The Complainant is Mediatonic Limited, United Kingdom, represented by Harbottle & Lewis LLP, United Kingdom.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Vaibhav Bhandari, India. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2020. On October 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 8, 2020, 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 October 12, 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 October 16, 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 October 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 5, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 6, 2020. The Center appointed Alistair Payne as the sole panelist in this matter on November 12, 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 video game developer based in the United Kingdom. One of the Complainant’s video games, which has received extensive publicity and critical acclaim following its launch, is “FALL GUYS: ULTIMATE KNOCKOUT” (the “Video Game”). The Video Game was launched on August 4, 2020 can be played on PC and PlayStation 4, is available worldwide and is published by Devolver Digital, Inc. The Complainant sold over 7 million copies of the Video Game by August 25, 2020 and it was a global top selling game for a period of 6 weeks from August 3, 2020 until September 13, 2020. The Complainant owns various trade mark registrations for FALL GUYS including United Kingdom trade mark registrations 3324430 filed on July 13, 2018 and registered on October 12, 2018 and 3496528 filed on June 3, 2020 and registered on September 4, 2020. Since February 17, 2020, the Complainant has maintained a website accessible at “www.fallguys.com” which provides a variety of material and information about the Video Game, including news, competitions and downloadable content. The domain names The disputed domain name was registered on August 13, 2020, some 9 days after the Video Game was launched. It directs Internet users to a website that appears to be the “Fall Guys” website. 5. Parties’ Contentions A. Complainant The Complainant submits that it owns registered trade mark rights for the FALL GUYS trade mark as set out above. It says that the disputed domain name reproduces the Complainant’s trade mark FALL GUYS in its entirety, with the addition of the descriptive word “mobile”. It asserts that the distinctive element of the disputed domain name is the name “fall guys”. The addition of the common noun “mobile” does not distinguish the disputed domain name from the Complainant’s trade mark FALL GUYS, which is clearly identifiable within the disputed domain name. Furthermore, says the Complainant, the inclusion of the word “mobile” (which is a reference to mobile platforms on which games such as the Video Game are sometimes released) exacerbates the likelihood of consumer confusion. It notes that the Complainant has not yet launched a mobile version of its Video Game, but it may do so in the future, as is common practice in the video game industry. Therefore, says the Complainant, the disputed domain name is identical or confusingly similar to one or more of the trade marks in which the Complainant has rights within the meaning of 4(a)(i) of the UDRP. The Complainant submits that it had already acquired significant rights in the name “Fall Guys” prior to the registration of the disputed domain name. It says that there is no relationship between the Respondent and the Complainant, and the Complainant has not authorised the use of the of the FALL GUYS trade mark, nor any of its rights, by the Respondent. The Complainant asserts that the content on the website to which the disputed domain name resolves appears to be a scam. The website falsely purports to offer visitors the opportunity to download a mobile version of the Video Game (i.e. one that can be played on a mobile phone or tablet). Although, says the Complainant, the layout of the website, which is formatted to fit the screen of a mobile device, supports this, no mobile version of the Video Game has been released. The Complainant notes that the website shows use of the Complainant’s trade marks as well as other visual assets, such as characters from the Video Game, in which the Complainant owns the copyright. It says that the use of the trade marks and the Complainant’s copyright works in this way is without the Complainant’s authorisation and constitutes an infringement of its rights. The Complainant notes that the website at the disputed domain name takes Internet users through a user verification process that culminates in them being taken to a page containing a series of unrelated links to promotional offers from third party businesses such as Lidl, McDonalds, Amazon, Pepsi and CocaCola. The page also states “Complete 4 of the offers to unlock the content” which is falsely suggesting to Internet users that, by clicking these links, visitors will be able to start the download of the Video Game. The Complainant notes that it has no relationship with any of these third party businesses and does not engage in this form of affiliate marketing. In summary, the Complainant asserts that the website to which the dispute domain name resolves appears to be an elaborate mechanism to trick users into clicking on pay-per-click (“PPC”) ads and/or signing up to promotional offers that presumably generates revenue for the Respondent. It says that the Respondent is leveraging the reputation and attractive power of the FALL GUYS trade mark and the Complainant’s other intellectual property rights to lure users into the scam. This use of the disputed domain name, says the Complainant, is neither legitimate nor in good faith The Complainant notes that the Respondent is not operating a genuine business, is not commonly known by the disputed domain name and there is no bona fide offering of goods and/or services from the website accessible from the disputed domain name. It notes that the Complainant has attempted to hide its identity by using a privacy service and submits that the use of a WhoIs privacy service in these circumstances is further evidence of bad faith and inconsistent with the Respondent having rights or legitimate interests in the disputed domain name. In terms of registration in bad faith, the Complainant notes that the disputed domain name was registered 9 days after the Video Game’s launch. It says that the website to which the disputed domain name points uses the Complainant’s trade marks and visual assets without authorization and that this demonstrates that the Respondent knew of the Complainant’s Video Game and its trade marks when registering the disputed domain name. The Complainant submits that the Respondent’s intention was to leverage the reputation and attractive power of the FALL GUYS trade mark and the Complainant’s other intellectual property rights to lead consumers to believe that the disputed domain name is in some way associated with or connected to the Complainant and its Video Game. As far as use in bad faith is concerned, the Complainant asserts that the Respondent has intentionally attempted to attract, for commercial gain, users to its website by creating a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the website to which the disputed domain name points, within the meaning of paragraph 4(b)(iv) of the Policy and notes that it appears highly probable that the third party website to which the Respondent’s website provides links generates PPC or affiliate revenue for the Respondent. The Complainant also suggests that the disputed domain name was registered primarily for the purpose of disrupting the Complainant’s business. It says that the Respondent’s motivation for doing this is unclear, but the manner in which the disputed domain name has been used strongly suggests that it was registered with the primary purpose of misleading Internet users, which would clearly be disruptive to the Complainant’s business. As a result, the Complainant submits that the disputed domain name has been both registered and used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has demonstrated that it owns trade mark registrations for FALL GUYS including United Kingdom trade mark registration number 3324430 filed on July 13, 2018 and registered on October 12, 2018 and registration number 3496528 filed on June 3, 2020 and registered on September 4, 2020. The disputed domain name wholly incorporates the Complainant’s FALL GUYS mark and is therefore confusingly similar to it. The fact that the disputed domain name also incorporates the dictionary word “mobile” does not prevent a finding of confusing similarity. See section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). As a result, the Panel finds that the Complaint succeeds under the first element of the Policy. B. Rights or Legitimate Interests The Complainant submits that it owns rights in the FALL GUYS marks and has not authorised or permitted the Respondent to use them. It says that the Respondent is not operating a genuine business, is not commonly known by the disputed domain name and that there is no bona fide offering of goods and/or services from the website accessible from the disputed domain name. The Complainant further asserts that the website to which the dispute domain name resolves appears to be an elaborate mechanism to trick users into clicking on PPC ads and/or signing up to promotional offers that appear to generate revenue for the Respondent. It says that the Respondent is leveraging the reputation and attractive power of the FALL GUYS trade mark and the Complainant’s other intellectual property rights to lure users into the scam. This use of the disputed domain name, says the Complainant, is neither legitimate nor in good faith. The Panel finds that the Respondent has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. This case has not been rebutted by the Respondent and for this reason and for the reasons described below under the third element, the Panel finds that the Complaint also succeeds under this element of the Policy. C. Registered and Used in Bad Faith The disputed domain name was registered on August 13, 2020, some 9 days after the Video Game was launched and it diverts Internet users to a website that appears to be the “Fall Guys” website, but is in fact, according to the Complainant, a website operated by the Respondent that uses the Complainant’s trade marks and characters from the Fall Guys game without authorisation. The first of the Complainant’s trade mark registrations for FALL GUYS was registered in mid-2018 and this together with the fact that certain of the Complainant’s trade marks and visual assets are replicated at the website to which the disputed domain name resolves suggests that the Respondent was well aware of the Video Game and the Complainant’s business when it registered the disputed domain name. The website to which the dispute domain name resolves appears to have been created by the Respondent in an attempt to emulate certain aspects of the Complainant’s website for the Fall Guys game with a view to tricking Internet users into thinking that they can download a mobile version of the Fall Guys game from the website even though a mobile version of the game does not yet exist. In the registration process, the Respondent’s website leads and tries to induce Internet users to click on PPC ads from well-known third party businesses and/or sign up to promotional offers. It appears most likely that these generate revenue for the Respondent. In terms of the Policy, the Respondent has therefore intentionally attempted to attract Internet users to its website in order to induce them into believing that the website is owned by the Complainant or is somehow affiliated with or endorsed by it. The Respondent’s ultimate aim seems to be to drive traffic to the website in order to inveigle Internet users into clicking on third party advertisements or promotions for the Respondent’s commercial benefit. This conduct fulfills the requirements of paragraph 4(b)(iv) of the Policy which is evidence of registration and use of the disputed domain name in bad faith. The Respondent’s use of a privacy service to mask its true identity is a further indicator of the Respondent’s bad faith. Accordingly, the Panel finds that the disputed domain name was both registered and used in bad faith and the Complaint succeeds under this 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 Alistair Payne
Sole Panelist
Date: November 26, 2020
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