The Complainant is Scottgames, LLC of Union, New Jersey, United States of America ("United States"), represented by Nissenbaum Law Group, LLC, United States.
The Respondents are Tien Kieu, Tien Doan of Ho Chi Minh, Viet Nam / Domain Administrator, See PrivacyG of Phoenix, Arizona, United States; Dung Danh Minh of Ho Chi Minh, Viet Nam / Contact Privacy Inc. Customer 0146905890 of Toronto, Ontario, Canada. 2. The Domain Names and Registrars
The disputed domain names , , , , , and are registered with NameSilo, LLC.
The disputed domain name is registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 14, 2017. On April 18, 2017, the Center transmitted by email to NameSilo, LLC and Tucows Inc. (the "Registrars") a request for registrar verification in connection with the disputed domain names. On April 19, April 21 and April 24, 2017, the Registrars transmitted by email to the Center their verification responses disclosing registrants and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on April 24, 2017 providing the registrants and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 28, 2017 including a consolidation request regarding multiple registrants.
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, and the proceedings commenced on May 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 22, 2017. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on May 23, 2017.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on June 8, 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 of the computer games and 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", "FNAF World" and "Five Nights at Freddy's: Sister Location" (collectively, the "Five Nights Games"). The games are also known and commonly referred to by the acronym "FNAF".
Mr. Cawthon is also the owner of the following United States trademark registrations for FIVE NIGHTS AT FREDDY'S:
- Trademark Registration No. 4,755,325 registered on June 16, 2015, with a date of first use in commerce of July 24, 2014; and
- Trademark Registration No. 4,855,473 registered on November 17, 2015, with a date of first use in commerce of August 8, 2014.
An application for the mark SISTER LOCATION has been filed by Mr. Cawthon but is still pending before the United States Patent and Trademark Office ("USPTO").
The Complainant, Scottgames, LLC, is owned by Mr. Cawthon and is the legal entity through which Mr. Cawthon licenses and defends his intellectual property related to the Five Nights Games and trademarks.
This case relates to the following disputed domain names:
(1) , registered on December 6, 2016, currently redirecting Internet users to , displaying pay-per-click advertisements, news related to the Complainant's games and links to downloads for versions of the Complainant's games;
(2) , registered on December 9, 2016, currently displaying pay-per-click advertisements, news related to the Complainant's games and links to downloads for versions of the Complainant's games;
(3) , registered on December 6, 2016, currently redirecting Internet users to , displaying pay-per-click advertisements, news related to the Complainant's games and links to downloads for versions of the Complainant's games;
(4) , registered on December 6, 2016, currently redirecting Internet users to , displaying pay-per-click advertisements, news related to the Complainant's games and links to a "FNAF WORLD FULL VERSION";
(5) , registered on December 9, 2016, currently displaying pay-per-click advertisements and videos relating to the Complainant's games;
(6) , registered on December 9, 2016, currently displaying pay-per-click advertisements, videos and a description mentioning Mr. Cawthon and his games;
(7) , registered on December 6, 2016, currently providing links to downloads for versions of the Complainant's games;
(8) , registered on December 28, 2016, currently not redirecting Internet users to an active webpage. 5. Parties' Contentions A. Complainant (i) Consolidation
The Complainant requests the consolidation into one Complaint of the complaints against all of the Respondents for the disputed domain names arguing that they are all subject to common control and the consolidation would be fair and equitable to all parties ex vi paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"). According to the Complainant, common control of the disputed domain names arises from the following circumstances:
(a) Seven of the eight disputed domain names are linked to domain names ordered to be transferred in a past UDRP proceeding and appear to have been created by the same Respondent;
(b) the disputed domain names are used in a nearly identical fashion in furtherance of a common scheme and are connected to the websites that appear nearly identical;
(c) the disputed domain names are associated with the @fnafworldgame Facebook and Twitter accounts that promote Internet traffic to the disputed domain names in furtherance of a common scheme; and
(d) the registered street addresses relating to the disputed domain names are only 300 meters apart. (ii) Identical or Confusingly Similar
The Complainant asserts that its sole rights holder is the owner of the registered FIVE NIGHTS AT FREDDY'S trademarks, also claiming rights in the FNAF WORLD and SISTER LOCATION game titles as well as over the Five Nights at Freddy's acronym, FNAF, all of which Complainant contends serve as trademarks in their own right (collectively, the "FIVE NIGHTS marks").
The Complainant further asserts that a comparison between the disputed domain names and the famous FIVE NIGHTS marks unmistakably shows that the Respondents have incorporated at least one variation of the marks into every one of the disputed domain names (as in , and ) and/or relates to a misspelling of either FIVE NIGHTS AT FREDDY'S, FNAF and/or FNAF WORLD (the case of , , and ).
Furthermore, according to the Complainant, the addition of "game", "play" and "fan" to the FNAF trademark in some of the disputed domain names does not remove any likelihood of confusion and only serves to imply that the disputed domain names provide free access to playable and/or downloadable unauthorized and/or pirated versions of the Complainant's Five Nights Games. As to the , the replacement of the word "five" with the numeral "5" does not remove the likelihood of confusion.
Therefore, under the Complainant's view, all of the disputed domain names incorporate the FIVE NIGHTS marks, causing likelihood of confusion as to the source and/or sponsorship and under paragraph 4(a)(i) of the Policy, should be found "identical or confusingly similar to a trademark or service mark in which the complainant has rights". (iii) Rights or Legitimate Interests
Regarding the absence of the Respondents' rights or legitimate interests, the Complainant argues that:
a. the Respondents have not been granted any license or other authorization by either Mr. Cawthon or by the Complainant to use the FIVE NIGHTS marks;
b. the Respondents have not been commonly known by the disputed domain names;
c. there is no evidence that the Respondents used, or demonstrably prepared to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services prior to the Complainant's use of the FIVE NIGHTS marks;
d. the Respondents have used the disputed domain names in connection with an infringement of the Complainant's intellectual property, intentionally attracting Internet traffic to the corresponding websites which provide unauthorized and/or pirated, playable and/or downloadable versions of the Five Nights Games along with derivative works of the Five Nights Games, presumably profiting by advertising revenues generated from pay-per-click advertisements; (iv) Registered and Used in Bad Faith
The Complainant contends that the disputed domain names were registered in bad faith since all of them contain a variation of at least one of the FIVE NIGHTS marks, including the intentional misspellings which are commonly referred to as "typosquatting".
Moreover, the registration of the disputed domain names, under the Complainant's view, took place as an attempt to circumvent a past UDRP procedure (Scottgames, LLC v. Domain Administrator, PrivacyG / Kris Miranda, DTDAFF / Dang Ngo / Thuan Tran / Wiley Prince, DTD / Duong Ngo Huynh, DTD SOFTWARE CO., LTD / Fidel Vance, Spiritual,WIPO Case No. D2016-2372) in which the complaint was notified to the Respondent on December 6, 2016, the same date in which most of the disputed domain names were created. Therefore, the registration of the disputed domain names under this proceeding clearly demonstrates an attempt to continue to unlawfully continue using the FIVE NIGHTS marks to generate advertising revenue.
As to the use of the disputed domain names in bad faith, considering that the disputed domain names promote, inter alia, the unauthorized and/or pirated versions of the Five Nights Games the use thereof enables the Respondents to attract Internet users to the associated websites and generate advertising revenues. B. Respondent
The Respondents did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain names to the Complainant:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present in order to obtain the transfer of the disputed domain names.
In accordance with paragraph 14(a) of the Rules, if the Respondents, in the absence of exceptional circumstances, do not submit a Response the Panel shall decide the dispute based upon the Complaint.
Prior to analyzing the merits of this case however this Panel must decide on the Complainant's request for consolidation into a single proceeding. A. Consolidation of Multiple Registrants as Respondents in a Single Administrative Proceeding
The Complainant requests under paragraph 3(c) and 10(e) of the Rules that this Panel accepts the multiple Respondents in a single proceeding in view of the facts enumerated at paragraph 5.A. above.
This Panel is satisfied, in view of the evidences submitted and on balance that the disputed domain names are indeed subject to a common control.
Indeed, the timeframe in which the registrations occurred before the same Registrar (except for one of the disputed domain names), the use of privacy protection services, the layout of the websites relating to the disputed domain names and the respective use made thereof, the lack of a reply by all of the Respondents, and the association with Facebook and Twitter accounts with the same username "@fnafworldgame" that promote Internet traffic to the disputed domain names, all corroborate with the consolidation in a single administrative proceeding, being it procedurally efficient, fair and equitable to all Parties. B. Identical or Confusingly Similar
The Complainant has established its rights in the well-known trademark FIVE NIGHTS AT FREDDY'S as well as has submitted evidence to show that it has developed rights in the acronym FNAF and the marks FNAF World and SISTER LOCATION (the latter already filed but not yet registered) in connection with online games as decided in past URDP decisions (Scottgames, LLC v. Domain Administrator, PrivacyG / Kris Miranda, DTDAFF / Dang Ngo / Thuan Tran / Wiley Prince, DTD / Duong Ngo Huynh, DTD SOFTWARE CO., LTD / Fidel Vance, Spiritual, supra and Scottgames, LLC v. Ong Dai Vu Hao, Tran Tich Quan, Delvin Dragon and Tran Dai,WIPO Case No. D2016-1367).
The disputed domain names , , , , and in addition to (i) either incorporating the FNAF acronym or characterizing a misspelling thereof; (ii) incorporate a reference either to "game" or "fan" (generic words related to the Complainant's activities) or reproduce partially one of the Complainant's marks (FNAF WORLD and SISTER LOCATION).
The disputed domain name substitutes the word "five" for the numeral "5" which does not add any distinctive character to it and clearly relates to the Complainant's FIVE NIGHTS AT FREDDY'S game.
Lastly, the disputed domain name is made up of parts of the Complainant's FIVE NIGHTS AT FREDDY'S and SISTER LOCATION trademarks.
For the reasons above, the Panel finds that the disputed domain names are confusingly similar to the Complainant's trademarks. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate the Respondents' rights or legitimate interests in the disputed domain names. These circumstances are:
(i) before any notice of the dispute, the Respondents' use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or
(ii) the Respondents (as individuals, businesses, or other organizations) have been commonly known by the disputed domain names, in spite of not having acquired trademark or service mark rights; or
(iii) the Respondents are making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondents, in not responding to the Complaint, have failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain names. This entitles the Panel to draw any inferences from such default as it considers appropriate, pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make at least a prima facie case against the Respondents under the second UDRP element.
In that sense, the Complainant indeed asserts that no authorization or license has been given by Mr. Cawthon or by the Complainant to the Respondents to register the disputed domain names. There is also no evidence that the Respondents have been commonly known by the disputed domain names.
According to the evidence submitted by the Complainant the websites that resolved or still resolves from the disputed domain names have and are being used to infringe the Complainant's intellectual property, providing unauthorized and/or pirated, playable and/or downloadable versions of the Five Nights Games along with derivative works of the Five Nights Games.
In addition to that, the websites available at the disputed domain names are attracting Internet traffic and presumably profiting by advertising revenues generated from pay-per-click advertisements what clearly does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondents do not have rights or legitimate interests with respect to the disputed domain names. D. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other online location, by creating a likelihood of confusion with a complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, both the registration and use of the disputed domain names in bad faith can be found pursuant to Policy, paragraph 4(b)(iv) in view of the reproduction of the Complainant's marks, as well as the unauthorized and/or pirated, playable and/or downloadable versions of the Five Nights Games along with derivative works of the Five Nights Games made available at the websites resolving from the disputed domain names.
Other factors corroborate a finding of bad faith such as the use of privacy protection services, the potential revenues generated by the pay-per-click advertisements available at the websites, the typosquatting and the absence of any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate good faith in the registration or use of the disputed domain names.
For the reasons above, the Respondents' conduct has to be considered, in this Panel's view, as bad faith registration and use of the disputed domain names pursuant to paragraph 4(b)(iv) 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 disputed domain names , , , , , , and be transferred to the Complainant.
Wilson Pinheiro Jabur
Sole Panelist
Date: June 22, 2017
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