WIPO Domain Name Decision D2020-0338 for fivenights-at-freddys.com, fivenightsat-freddys.com, fivescarynights.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Scottgames, LLC v. Whois Agent, Domain Protection Services, Inc. / Abe Yamaguchi / Delvin Dragon / Shinjiru International Inc. Case No. D2020-0338 1. The Parties

The Complainant is Scottgames, LLC, United States of America (“United States”), represented by Nissenbaum Law Group, LLC, United States.

The Respondents are Whois Agent, Domain Protection Services, Inc., United States / Abe Yamaguchi, Viet Nam / Delvin Dragon, Viet Nam / Shinjiru International Inc., Malaysia (collectively referred to as the “Respondent”). 2. The Domain Names and Registrar

The disputed domain names , and are registered with Name.com, Inc. (the “Registrar”). 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2020. On February 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 14, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 14, 2020, 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 February 19, 2020.

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 March 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 23, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 24, 2020.

The Center appointed Jane Seager as the sole panelist in this matter on April 7, 2020. 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 is a limited liability company incorporated in Texas, United States. The Complainant is owned and operated by Mr. Scott Cawthon. Mr. Cawthon is the creator, author, and intellectual property owner of a number of computer games and mobile applications titled “Five Nights at Freddy’s”, “FnAF World”, “Freddy Fazbear’s Pizzera Similator”, “Ultimate Custom Night”, “Five Nights at Freddy’s VR: Help Wanted”, and others. Five Nights at Freddy’s is a point-and-click survival horror video game set in a fictional pizza restaurant.

For use in connection with Mr. Cawthon’s video game software products, Mr. Cawthon has registered, inter alia, the following trademarks:

- United States Trademark Registration No. 4755325, FIVE NIGHTS AT FREDDY’S, registered on June 16, 2015; and

- United States Trademark Registration No. 4855473, FIVE NIGHTS AT FREDDY’S, registered on November 17, 2015.

The Complainant acts as the contracting entity through which Mr. Cawthon’s intellectual property is licensed to third parties. Mr. Cawthon has granted the Complainant a license for the copyright and trademark rights related to the Five Nights franchise, including, without limitation, the “FIVE NIGHTS” group of trademarks. With Mr. Cawthon’s approval, the Complainant is entitled to take action to prevent misuse of Mr. Cawthon’s intellectual property rights.

The disputed domain name was registered on October 30, 2018. The disputed domain name redirects to a web page at “www.happywheels-play.com”, displaying a free-to-play version of the Complainant’s Five Nights at Freddy’s video game, together with a number of derivative “Five Nights” games, as well as a selection of third-party games.

The disputed domain name was registered on March 26, 2016. The disputed domain name redirects to a web page at “www.happywheels2.io”, which also displays a free-to-play version of the Complainant’s Five Nights at Freddy’s video game, as well as other derivative “Five Nights” games, together with sponsored links to unrelated third-party games. The websites to which the disputed domain names and redirect are similar in terms of their layouts, contents, and color schemes.

The disputed domain name was registered on August 29, 2016. The disputed domain name resolves to a website titled “Five Nights at Freddy’s” offering a variety of free-to-play versions of the Complainant’s Five Nights video games. The website also includes a number of links to unrelated third-party games. 5. Parties’ Contentions A. Complainant

The Complainant asserts rights in the FIVE NIGHTS AT FREDDY’S trademark. The Complainant submits that the disputed domain names are confusingly similar to its trademark. The Complainant argues that the addition of hyphens in the disputed domain names and does not eliminate confusion with the Complainant’s trademark, and that such conduct amounts to typosquatting. The Complainant asserts that the addition of the word “scary” to the disputed domain name adds confusion, as the Complainant’s “Five Nights” games are marketed as horror games that are intended to be scary. The Complainant also notes that the header of the website at “www.fivescarynights.com” reads “Five Nights at Freddy’s”.

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant notes that its trademark registrations predate the registration of the disputed domain names, and states that neither the Complainant nor Mr. Cawthon has granted the Respondent any licence or other authorization to use its trademarks. The Complainant submits that the Respondent is not making any bona fide use of the disputed domain names. Rather, the Respondent’s sole use of the disputed domain names has been in connection with the infringement of the Complainant’s intellectual property rights. The Complainant further asserts that there is no evidence to suggest that the Respondent is commonly known by the disputed domain names, nor is the Respondent making any legitimate noncommercial or fair use of the disputed domain names. In this regard, the Complainant asserts that the Respondent has made use of the Complainant’s trademarks in the disputed domain names to promote unauthorized and/or infringing free, playable versions of the Complainant’s games, which the Complainant offers for sale. The Complainant further claims that in doing so, the Respondent profits by generating advertising revenue from the use of the Complainant’s trademarks in the disputed domain names.

The Complainant submits that the disputed domain names were registered and are being used in bad faith. The Complainant states that neither it nor Mr. Cawthon has authorized the registration of the disputed domain names, which incorporate the Complainant’s trademark. The Complainant asserts that the disputed domain names are being used to promote unauthorized and/or infringing versions of the Complainant’s games. The Complainant argues that substandard, derivative versions of the Complainant’s games are evidence of the Respondent’s bad faith. The Complainant further argues that the Respondent’s use of a privacy service to conceal its identity in an attempt to avoid the Complainant’s efforts to enforce its intellectual property rights is further evidence of the Respondent’s bad faith. In particular, the Complainant observes that the Respondent, Shinjiru International Inc., is an “Offshore Web Hosting Provider” which has “been providing offshore and anonymous web hosting services since year 2000”, and as a result, the Complainant is prevented from knowing the true identity of the Respondent. The Complainant also notes that the Respondent, Delvin Dragon, was previously found to have registered domain names comprising its trademarks, and submits that the Respondent has engaged in a bad faith pattern of domain name registration. The Complainant submits that the Respondent is intentionally using the disputed domain names to attract Internet users to the associated websites in order to promote unauthorized and/or infringing content while generating advertising revenue, demonstrating the Respondent’s bad faith. B. Respondent

The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Procedural Matter: Consolidation of the Respondents

The Panel notes that the Complaint was filed against three nominally-distinct underlying registrants. As stated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2, “[w]here a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.”

The Complainant submits that it is justified in filing a single consolidated Complaint on the basis that the disputed domain names are subject to common control. In this regard, the Complainant notes that all three of the disputed domain names were registered with the same Registrar making use of the same privacy service, and that all three disputed domain names are hosted on similar name servers. The Complainant also points out that the disputed domain names and share a common naming pattern, only differing from one another in terms of a single hyphen. The Complainant asserts that the websites at the disputed domain names share substantially the same structure, design and purpose of generating advertising revenue by attracting Internet users to websites that provide unauthorized and/or infringing versions of the Complainant’s video games.

Noting that the disputed domain names and are both subject to highly similar websites at similar “happywheels”-formative domain names, the Panel considers it to be clear that these two disputed domain names are subject to common control, and that consolidation of these domain names would therefore be appropriate.

The Panel observes that the naming pattern, pointing, and the look and feel of the website to which the disputed domain name resolves differ from those of the other disputed domain names. Nevertheless, when taken together, the registration of all three disputed domain names with the same Registrar behind the same privacy service, and the use of all three disputed domain names to offer unauthorized free-to-play versions of the Complainant’s games, support the inference that the individuals behind the disputed domain names are acting in concert. None of the underlying registrants has come forward with any evidence to suggest otherwise.

The Panel considers that it would be fair and equitable to all Parties to allow the Complaint to proceed on a consolidated basis. 6.2. Substantive Findings

In order to prevail, a complainant is required to prove, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the Policy, namely:

(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 the disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the FIVE NIGHTS AT FREDDY’S trademark, by virtue of its registration and use, the details of which are provided in the factual-background section above. In light of the extensive use of the words “Five Nights” in the Complainant’s suite of games, the Panel further finds that the words “Five Nights” have become a distinctive identifier which consumers associate with the Complainant’s video games, so as to confer common law rights in the same onto the Complainant; see WIPO Overview 3.0, section 1.3.

The disputed domain names and comprise the Complainant’s FIVE NIGHTS AT FREDDY’S trademark in its entirety. In the case of the disputed domain name , the disputed domain name differs from the Complainant’s trademark only in the omission of the space between the words “five” and “nights”, the inclusion of hyphens between the words “nights”, “at” and “Freddy’s” and the omission of the apostrophe from the word “Freddy’s”, being incapable of representation per se in a domain name. Similarly, the disputed domain name omits the spaces from the words making up the Complainant’s trademark, adds a hyphen between the words “at” and “Freddy’s”, and omits the apostrophe from “Freddy’s”. Such changes do not prevent a finding of confusing similarity between the above two disputed domain names and the Complainant’s trademark.

The disputed domain name includes the leading elements of the Complainant’s FIVE NIGHTS AT FREDDY’S trademark, i.e., “five nights”, interspersed by the descriptive term “scary”. As noted above, the Panel considers that the Complainant has also established common law trademark rights in FIVE NIGHTS resulting from its extensive use in connection with its suite of “Five Nights” games. The addition of the term “scary” in the disputed domain name does not prevent a finding of confusing similarity with the Complainant’s FIVE NIGHTS mark in which it has established rights; see WIPO Overview 3.0, section 1.8.

The Panel finds the disputed domain names to be confusingly similar to trademarks in which the Complainant has established rights. The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests

The Panel finds that the Respondent’s use of the disputed domain names as described above does not amount to a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. The Panel notes that the Respondent is not a licensee of the Complainant, nor has the Respondent been authorized to make use of the Complainant’s trademarks in a domain name or otherwise. The Complainant has provided evidence of the Respondent making available unauthorized or derivative versions of the Complainant’s video games for free on the websites associated with the disputed domain names. Such free-to-play versions of the Complainant’s games misappropriate the Complainant’s intellectual property rights, while creating the impression that the games originate from the Complainant. Prior UDRP panels have categorically held that the use of a domain name for illegitimate purposes, such as impersonation or passing off, can never confer rights or legitimate interests on a respondent; see WIPO Overview 3.0, section 2.13. Moreover, the websites to which the disputed domain names resolve or redirect make use of the Complainant’s trademark alongside third-party games, creating the misleading impression that the games advertised therein are in some way connected to the Complainant, when they are not.

There is no evidence that the Respondent is commonly known by the disputed domain names in accordance with paragraph 4(c)(ii) of the Policy. The names of the underlying registrants, “Delvin Dragon” and “Abe Yamaguchi”, bear no resemblance to the disputed domain names whatsoever, while “Shinjiru International Inc.” appears to be yet another privacy or proxy service, therefore the identity of the underlying registrant of the disputed domain name is unclear. There is no evidence of the Respondent having acquired trademark rights for “five nights at freddys”, “five scary nights”, or any variation thereof.

The Panel does not consider the Respondent’s use of the disputed domain names to amount to a legitimate noncommercial or fair use of the disputed domain names as contemplated by paragraph 4(c)(iii) of the Policy. The Panel finds that the Respondent’s use of the disputed domain names to host websites displaying third-party games as well as sponsored links to third-party games, while also making available unauthorized and/or derivative versions of the Complainant’s games, does not support a finding that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.

The Respondent has not produced any evidence to rebut the Complainant’s assertions under this element of the Policy.

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith

According to the Complainant, its suite of “Five Nights” games have been marketed and sold around the world, with over 900,000 sales and downloads to personal computers in North America, and over 9 million downloads of its applications to mobile devices. The registration of the Complainant’s trademarks predates the registration of all three disputed domain names.

It is clear, from the use to which the disputed domain names have been put, as described above, that the Respondent registered the disputed domain names with full knowledge of the Complainant’s trademarks. The evidence on record suggests that the Respondent registered the disputed domain names comprising the Complainant’s trademark, without authorization from the Complainant, with a view to providing unauthorized and/or derivative versions of the Complainant’s video games, as well as unrelated third-party games on the websites associated with the disputed domain names.

The Panel further notes that the Respondent “Delvin Dragon” was named as a respondent in a previous UDRP case filed by the Complainant; see Scottgames, LLC v. Ong Dai Vu Hao, Tran Tich Quan, Devlin Dragon and Tran Dai,WIPO Case No. D2016-1367, involving three domain names registered in the name of “Delvin Dragon” all found to have targeted the Complainant’s trademarks, supporting a finding that the Respondent has engaged in a pattern of trademark-abusive domain name registration targeting the Complainant.

The Panel finds that the disputed domain names were registered in bad faith.

The Respondent has used the disputed domain names to promote free-to-play unauthorized and/or derivative versions of the Complainant’s video games, alongside unrelated third-party games. Prior UDRP panels have found that given that the use of a domain name for per se illegitimate activity can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith; see WIPO Overview 3.0, section 3.1.4. Furthermore, the presence of links to unrelated third-party games on the websites associated with the disputed domain names creates a misleading impression that such games are provided by or otherwise endorsed by the Complainant.

As described above, the Panel finds that by registering the disputed domain names, that are confusingly similar to the Complainant’s trademarks, and by displaying unauthorized and/or derivative versions of the Complainant’s video games on the website to which the disputed domain names redirect/resolve, together with unrelated third-party games, the Respondent has attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the goods and services advertised therein, in bad faith pursuant to paragraph 4(b)(iv) of the Policy. Moreover, such use disrupts the Complainant’s business as it diverts otherwise paying customers away from authentic versions of the Complainant’s games.

Finally, the Panel finds that the Respondent’s use of a privacy service to mask its identity, and in particular the use of Shinjiru International Inc. as an additional privacy or proxy service as the underlying registrant of the disputed domain name , further obfuscating its identity, supports a further inference of bad faith; see WIPO Overview 3.0, section 4.4.6.

The Panel finds that the disputed domain names were registered and are being used in bad faith. The Complainant has satisfied the requirements of 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 names , and be transferred to the Complainant.

Jane Seager
Sole Panelist
Date: April 20, 2020

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