The Complainant is Supercell Oy of Helsinki, Finland, represented by Roschier Brands, Attorneys Ltd., Finland.
The Respondent is Lombardo Fausto of Castrovillari, Italy. 2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with OVH (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2017. On April 7, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 11, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
On April 26, 2017, the Center notified the Parties in both English and Italian that the language of the Registration Agreement for the disputed domain name was Italian. On the same day, the Complainant requested for English to be the language of the proceeding, to which the Respondent did not reply.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 5, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 25, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 26, 2017.
The Center appointed Tony Willoughby as the sole panelist in this matter on June 12, 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 is a Finnish-based producer of mobile games. One of those games, “Clash of Clans”, is one of the world’s highest earning mobile games.
The Complainant is the proprietor of various trade mark registrations of or including the name “Clash of Clans”, such as:
(i) Unites States Trade Mark Registration No. 4327980 registered April 30, 2013 (filed September 6, 2012) CLASH OF CLANS (standard character mark) in classes 9, 28 and 41 for a variety of goods and services primarily associated with computer games.
(ii) European Union Trade Mark Registration No. 012224465 registered on March 11, 2014 (filed October 15, 2013) CLASH OF CLANS (figurative mark also featuring a device of a shield impaled with two arrows) in classes 9, 28 and 41 for a variety of goods and services primarily associated with computer games.
The Domain Name was registered on October 14, 2016 and is connected to a website headed “Introducing Clash of Heroes Server II – The Wild Hunt – AFTER THE GREAT SUCCESS OF OUR FIRST CLASH OF CLANS PRIVATE SERVER WE ARE HAPPY TO INTRODUCE THE SECOND CLASH OF HEROES PRIVATE SERVER”. The text continues, stating that this new server will “lead your game clash of clans experience even further than the first server…”. Clash of Heroes is stated to be “a modded private server of Clash of Clans” i.e. a modification of the Complainant’s Clash of Clans game created by the Respondent. The website indicates that there are differences between the games “but at the same time they are so similar”.
Users of the Complainant’s service are required to agree to the Complainant’s terms and conditions (“Before accessing or using the Service, including browsing any Supercell website or accessing a game, you must agree to these Terms of Service and the Privacy Policy.”). One of those terms and conditions is that the user will not under any circumstances use cheats, exploits, automation software, bots, hacks, mods or any unauthorized third-party software designed to modify or interfere with the Service, any Supercell Game or any Supercell game experience or without Supercell’s express written consent, modify or cause to be modified any files that are a part of the Service or any Supercell game.” Another term forbids the making available through the Complainant’s service any material or information that infringes any copyright, trademark etc.” 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to the Complainant’s CLASH OF CLANS registered trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name has been registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
The Respondent has not responded to the Complaint, but that (of itself) does not relieve the Complainant of proving all three elements of paragraph 4(a) of the Policy. However paragraph 14(b) of the Rules permits panels to draw such inferences from the failure to respond as the panel considers appropriate. B. Language of the Proceeding
In this case the registration agreement for the Domain Name is in the Italian language; accordingly in line with the terms of Paragraph 11 of the Rules the language of this proceeding will be Italian “unless otherwise agreed by the parties” and “subject to the authority of the panel to determine otherwise.”
The Complainant has requested that the language of the proceeding be English. There has been no agreement between the parties, so it is left to the Panel to decide.
Paragraph 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides inter alia as follows:
“Noting the aim of conducting the proceedings with due expedition, paragraph 10 of the UDRP Rules vests a panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case.
Against this background, panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, … (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.”
In this case, the Complainant has indicated that it would be easier for it to deal with this proceeding in English and has pointed out that the Domain Name is in English, as is the Respondent’s website content. The Panel is satisfied on the evidence that the Respondent understands English. Moreover, the Center has communicated with the Respondent in Italian, but has received no response to any of its communications. The Respondent clearly has had no intention of participating in this administrative proceeding and the Panel is satisfied that the Respondent will suffer no disadvantage if English is the language of the proceeding.
The Panel directs that English be the language of the proceeding. C. Identical or Confusingly Similar
The Domain Name comprises the name “Clash of Heroes” and the “.net” generic Top-Level Domain (“gTLD”) identifier. It being permissible for the Panel to ignore the gTLD identifier when assessing identity and confusing similarity under this element of the Policy, where, as here, the gTLD identifier serves no purpose other than a technical one, the comparison is with CLASH OF CLANS.
The test for identity or confusing similarity under the first element of the Policy is discussed in Paragraph 1.7 of WIPO Overview 3.0:
“It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.
This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. (This may also include recognizability by technological means such as search engine algorithms.) In some cases, such assessment may also entail a more holistic aural or phonetic comparison of the complainant’s trademark and the disputed domain name to ascertain confusing similarity.
While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.
In specific limited instances, while not a replacement as such for the typical side-by-side comparison, where a panel would benefit from affirmation as to confusingly similarity with the complainant’s mark, the broader case context such as website content trading off the complainant’s reputation, or a pattern of multiple respondent domain names targeting the complainant’s mark within the same proceeding, may support a finding of confusing similarity. On the other hand, if such website content does not obviously trade off the complainant’s reputation, panels may find this relevant to an overall assessment of the case merits, especially under the second and third elements (with such panels sometimes finding it unnecessary to make a finding under the first element).”
The Complainant contends that the first two words of each name (“Clash of”) stand out and that the third word in each case (“Heroes” and “Clans”) is less distinctive. The Panel agrees. The Complainant has produced evidence to show that the name of the Complainant’s game is sometimes abbreviated to “Clash”. Furthermore, the Panel notes that the Respondent’s website makes it clear (and relies upon the fact) that the Respondent’s product is derived from the Complainant’s product.
The Respondent has not challenged the Complainant’s contentions.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s CLASH OF CLANS trade mark. D. Rights or Legitimate Interests
The Respondent is using the Domain Name to promote its product developed from the Complainant’s product as a modification of the Complainant’s product and the Respondent’s website claims that while there are differences between the two products, they are nonetheless “so similar”.
The Complainant contends that when the Respondent accessed the Complainant’s product he accepted the Complainant’s terms and conditions (see section 4 above) and agreed inter alia that he would not “without Supercell’s express written consent, modify or cause to be modified any files that are a part of the Service or any Supercell game.”
The Complainant contends (and the supporting evidence appears to show) that the Respondent has copied some of the Complainant’s material (e.g. the image of the Barbarian King) and that that constitutes both copyright infringement and a further breach of the Complainant’s terms and conditions to which the Respondent has subscribed.
The Complainant contends that it has had no communications with the Respondent, specifically, that it has not granted the Respondent any permission to modify its Clash of Clans product or to use its copyright material and that the Respondent’s product has been developed in flagrant breach of the Complainant’s terms and conditions.
The Complainant contends that the use of the Domain Name (a domain name confusingly similar to the Complainant’s CLASH OF CLANS trade mark) to promote a product produced in breach of the Complainant’s terms and conditions to which the Respondent has subscribed, cannot give rise to a right or legitimate interest in respect of the Domain Name.
The Panel finds that the Complainant has made out a prima facie case under this element of the Policy, a case calling for an answer from the Respondent.
In the absence of any answer from the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. E. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered the Domain Name with a view to disrupting the Complainant’s business (paragraph 4(b)(iii) of the Policy) and that by using the domain name, he has intentionally attempted to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his web site or of a product or service on his web site (paragraph 4(b)(iv) of the Policy).
The Panel is not satisfied that the Respondent’s aim was to cause disruption to the Complainant’s business. However, the Panel is satisfied that the Respondent’s intention has been to derive commercial gain from his “Clash of Heroes” enterprise and, while the Respondent’s website makes it clear that the Respondent’s product is a modification of the Complainant’s product, nowhere does it make clear that the website is nothing to do with the Complainant. The Panel took some of the wording on the Respondent’s website (e.g. “AFTER THE GREAT SUCCESS OF OUR FIRST CLASH OF CLANS PRIVATE SERVER …”) to be wording appropriate (by use of the word “our” in combination with the name of the Complainant’s game) for a reference to the Complainant - in other words, a clear indication that at the very least the Respondent’s enterprise had the blessing of the Complainant, which it does not.
As indicated, the Respondent has had every opportunity to provide a response to the Complainant’s contentions, but has not done so. The Panel infers that the Respondent has no answer to the Complainant’s contentions.
The Panel finds that the Domain Name has been registered and is being used in bad faith. 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 Name, , be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Date: June 17, 2017
Full & Egal Universal Law Academy