The Complainant is Ubisoft Mobile Games, France, represented by François-Xavier Boulin, France.
The Respondent is Registration Private, Domain By Proxy, LLC, United States of America (“United States”) / UEO Solutions, United Kingdom, self-represented. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2019. On July 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 24, 2019, 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 the Complainant on July 25, 2019, 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 July 29, 2019. 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”). The Respondent communicated with the Center and the Complainant by emails on July 26, 2019, and on two occasions on July 29, 2019. Upon request of the Parties, the proceeding was suspended on August 5, 2019, pursuant to the Rules, paragraph 17. Upon request of the Complainant, the proceeding was reinstituted on October 7, 2019. In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 3, 2019. No further communications were received from the Respondent. On November 4, 2019, the Parties were informed of the commencement of the Panel appointment process, pursuant to the Rules, paragraph 6. The Center appointed Warwick A. Rothnie as the sole panelist in this matter on November 14, 2019. 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. On December 9, 2019, the Panel issued Procedural Order No. 1 inviting the Complainant to submit a supplemental filing under paragraph 12 of the Rules clarifying the commencement of the use of “Ketchapp” in the circumstances discussed below. The Complainant submitted a supplemental filing on December 13, 2019. Although provision was made for any responsive material on the part of the Respondent, no further communication was received from the Respondent. 4. Factual Background The Complainant is a subsidiary of Ubisoft Entertainment SA, a leading publisher and distributor of electronic games and interactive entertainment. Within that corporate group, the Complainant itself is primarily engaged in creating and distributing mobile videogames. In 2016, the Complainant (or its parent) acquired the business of Ketchapp SARL. Ketchapp SARL was incorporated in France on April 12, 2012. From at least 2014 until its acquisition by the Complainant, Ketchapp SARL released a number of very successful mobile videogames. For example, in March 2014, it released the free “2048” which has been downloaded some 66.6 million times and (according to the Complaint) is still downloaded over 700,000 times each month. In February 2015, Ketchapp SARL released “ZigZag”, another free game, which has been downloaded 51 million times and is still downloaded at the rate of 1.5 million times per month. In October 2014, Ketchapp SARL released “Circle” which has been downloaded almost 20 million times. According to App Annie, Ketchapp SARL ranked #5 in the Free App Downloads category in 2014 and ranked #2 in the Free App Downloads category for both 2015 and 2016. The “Ketchapp” Facebook page has over 8 million followers. For the promotion of the Complainants games, the Complainant edits the website “www.ketchappgames.com”. According to the public information available on the WhoIs, the domain name As a result of its acquisition of the business of Ketchapp SARL, the Complainant is the owner of, amongst other things, the following registered trademarks: - French Registered Trademark No. 4144057, KETCHAPP in respect of goods and services in International Classes 9, 28, 38, and 41, dated on December 22, 2014; - European Union Trademark No. 14175806, KETCHAPP, in respect of goods and services in International Classes 9, 28, 38, and 41, which was filed on May 28, 2015, and registered on September 14, 2015; - United States Registered Trademark No. 4,995,953, KETCHAPP in respect of goods in International Class 9 which was registered on July 12, 2016, and claims first use in commerce on April 4, 2012; - International Registration No. 1423630, KETCHAPP, in respect of goods and services in International Classes 9, 28, and 41, which was registered on July 2, 2018 and designating China. The disputed domain name was first registered on November 15, 2009. According to a domain report provided by Domain Tools, the disputed domain name has changed hands three times, being held: - initially by R.D. until in or about December 30, 2011; - then by S.P. until in or about November 2012; and - since in or about November 17, 2012, by GoDaddy’s Domains By Proxy LLC service. According to the Respondent,1 that was when it became the holder of the disputed domain name. The disputed domain name does not appear to have resolved to an active website since its creation. Entering the disputed domain name into a browser directs one to a page “ERR_CONNECTION_REFUSED”. The disputed domain name was listed on GoDaddy’s platform as available for purchase for USD 35,000 on January 29, 2019, and EUR 31,108.35 on June 5, 2019. On March 31, 2019, the Complainant sent a cease and desist letter to the First Respondent. No response was received to this letter. 5. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (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. Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights. There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark. The Complainant has proven ownership of the registered trademarks identified in section 4 above. The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system. Questions such as the scope of the trademark rights, the geographical location of the respective parties, and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.11 . Disregarding the “.com” gTLD, therefore, the disputed domain name is identical to the Complainant’s proven trademark. Accordingly, the Panel finds that the Complainant has established the requirement under the first limb of the Policy. B. Registered and Used in Bad Faith In the circumstances of this case, it is appropriate to consider next the third requirement under the Policy. Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470. Paragraph 4(b) identifies situations which may demonstrate that registration or use of a disputed domain name was not in bad faith under the Policy: For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of [the disputed] domain name in bad faith: (i) circumstances indicating that [the Respondent] has registered or [the Respondent has] acquired the [disputed] domain name primarily for the purpose of selling, renting, or otherwise transferring the [disputed] 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 Respondent’s] documented out-of-pocket costs directly related to the [disputed] domain name; or (ii) [the Respondent has] registered the [disputed] 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 Respondent has] engaged in a pattern of such conduct; or (iii) [the Respondent has] registered the [disputed] domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website 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 [the Respondent’s] website or location or of a product or service on [the Respondent’s] website or location. In essence, the Complainant contends that the Respondent registered the disputed domain name with knowledge of Ketchapp SARL and its trademark and intended to take advantage of the trademark significance of “Ketchapp” as an original and distinctive trademark. As the Complainant points out, the date for carrying out the assessment under this head is the date the Respondent became the holder of the domain name. In contrast, the mere renewal of a registration by a continuing holder does not postpone the date for assessing whether the registration was in bad faith. See WIPO Overview 3.0 , section 3.9 . In the email sent on July 26, 2019, when the dispute was notified to it, the Respondent stated that it had been the holder of the disputed domain name since 2009. The basis for that claim was not elaborated. It is inconsistent with the information obtained through the Domain Tools domain report. Moreover, in its subsequent emails on July 29, 2019, the Respondent stated that it acquired the disputed domain name from GoDaddy in 2012. It appears therefore that the Respondent in fact became the holder in about November 2012. Accordingly, that is the relevant date for the assessment whether the disputed domain name was registered in bad faith. Although its trademarks were not registered until after that date, the Complainant states that it (in the guise of its predecessor business Ketchapp SARL) was formed and started releasing games under the “Ketchapp” name in 2012 and, as noted above, the registration of the trademark in the United States of America asserts a first use in commerce on April 12, 2012. The Respondent challenges this, pointing out that the publications included in the Complaint state that Ketchapp SARL was founded in 2014 and released its first game publicly in February / March 2014. The article in Business Insider “Two brothers from France have figured out how to take over the App Store,” dated February 26, 2016, included in Annex 6.3 to the Complaint states that Ketchapp SARL was founded in 2014. The article “Ketchapp: A case study in mobile portfolio management,” dated May 25, 2015, included in Annex 6.2 to the Complaint states that Ketchapp SARL released its first game, Excalibur, in early February 2014, following it with “a string of Flappy Bird clones” before releasing “2048” on March 19, 2014, which became Ketchapp SARL’s first viral success. In light of these matters, the Panel issued Panel Order No. 1 under paragraph 12 of the Rules seeking clarification of the Complainant’s claim that Ketchapp started in 2012. In response, the Complainant submitted a certificate of incorporation showing that Ketchapp SARL was in fact incorporated on April 12, 2012, and the media report that it was incorporated in 2014 is wrong. The fact that the Complainant’s predecessor was in existence from April 2012 does not in itself provide a basis for inferring that the Respondent must have known, or did at least know, of Ketchapp SARL’s use of the (then unregistered) KETCHAPP trademark when the Respondent became the holder of the disputed domain name in November later that year. Often, the distinctive nature of the second Level-Domain component and its identity to the Complainant’s trademark would support an inference in favour of that knowledge. The Panel is not prepared to draw that inference in circumstances where the disputed domain name was first registered in 2009, at least three years before the Complainant’s predecessor was founded. In 2009, it was not possible for anyone to have any knowledge of the Complainant’s trademark. It is of course possible that the Respondent did know about the Complainant’s then unregistered trademark when the Respondent became the holder of the disputed domain name in November 2012, as Ketchapp SARL had been in existence for about seven months by then. To support its claim that the Respondent knew about the Ketchapp trademark, the Complainant points to the assertion of first use in commerce as of April 12, 2012, in the United States registered trademark. In its supplemental filing, the Complainant states further: “The date of first use as registered within the USPTO corresponds to the date of registration of the company Ketchapp within the French trade and companies registry, on April 12, 2012, and the launching of Ketchapp’s activities in the field of videogames (Annex 1.3).” Annex 1.3 contains a print out of the registration details from the French trade and companies registry. It is of course possible that the Complainant’s predecessor did launch products or start using its trademark shortly after it was incorporated. On the other hand, many companies are incorporated and do not start trading immediately or, for that matter, at all. The only evidence about the Complainant’s predecessor’s actual use of its name and trademark is the evidence submitted with the Complaint that Ketchapp SARL launched its first game, Excalibur, in 2014 and it was not until several games later with the launch of 2048 that Ketchapp SARL achieved any significance or prominence. In these circumstances, the Panel is unable to accept the Complainant’s invitation to infer that the Respondent must have known about Ketchapp SARL and its trademark when the Respondent became the holder of the disputed domain name in November 2012. The Panel notes that a complainant seeking to assert rights in an unregistered trademark must provide substantial evidence to support such a claim. See e.g. WIPO Overview 3.0 , section 1.3 . The evidential burden may not be as substantial where a respondent has “gazumped” a complainant as a result of some prior knowledge of the complainant’s plans to adopt a trademark. See e.g. WIPO Overview 3.0 , section 3.8 . Nonetheless, the Complainant must provide a concrete basis to infer access or knowledge. The Panel is unable to infer such a basis from a mere assertion that activities were launched, particularly in the face of other, contradictory evidence submitted in the Complaint. The Complainant does claim that the Respondent would have found the existence of Ketchapp SARL’s rights if it had undertaken appropriate searches before acquiring the disputed domain name, being searches that someone acting in good faith would have undertaken. The Panel notes, however, that the circumstances in which constructive knowledge of a complainant’s rights will be inferred under the Policy are very limited. See e.g. WIPO Overview 3.0 , section 3.2.2 and 3.2.3 . Moreover, in the present case, there is a distinct lack of evidence about what a search would reveal. In the absence of an evidential basis to infer knowledge of Ketchapp SARL when the Respondent became the holder of the disputed domain name, the use of a privacy service, or a failure to respond to a cease and desist letter, does not provide a basis to infer registration in bad faith. Similarly, the fact that hundreds of other domain names, some of which may, or may not, infringe other persons’ trademark rights, are hosted on the same server is not sufficient. (The position might be different if the evidence showed that all the domain names were held by the Respondent, but that cannot be inferred merely from hosting on the same server.) The price the disputed domain name is apparently being offered for sale may be indicative of use in bad faith. As already noted, however, registration in bad faith is a separate requirement under the Policy. The offer of a domain name for sale at a price far in excess of out-of-pocket expenses may, in the right circumstances, lead to an inference that the domain name was registered in bad faith. The Panel is unable to draw such an inference, however, where the offer is being made some six years after registration in circumstances where there is an insufficient basis to infer awareness of the Complainant’s prior trademark. Accordingly, the Panel finds that the Complainant has failed to establish that the disputed domain name was registered in bad faith. The Complaint must therefore fail. C. Rights or Legitimate Interests In light of the Panel’s conclusion under the third element of the Policy, no good purpose would be served by assessing the second element of the Policy. 6. Decision For the foregoing reasons, the Complaint is denied. Warwick A. Rothnie 1 For ease of reference, the Panel will simply refer to the Second Respondent as the Respondent.
Sole Panelist
Date: December 23, 2019
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