the Disputed Domain Name. In this regard, the Panel finds that the Complainant’s SUPERCELL trademark has been registered in numerous jurisdictions. The Complainant’s SUPERCELL trademark has been used in, among other countries, the European Union, Finland, and the US, where the Respondent is located.
The Disputed Domain Name comprises the SUPERCELL trademark in its entirety, adding only the descriptive term “shop” meaning “an establishment / place where you can buy goods and/or services” in English.
Further, the Panel finds that the Complainant has put forth sufficient evidence that the Complainant, which was found in 2010, has grown to be a market leader in mobile games and has released many popular games for mobile devices worldwide.
These facts show that the Respondent did not register the Disputed Domain Name in a fortuity. The Respondent obviously knew of the Complainant and its SUPERCELL trademarks and games before the registration of the Disputed Domain Name, and the Panel considers the registration an attempt by the Respondent as to take advantage of the Complainant’s goodwill.
The Panel finds that the Disputed Domain Name resolves to a forum website for (i) sale and purchase of game accounts of the Complainant’s games; (ii) offer of apparently cheap game top-up service; and (iii) promotion of other goods and services (i.e., sale and purchase of sea foods, interior etc.) of other parties.
The Panel finds that on the website under the Disputed Domain Name, the Respondent conducts for-profit acts (i.e.,offers for sale and purchase of game accounts of all Complainant’s games, offer of cheap game top-up service) that are against and strictly prohibited by the Complainant’s relevant public Terms of Services. Further, as mentioned above, the website under the Disputed Domain Name is also used for promoting the goods and services (i.e.,sale and purchase of sea foods, interior etc.) of other parties. In the Panel’s view, all of these actions put the Respondent in opposition to the Complainant either directly or indirectly, reflective of the Respondent’s bad faith to unjustly benefit from the Complainant’s mark.
The Panel finds that the Complainant has put forth sufficient evidence that (i) the Respondent is aware of the Complainant’s trademark rights and games; and (ii) the registration and use of website under the Disputed Domain Name for, amongst others, sale and purchase of game accounts of the Complainant’s games as well as third-party games and offer of cheap game top-up service by the Respondent, are in violation of the Complainant’s Terms of Service. In absence of the Respondent’s arguments to the contrary, the Panel infers that the Respondent’s use of the Disputed Domain Name is disrupting the business of the Complainant. Such behaviors are indicative of bad faith within the meaning of the Policy, on the part of the Respondent.
The Panel also finds that the Respondent has used the Complainant’s trademark in its entirety, and the trademark is recognizable as such in the Disputed Domain Name. Further, the Panel finds that in addition to the unauthorized adoption of the Complainant’s trademark as a uniquely distinctive part in the Disputed Domain Name, the Respondent used, without permission, the Complainant’s logo-typed trademark on the website, and placed misleading information and statement that may create confusion or a false impression to the side of consumers that it has a relationship with the Complainant when it does not. In addition, as said in Section C above, the Respondent has no rights or legitimate interests in the Disputed Domain Name.
In the Panel’s view, this creates a likelihood of confusion as to sponsorship, affiliation with, and endorsement by the Complainant of the site to which the Disputed Domain Name resolves to. Therefore, the Panel finds that the likelihood of confusion as said is an indication of bad faith use of the Disputed Domain Name (see Philip Morris Inc. v. Alex Tsypkin, supra; The Procter & Gamble Company, Tambrands Inc. v. Reserved for Customers, MustN,WIPO Case No. D2009-0944; Aktiebolaget Electrolux v. Jose Manuel,WIPO Case No. D2010-2031).
With the said facts, the Panel finds that the Respondent intentionally registered and is using the Disputed Domain Name for commercial gain and that the Respondent’s use of the Disputed Domain Name appears to mislead consumers and confuse them by making them believe that the website is associated, fostered or recommended by the Complainant. Such misleading behavior is indicative of bad faith within the meaning of paragraph 4(b)(iv) of the Policy (see in the same way Aktiebolaget Electrolux v. Jose Manuel, supra).
Taking into account all of the above, the Panel finds that the Disputed Domain Name was registered and is being used by the Respondent in bad faith under the Policy, and the third element under paragraph 4(a) 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 Name, , be transferred to the Complainant.
Pham Nghiem Xuan Bac
Sole Panelist
Date: May 16, 2017
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