Complainant is Scottgames, LLC of Union, New Jersey, United States of America (“United States”), represented by Nissenbaum Law Group, LLC, United States.
Respondent is Domain Administrator, PrivacyG of Phoenix, Arizona, United States / Fidel Vance of Los Angeles, California, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 1, 2017. On December 4, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 4, 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 Complainant on December 5, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 8, 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 December 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 31, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 2, 2018.
The Center appointed Michael A. Albert as the sole panelist in this matter on January 10, 2018. 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 is a limited liability company, of which Scott Cawthorn is the sole member, that licenses the intellectual property of Mr. Cawthorn to third parties. Mr. Cawthorn is the creator of the famous computer games and mobile applications “Five Nights at Freddy’s”, “Five Nights at Freddy’s 2”, “Five Nights at Freddy’s 3”, “Five Nights at Freddy’s 4”, “Five Nights at Freddy’s 5”, “FNAF World”, and “Five Nights at Freddy’s: Sister Location”.
Mr. Cawthorn owns multiple trademark registrations related to the Five Nights at Freddy’s games including United States Trademark Registration No. 4755325 for FIVE NIGHTS AT FREDDY’S, issued June 16, 2015; United States Trademark Registration No. 4855473 for FIVE NIGHTS AT FREDDY’S, issued November 17, 2015; and United States Trademark Registration No. 5228022 for SISTER LOCATION, issued June 20, 2017 (collectively, the “FNAF Marks”).
Complainant is entitled to enter into licensing agreements with third parties and take action to prevent misuse of the FNAF Marks.
According to the Registration Certificate for the SISTER LOCATION mark, that mark was first used in commerce on October 7, 2016 and was filed on November 18, 2016.
Respondent registered the disputed domain name, , with NameSilo, LLC on October 7, 2016. The disputed domain name resolves to an active website displaying references to and images related to the Five Nights at Freddy’s games, including “Five Nights at Freddy’s: Sister Location.” The website appears to provide unauthorized and pirated versions of the Five Nights at Freddy’s games. On the website Respondent states, inter alia, “FNAF World: Official game available to buy and download”. 5. Parties’ Contentions A. Complainant
Complainant alleges that the disputed domain name is identical or confusingly similar to its SISTER LOCATION trademark because it consists of Complainant’s mark in its entirety, with a merely generic additional term, “free,” and the generic Top-Level Domain (“gTLD”) “.com.”
Complainant also alleges that Respondent has no rights or legitimate interests in the disputed domain name because Complainant has given no license or authorization to Respondent for the use of the SISTER LOCATION mark, and Respondent is not engaged in a bona fide offering of goods or services.
Finally, Complainant alleges that Respondent has registered and used the disputed domain name in bad faith, because Respondent registered the domain name the same day that “Five Nights at Freddy’s: Sister Location,” was released and uses the domain name to provide unauthorized and pirated versions of the Five Nights at Freddy’s games. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
At the outset, the Panel notes that previous Panels have recognized Complainant’s rights in the FNAF Marks as this Panel does. See, e.g., Scottgames, LLC v. Tien Kieu, Tien Doan / Domain Administrator,See, PrivacyG; Dung Danh Minh / Contact Privacy Inc. Customer 0146905890, WIPO Case No. D2017-0764 (“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.”). A. Identical or Confusingly Similar
Complainant has demonstrated rights to the SISTER LOCATION mark. The mark was first used in commerce on October 7, 2016 and was registered as a trademark with the United States Patent and Trademark Office on June 20, 2017. Moreover, Complainant controls the SISTER LOCATION mark and related FNAF Marks which are well known in conjunction with Mr. Cawthorn’s Five Nights at Freddy’s computer games and mobile applications as well as other products.
The SISTER LOCATION mark was not registered, nor was an application to register it on file, at the time Respondent registered the disputed domain name. However, “the Policy requires only that the complainant ‘has’ trademarks rights, i.e. ‘has’ them at the time the decision is being made.” See, Esquire Innovations, Inc. v. I c/o Whois Identity Shield; and Vertical Axis, Inc, Domain Adminstrator,WIPO Case No. D2007-0856.
The disputed domain name incorporates Complainant’s SISTER LOCATION mark, with the mere addition of “free,” and the generic Top-Level Domain (“gTLD”) “.com.” These additions are not sufficient to distinguish the domain name from the SISTER LOCATION mark. See, Autodesk, Inc. v. Domain Admin, Private Registrations Aktien Gesellschaft,WIPO Case No. D2013-1930(“The addition of the generic and common term ‘free’ as well as of the generic Top-Level Domain (‘gTLD’) ‘.com’ does not distract from or change the reading of the Domain Name.”). Therefore, the disputed domain name is confusingly similar to Complainant’s SISTER LOCATION mark.
The Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Once Complainant makes a prima facie case that none of the circumstances described in paragraph 4(c) of the Policy applies to Respondent, Respondent bears the burden of production to demonstrate rights to and legitimate interest in the disputed domain name. See, Linode LLC v. Dennis H. Doss,WIPO Case No. D2014-1532. Complainant has established its rights in the SISTER LOCATION mark. Complainant alleges that Respondent has not been commonly known by the domain name, has not used the domain name with Complainant’s authorization, and has not used the domain name in connection with a bona fide offering of goods or a legitimate noncommercial use. Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent, by its failure to respond, has not met its burden of production to demonstrate otherwise.
The Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
It is more difficult to establish that respondent registered a domain name in bad faith when the disputed domain name relates to a trademark that was not registered at the time respondent registered the domain name. See, Esquire Innovations, Inc. v. I c/o Whois Identity Shield; and Vertical Axis, Inc, Domain Adminstrator,WIPO Case No. D2007-0856 (acknowledging the difficulty of establishing bad faith where trademark was not registered at the time disputed domain name was registered but still finding bad faith). Nevertheless, Complainant has established that Respondent registered and used the disputed domain name in bad faith.
Paragraph 4(b)(iv) of the Policy explains that there is evidence of bad faith if, “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.”
In the present case, Respondent registered the disputed domain on the very same day that Mr. Cawthorn released “Five Nights at Freddy’s: Sister Location.” Both the timing of the domain name registration and the addition of the word “free” to Complainant’s SISTER LOCATION mark indicate that Respondent was aware of the popular computer game and sought to profit off the mark and the associated game’s popularity by diverting potential customers to Respondent’s website. Moreover, Respondent’s use of the domain name to provide and promote pirated copies of Five Nights at Freddy’s games is clear evidence that the mark was registered and used in bad faith. See, Wilcom Pty Ltd v. Jinsu Kim,WIPO Case No. D2009-0670 (“It is not unreasonable to suggest that the Respondent was aware of the Complainant has intentionally sought to profit from the sales of pirated copies of the Complainant’s software by creating consumer confusion between Respondent’s disputed domain name and the Complainant’s trademark.”).
The Panel finds 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 disputed domain name be transferred to Complainant.
Michael A. Albert
Sole Panelist
Date: January 22, 2018
Full & Egal Universal Law Academy