Complainant is Supercell Oy of Helsinki, Finland, represented by Roschier Brands, Attorneys Ltd., Finland.
Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama / Giacinto Napolitani of Tebe, Italy. 2. The Domain Name and Registrar
The disputed domain name ("the Domain Name") is registered with NameCheap, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 24, 2017. That same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. Also, on October 24, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 2, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 6, 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 Respondent of the Complaint, and the proceedings commenced on November 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 26, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 27, 2017.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on December 1, 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
Complainant owns rights in the CLASH OF CLANS Mark and the Mark (collectively, "the Marks"), including the following registrations in the United States of America ("United States" or "U.S."), U.S. Trademark Registrations Nos. respectively: 4,327,980 (registered April 30, 2013) and 4,887,394 (registered January 19, 2016).
Complainant also owns United States copyright registrations for its character artworks (e.g., HOG RIDER – U.S. Copyright Registration No. VA0001871160) and BARBARIAN – U.S. Copyright Registration No. VA0001871560).
The Domain Name was registered on June 15, 2017. It resolves to a website ("Respondent's website") where the first page has as its heading "Clash of Lights" in a font that is similar to the font used in Complainant's Mark and other marks for games on Complainant's website. That same page features a colored collage of character images that look like (similar to if not the same as) characters that are featured in various games advertised on the first page of Complainant's website. Furthermore, there are elements of Respondent's website that look like elements on Complainant's website. For example, the color palate of the collage of character images is similar and there are outlined boxes encapsulating words suggesting some action to the public (e.g., On Respondent's website: "DOWNLOAD" Clash of Lights; "DOWNLOAD" COL-Servers; "JOIN" Meet our community on discord. On Complainant's website: CLASH ROYALE, CLASH OF CLANS). Also, Respondent has included two blue areas toward or at the bottom on the first page of its website providing instructions to the public (e.g., for accessing servers and downloading the applications it is providing), as does Complainant on the first page of its website toward the bottom (e.g., Need help? PLAYER SUPPORT; "For Parents PARENT'S GUIDE; Suspicious activity? FRAUD ISSUES).
Also on the first page of Respondent's website are multiple click-through ads permitting the public to download various applications. And at the bottom of the first page of Respondent's website is the following statement: "This content is NOT affiliated with, endorsed, sponsored, or specifically approved by Supercell and Supercell is not responsible for it."
During the course of the proceedings the Panel notes that Respondent's website has been modified but many of the similar elements discussed above remain.
Users of Complainant's service are required to agree to Complainant's "Terms of Service" ("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 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 modify or cause to be modified any files that are a part of the Service or any Supercell game without Supercell's express written consent. Another term forbids making available through the Complainant's service any material or information that infringes any copyright, trademark etc. 5. Parties' Contentions A. Complainant
The Marks are being used for a mobile game created by Complainant that was released in 2012. Since then, the game has been ranked high in relevant mobile game rankings. In December 2015 the Clash of Clans game was one of the top iOS games by downloads and number 1 of iOS games by revenue worldwide. It also held the number 1 position as a strategy game (Best Chart Rankings) on February 6, 2016 on Apple's App Store. The Clash of Clans game maintained its popularity in 2016 and Complainant has also added Clash Royale to its game offerings. Due to the worldwide publicity, the Marks are well known.
The second level domain "clashoflightsapp" of the Domain Name is confusingly similar to Complainant's Marks and likelihood of confusion exists. "App" is a commonly used abbreviation of the term "application". The term app in "clashoflightsapp" refers to the software application that Respondent offers and that can be downloaded via "www.". It is descriptive and devoid of any distinctive character in relation to software applications and should not be given any significance when evaluating likelihood of confusion. The Marks and the Domain Name share the identical and distinctive element "CLASH OF". Furthermore, the identical elements are at the beginning of the Marks and the Domain Name, emphasizing the weight of the identical parts. The term "lights" in the Domain Name is similar in length with the term "clans" (6 vs. 5 characters) and both terms "lights" and "clans" end with the letter "s" which adds to the overall similarity between the two. Respondent's actions via its website (a modded private server of the Clash of Clans and Clash Royale games) are against the Terms of Service of Complainant. Furthermore, Respondent's website appears to use several of Complainant's copyrighted character artworks (e.g., HOG RIDER and BARBARIAN). The relation and reference to the Marks and games is obvious. The likelihood of confusion is elevated by the content of Respondent's website. The CLASH OF CLANS Mark is often abbreviated to "CLASH" by Complainant and its customers as well as the game industry press, adding to the likelihood of confusion.
With regard to the disclaimer at the bottom of Respondent's website (stating "This content is NOT affiliated with, endorsed, sponsored, or specifically approved by Supercell and Supercell is not responsible for it".), the existence of a disclaimer cannot by itself cure bad faith when bad faith has been established by other factors. A disclaimer can also show that Respondent had prior knowledge of Complainant's Marks.
Respondent does not have rights or legitimate interests to the Domain Name and did not register it as a trademark, service mark or company name anywhere in the world when applying to register the Domain Name. Complainant has not licensed its Marks or otherwise permitted Respondent to register the Domain Name. There is no relationship between Complainant and Respondent and Respondent's website is used for illegitimate and commercial bad faith purposes.
The main purpose of Respondent registering the Domain Name has been to disrupt Complainant's business in relation to the Clash of Clans game. According to the Terms of Service publicly available on Complainant's web site, any use of 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. Respondent is aware of Complainant's Marks and of the public license limitations stated in Complainant's Terms of Service. Complainant has created the Clash of Clans game and it owns all the related IP rights. It also has an exclusive right to utilize the game commercially, create the terms of service and license the game. Respondent's website is clearly disrupting Complainant's business by offering a modded private server of the Clash of Clans game. Respondent is also enabling the violations of Complainant's Terms of Service causing bans, termination of licenses and other negative consequences to the users of its website. Respondent has therefore registered and used the Domain Name in bad faith.
Respondent's website and the modded private server of Clash of Clans which Respondent provides via its website causes commercial harm to Complainant and at the very least potential commercial gain to Respondent. Respondent is aware of Complainant's public Terms of Service and that its website enables violation of those Terms. All aspects of the ways in which Respondent commercially gains from use of its website are not known, but the potential commercial gains are obvious. Respondent's website provides links to advertisements of gambling services and map software applications. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant holds rights in the CLASH OF CLANS Mark and the Mark including by virtue of the following United States Registrations Nos. respectively: 4,327,980 and 4,887,394.
The Domain Name comprises the terms "Clash of Lights App" and the ".com" generic Top-Level Domain ("gTLD") identifier. It is 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 Section 1.7 of WIPO Overview 3.0. The test for confusing similarity typically involves a side-by-side comparison of the Domain Name and the textual components of the Marks here to assess whether the Marks are recognizable within the Domain Name. 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.
Complainant contends that the Marks and the Domain Name share the identical and distinctive element "CLASH OF", emphasizing the weight of the identical parts. It also argues that the term "lights" in the Domain Name is similar in length with the term "clans" (6 vs. 5 characters) and both terms "lights" and "clans" end with the letter "s" which adds to the overall similarity between the two. The Panel agrees. Considering the Marks and the Domain Name side-by-side it is immediately apparent that the first two words "CLASH OF" stand out and the third word in each case ("lights" and "clans") is less distinctive. Also included in the Domain Name is the term "app," a commonly used abbreviation of the term application – as in software application. Using the term "app" does nothing to distinguish the Domain Name from the Marks, rather it adds to the confusing similarity insofar as both Respondent and Complainant offer software applications that can be downloaded from their respective websites.
Respondent's use of the Domain Name on a website that provides a modded private server of the Clash of Clans and Clash Royale games and that bears copies of Complainant's registered character artworks (e.g., HOG RIDER and BARBARIAN artworks) supports the finding of confusing similarity.
The Panel therefore holds that Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the Domain Name because: (1) Complainant has not licensed the Marks to Respondent or otherwise permitted Respondent to register the Domain Name; (2) there is no relationship between Complainant and Respondent; (3) Respondent did not register the Domain Name as a trademark, service mark or company name anywhere in the world when applying to register the Domain Name; and (4) Respondent's use of the Domain Name on Respondent's website is for illegitimate and commercial bad faith purposes.
Complainant has raised a prima facie presumption of Respondent's lack of rights or legitimate interests, and Respondent has failed to rebut that presumption. The Panel is therefore satisfied that Complainant has carried its burden of proving that Respondent has no rights or legitimate interests in the Domain Name.
The Panel therefore holds that Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel finds that it is more likely than not that Respondent knew of Complainant and its rights in the Marks when registering the Domain Name and, thus, registered it in bad faith. Complainant has owned rights in the CLASH OF CLANS Mark and the Mark since before Respondent registered the Domain Name on June 15, 2017. In fact the CLASH OF CLANS Mark was registered in the United States back on April 30, 2013 and the Mark was registered on January 19, 2016. Respondent's statement ("This content is NOT affiliated with, endorsed, sponsored, or specifically approved by Supercell and Supercell is not responsible for it.") specifically mentions Complainant so Respondent would have to have known of Complainant and its business. Furthermore, as discussed above, Respondent's website features on its first page a collage of character images including ones that are like Complainant's registered character artworks (e.g., HOG RIDER and BARBARIAN artworks) that Complainant uses with its games. And prominently featured on the first page of Respondent's website is the term "Clash of Lights" in a font that is similar to that font used by Complainant for the names of its games. Considering the popularity and renown of Complainant's Clash of Clans online game, and the other undisputed facts set forth here, it is difficult to fathom that Respondent, who also is in the online game business, would not know of Complainant and its rights in the Marks.
Respondent has used a confusingly similar Domain Name in conjunction with a website having elements that look like elements of Complainant's website to offer a modded private server of the Clash of Clans game, and to provide links to various kinds of software that can be downloaded. These activities may not only disrupt Complainant's business in relation to the Clash of Clans game, but also, financially benefit Respondent. Furthermore, Respondent is enabling violations of Complainant's Terms of Service causing bans, termination of licenses and other negative consequences to the users of its website. These activities all constitute bad faith use of the Domain Name. Finally, where the overall circumstances of a case point to the Respondent's bad faith, the mere existence of a disclaimer cannot cure such bad faith. In this case, Respondent's bad faith cannot be cured by the aforementioned disclaimer. See Section 3.7 of WIPO Overview 3.0.
The Panel therefore holds that Complainant has satisfied paragraph 4(a)(iii) 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 Name be transferred to Complainant.
Harrie R. Samaras
Sole Panelist
Date: December 11, 2017
Full & Egal Universal Law Academy