The Complainant is Sybo ApS of Copenhagen, Denmark, represented by Løje, Arnesen & Meedom Law Firm LLP, Denmark.
The Respondent is Whoisguard Protected, Whoisguard Inc. of Panama / Saqib Qureshi of Karachi, Pakistan. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed 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 September 11, 2018. On September 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 11, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name. The Center sent an email communication to the Complainant on September 20, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 24, 2018.
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 Respondent of the Complaint, and the proceedings commenced on September 25, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 15, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 16, 2018.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on October 29, 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
The Complainant states that it “develops and holds all rights related to the popular computer game applications known under the title and trademark SUBWAY SURFERS and launched world-wide in its first version in May 2012”; that the Subway Surfers game “can be played on many platforms such as Android, iOS (Apple), Kindle and Windows Phone platforms” and is “a computer game of the type called ‘endless running game’ where game characters run through different environments attempting to avoid various obstacles and collect various items continuously occurring on the screen”. The Complainant further states that it “periodically launches new versions of the SUBWAY SURFERS game in new gaming environments comprising i.e. a world tour theme with new gaming environments referring to large cities around the world and including new characters”; that its Subway Surfers games “have been downloaded more than 1.8 billion times and users have spent a combined more than 14 billion hours playing the game”; and that the game is “the most downloaded game world-wide, and played daily by more than 20 million active players, and is the first game ever to reach 1 billion downloads on Android”.
The Complainant further states: “Among the items to be collected by the players while characters are running are coins and keys that accrue value that can be used in the game to purchase items for use in the game such as new characters, (hover)boards, clothes etc. As an alternative to earning the valuable coins and keys through successful playing, said coins and keys can also be bought for real money in the game thereby generating revenues to the Complainant noting that the game as such in its successively launched variations can be downloaded by users entirely for free.”
The Complainant states, and provides evidence to support, that it owns multiple trademark registrations that consist of or contain the mark SUBWAY SURFERS, including the following:
- European Union Trademark Reg. No. 015437742 for SUBWAY SURFERS (registered on November 3, 2016)
- International Reg. No. 1333584 for SUBWAY SURFERS (registered on May 20, 2016)
- European Union Trademark Reg. No. 013218748 for SUBWAY SURFERS (registered on January 13, 2016)
- International Reg. No. 1247048 for SUBWAY SURFERS (registered on November 28, 2014)
These trademarks are referred to herein as the “SUBWAY SURFERS Trademark”.
The Complainant states that it “owns” the domain name , which it uses in connection with “a website facilitating global promotion and sale of the SUBWAY SURFERS computer game.”
The Disputed Domain Name was registered on November 9, 2017. The Complainant states, and provides evidence to support, that the Disputed Domain Name is being used in connection with a website that “provide[s] ‘hacks’ for the Subway Surfers game,” which “distribut[es] a hack tool for users of the Subway Surfers game to be able to circumvent the legitimate buying restrictions in the Subway Surfers game thereby cheating the Complainant out of revenues from payments of valuable coins and keys”. 5. Parties’ Contentions A. Complainant
The Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to the SUBAY SURFERS Trademark because the trademark, absent the letter “s,” “constitutes the truly dominant and distinctive part of the Disputed Domain Name and consequently that there is a very high risk of confusion”; and the SUBAY SURFERS Trademark, absent the letter “s,” is the initial, dominant and distinctive part of the Disputed Domain Name”.
- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “the Respondent is not in any way authorized by the Complainant to use the Complainant’s trademark SUBWAY SURFERS or to sell or distribute valuable coins and keys for use in the Subway Surfers game”; the Respondent’s use of the Disputed Domain Name is “highly illegal” because “the ‘hack’ generator or tool on the website is meant to cheat the Complainant out of the legitimate in-app sales to users of valuable coins and keys for use in the Subway Surfers computer game”; and “the Respondent’s use of the Disputed Domain name is indeed commercial at least in the sense that it is in a pretext for commercial gain for the Respondent who is ‘gaining or seeking reputational and/or bargaining advantage’.”
- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “the Complainant’s SUBWAY SURFERS trademark is inherently distinctive by nature, and well-known through the use that the Complainant has made of it since 2012 and SUBWAY SURFER in the Disputed Domain Name obviously and expressly refers to the Complainant’s trademark and is not based on any consent or authorization, but is based on illegitimate actions, namely distributing a ‘hack’ tool for the Complainant’s Subway Surfers computer game, and with a clearly abusive commercial purpose of diverting users of the Subway Surfers game to the Respondent’s website where they are exposed for i.e. market surveys in order to gain access to the ‘hack tool’”; “it is obvious that the Respondent has registered the Disputed Domain Name in total awareness of the Complainant’s trademark SUBWAY SURFERS and with the deliberate purpose of disrupting the business of the Complainant by diverting the Complainant’s customers (users/players of the Subway Surfers game) to the Respondent’s website with the view of cheating the Complainant out of the legitimate in-app sales of coins and keys in the original and authorized version of the Subway Surfers computer games and the Respondent obtaining from that its own commercial gain from website users and commercial partners interested in the results of the users' market surveys”; and “[d]ue to the commercial nature of the Respondent’s website and the prominent and repeated use of the Complainant’s trademark in the Disputed Domain Name and on the Respondent’s website without any consent, and the identity of the goods and services offered (coins and keys for use in the Complainant’s Subway Surfers game where coins and keys are normally sold by the Complainant) it can be established without a doubt that the content of the Respondent’s website is trademark abusive.” B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, the Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registrations cited by the Complainant, it is apparent that the Complainant has rights in and to the SUBWAY SURFERS Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the SUBWAY SURFERS Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “subwaysurferhack”) because “[t]he applicable Top-Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.
The Disputed Domain Name contains the SUBWAY SURFERS Trademark in its entirety, absent a single letter “s.” As set forth in section 1.7 of WIPO Overview 3.0, “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”. Further, the absence of a single letter “s” has long been found irrelevant for purposes of the first element of the Policy. See, e.g., Columbia Pictures Industries, Inc. v. North West Enterprise, Inc.,WIPO Case No. D2006-0951 (“the absence of the letter ‘s’ does nothing to decrease the domain name’s confusing similarity”); and Staples, Inc., Staples The Office Superstore, Inc., and Staples Contract and Commercial, Inc. v. SkyLabs Corporation and DL Enterprises,WIPO Case No. D2004-0220 (finding confusing similarity despite a domain name’s “deletion of the plural”).
Finally, section 1.8 of WIPO Overview 3.0 states: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.” Therefore, inclusion of the word “hack” in the Disputed Domain Name does not impact the Panel’s findings under this element.
Accordingly, the Panel finds that the Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
The Complainant has argued that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “the Respondent is not in any way authorized by the Complainant to use the Complainant’s trademark SUBWAY SURFERS or to sell or distribute valuable coins and keys for use in the Subway Surfers game”; the Respondent’s use of the Disputed Domain Name is “highly illegal” because “the ‘hack’ generator or tool on the website is meant to cheat the Complainant out of the legitimate in-app sales to users of valuable coins and keys for use in the Subway Surfers computer game”; and “the Respondent’s use of the Disputed Domain name is indeed commercial at least in the sense that it is in a pretext for commercial gain for the Respondent who is ‘gaining or seeking reputational and/or bargaining advantage’.”
WIPO Overview 3.0, section 2.1, states: “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Panel finds that the Complainant has established its prima facie case and without any evidence from the Respondent to the contrary, the Panel is satisfied that the Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
The Complainant does not specify which, if any, of the enumerated factors is applicable here. However, the Panel agrees with the reasoning set forth in a previous decision under the Policy also involving the SUBWAY SURFERS Trademark and a similar website, regarding the disputed domain name , Sybo ApS v. Whoisguard Protected, Whoisguard, Inc. / Egbert Offens, Roeg Web,WIPO Case No. D2017-2125. In that case, the panel wrote: “The Panel finds the Respondent registered and is using the Domain Name with the intention of confusing Internet users into believing that the Domain Name is associated with the Complainant. The use of the Domain Name to sell the Complainant’s coins and keys is indeed a cheat, and it puts beyond doubt that the Domain Name has been registered to take unfair advantage of the goodwill associated with the Complainant’s trademark. It also documents that the Respondent attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion. The bad faith is supported by the fact that the Respondent has not responded to the Complainant’s contentions.” The same reasoning applies here.
Accordingly, the Panel finds that the Complainant has proven the third element 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 the Complainant.
Douglas M. Isenberg
Sole Panelist
Date: November 10, 2018
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