Complainant is PUBG Corporation of Seoul, Republic of Korea, represented by Jungmin Shim, Republic of Korea.
Respondent is Theodotos Kapsis, Crystal Future Ou of Tallinn, Estonia, represented by Internet & Law, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Uniregistrar Corp (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 18, 2018. On February 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 20, 2018, the Registrar transmitted by email to the Center its verification response confirming that 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”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 15, 2018. The Response was filed with the Center March 14, 2018.
The Center appointed Robert A. Badgley, Ik-Hyun Seo and Christopher S. Gibson as panelists in this matter on April 23, 2018. The Panel finds that it was properly constituted. Each member of 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.
On May 4, 2018, the Panel issued Procedural Order No. 1, which stated:
“Respondent is ordered to indicate (with such evidence as is available), on or before May 11, 2018, the date on which he acquired the Domain Name , and indicate from whom he acquired the Domain Name, and for what purpose he acquired the Domain Name. In the event a response to this Procedural Order No. 1 is received from Respondent on or before May 11, 2018, Complainant shall have until May 18, 2018 to submit a reply to Respondent’s response to this Procedural Order No. 1. The decision due date is extended to May 25, 2018.”
On May 10, 2018, Respondent responded to Procedural Order No. 1. Respondent stated that the Domain Name was purchased on April 5, 2017 by a company affiliated with Respondent, and that the Domain Name was thereafter transferred to Respondent.
On May 18, 2018, Complainant replied to Respondent’s response to Procedural Order No. 1. On May 21, 2018, Respondent sent an unsolicited email to the Center purporting to reply to Complainant’s May 18, 2018 submission. 4. Factual Background
Complainant has developed and published a multiplayer online battle game called PlayerUnknown’s BattleGrounds, known as PUBG. Complainant holds a registered trademark in the United Kingdom for PUBG, registered on January 5, 2018 with a priority date of October 13, 2017. According to Complainant, its game has been known as PUBG since its release on March 24, 2017.
The Domain Name was registered on April 23, 2000. As noted above, Respondent acquired the Domain Name (through an affiliated firm) on April 5, 2017. The Domain Name resolves to a website containing information about the PUBG game.
Complainant’s PUBG logo appears at the top of Respondent’s website. Annexed to the Response is a screen shot of the “Contacts” page of Respondent’s website with text indicating Respondent’s contact details, followed by the statement: “This website acts as a noncommercial independent new project. The official web-site of PUBG Corporation is…” There follows a link to Complainant’s official site. However, the landing page of Respondent’s website does not include this content. 5. Parties’ Contentions A. Complainant
Complainant asserts that Respondent “is making an illegitimate commercial use of the Domain Name, with an intent for commercial gain misleadingly to divert consumers.” According to Complainant, Respondent “pretends to be related to [Complainant], uploading news under the official logo of PUBG, and shows ranks of live streamers of the game PLAYERUNKNOWN’S BATTLEGROUNDS, misleading consumers to the false conception that [Respondent’s website] is a website that is related to [Complainant.]” Complainant also asserts that Respondent is in bad faith because it posts messages “that are from [Complainant].” Complainant seeks a transfer of the Domain Name. B. Respondent
Respondent argues that his website is a purely noncommercial “fan site” which clearly disclaims any relationship to Complainant. As such, Respondent asserts, he has a legitimate interest in the Domain Name and has not acted in bad faith within the meaning of the Policy. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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. A. Identical or Confusingly Similar
The Panel concludes that Complainant has trademark rights in the mark PUBG through registration and use. Respondent concedes that the Domain Name is identical to the mark, and the Panel so holds.
Complainant has established the first element of the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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 concludes that Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent claims, by way of his motives, that he is merely operating a noncommercial “fan site” concerning Complainant’s PUBG game. The Panel finds, however, that Respondent’s credibility in this case is damaged by Respondent’s misleading Response. Although Respondent never asserted that he had registered the Domain Name back in April 2000, he repeatedly intimated that he had some kind of relationship with the Domain Name going back long before Complainant launched its PUBG game in March 2017.
For instance, in the section of the Response addressing the question whether Respondent has any rights or legitimate interests in respect of the Domain Name, Respondent wrote:
“The Respondent has rights or legitimate interests in respect of the domain name.
The website under the disputed domain name is a fan site (…)
The disputed domain name had been registered for 17 years earlier than the Complainant had acquired rights to PUBG trademark. (…)
So before the Respondent received any notice of the dispute, the Respondent has used the domain name without intent for commercial gain (…).”
In the “bad faith” section of the Response, Respondent wrote:
“The disputed domain name could not be registered in bad faith – it had been registered 17 years earlier than the Complainant has acquired rights to PUBG trademark. (…)
When a respondent registers a domain name before the complainant’s trademark rights accrue, there is no bad faith on the part of the respondent. (Case citations omitted.)”
To be sure, Respondent admitted in response to the Panel’s Procedural Order No. 1 that he had actually acquired the Domain Name on April 5, 2017, i.e., after the launch of Complainant’s PUBG game.
Nonetheless, the Panel interprets the statements made in the Response itself as being calculated to give the false impression that Respondent had some type of ownership or control of the Domain Name long before the PUBG game came into being. Instead, the complete record now indicates that Respondent specifically targeted Complainant and its PUBG game and mark when it acquired the Domain Name in April 2017, shortly after the PUBG game was first released in March 2017. The Panel finds it more likely than not that Respondent’s misleading omissions were intended to bolster Respondent’s case in this proceeding, since the Complaint would very probably have failed if it had been established that Respondent registered the Domain Name long before there was a PUBG game.
This lack of candor on Respondent’s part casts doubt on everything Respondent asserts in his Response. As such, the Panel, on the balance of the probabilities, doubts that Respondent intends to carry on a purely noncommercial “fan site” going forward.
Even setting aside Respondent’s lack of credibility, the Panel would conclude that Respondent lacks rights or legitimate interests in respect of the Domain Name. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) addresses the circumstances under which a domain name used for a “fan site” may be considered legitimate. Under the more general rubric of “fair use” of a domain name, the WIPO Overview 3.0 states:
“2.5 What are some core factors UDRP panels look at in assessing fair use?
Fundamentally, a respondent’s use of a domain name will not be considered “fair” if it falsely suggests affiliation with the trademark owner; the correlation between a domain name and the complainant’s mark is often central to this inquiry. 2.5.1 The nature of the domain name
Generally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation.”
With specific reference to fan sites, the WIPO Overview 3.0 states in relevant part (with emphasis added):
“2.7.2 Where a domain name which is identical to a trademark (i.e., ) is being used in relation to a genuine noncommercial fan site, panels have tended to find that a general right to operate a fan site (even one that is supportive of the mark owner) does not necessarily extend to registering or using a domain name that is identical to the complainant’s trademark, particularly as the domain name may be misunderstood by Internet users as being somehow sponsored or endorsed by the trademark owner. (…) In such cases, where the domain name is identical to the trademark, panels have also noted that this prevents the trademark holder from exercising its rights to the mark and so managing its presence on the Internet, including through a corresponding email address. (…)”
With these principles in mind, the Panel finds that Respondent lacks legitimate interests here. The Domain Name is identical to Complainant’s PUBG mark. Respondent’s website prominently displays Complainant’s logo, and there was no disclaimer of affiliation with Complainant. Respondent annexes to his Response a screenshot of the “Contacts” page of his website which states that it is a noncommercial information site and supplies a hyperlink to Complainant’s official site. However, it appears that this text, which tends to disclaim an association with Complainant, does not appear on the landing page of Respondent’s website, and the “Contacts” page itself can only be reached via a hyperlink at the very bottom of the landing page of Respondent’s website.
Respondent’s website, as of the time this case was initiated, gives the impression that it is either operated by, or at least sponsored by or affiliated with, Complainant. Under these circumstances, the Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.
Complainant has established the second element of the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Name in bad faith. WIPO Overview 3.0, section 3.1, states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”. The Panel considers that the facts of this case satisfy this understanding of bad faith.
In particular, paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. The Panel observes that Respondent registered the Domain Name, which is identical to Complainant’s PUBG mark and falsely suggests that Respondent either is Complainant, or is connected to Complainant. Further, it is clear from the record that Respondent had Complainant’s PUBG game and mark in mind, and targeted it, when he acquired the Domain Name in April 2017. In the instant case, the Panel does not dispute Respondent’s right to establish and maintain a fan site for Complainant’s PUBG game. However, the right to establish such a fan site does not translate into a right to identify one’s self as Complainant or its PUBG game. See Monty and Pat Roberts, Inc. v. Bill Keith,WIPO Case No. D2000-0299.
With respect to bad faith use, the Panel draws upon its earlier discussion of Respondent’s lack of legitimate interests, with particular emphasis on the lack of credibility attached to Respondent in this case. The Panel finds it more likely than not that Respondent is taking unfair advantage of or otherwise abusing Complainant’s PUBG mark. In particular, the Panel finds it more likely than not that Respondent is using the Domain Name in bad faith under the above-quoted Policy, paragraph 4(b)(iv). Respondent claims that he is operating a purely noncommercial fan site, but he added the “noncommercial” text to his website only after becoming aware of the Complaint in this proceeding. Left to his own devices before this proceeding was initiated, Respondent had set up and operated a website that strongly suggested some kind of affiliation with Complainant, with Complainant’s PUBG logo appearing at the top of Respondent’s site. In many respects, through use of the Domain Name that is identical to Complainant’s PUBG mark, as well as using Complainant’s logo without a clear disclaimer, Respondent engaged in a scheme to impersonate, or at least associate itself with, Complainant. Further, it would be all too easy for Respondent to monetize his website in one manner or another, such as by using sponsored links, fees for certain features, etc. Given Respondent’s lack of candor in this proceeding, it is the Panel’s conclusion that there is a high risk of such monetization if Respondent were permitted to keep this Domain Name. Complainant should not have to wait around to see if and when and how this actually occurs.
In conclusion, the Panel determines that, for all of the above reasons, the Domain Name was registered and is being used in bad faith. Complainant has established the third element of the Policy, paragraph 4(a)(iii). 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.
Robert A. Badgley
Presiding Panelist
Ik-Hyun Seo
Panelist
Christopher S. Gibson
Panelist
Date: May 24, 2018
Full & Egal Universal Law Academy