The Complainant is Scottgames, LLC, United States of America (“United States”), represented by Nissenbaum Law Group, LLC, United States.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Tran Dai, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name 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 name. On February 13, 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 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 February 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 11, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 12, 2020. The Center appointed Andrew F. Christie as the sole panelist in this matter on March 18, 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. On March 26, 2020, the Panel issued Administrative Panel Procedural Order No. 1 (the “Order”), in which the Complainant was requested to provide evidence proving the assertions in the Complaint that: (i) Mr. Cawthon is the sole member of the Complainant and has granted the Complainant a license for the copyright and trademark rights related to the Five Nights franchise; (ii) as of 2016, Mr. Cawthon had sold over 900,000 Five Nights computer games in North America via Steam; (iii) over 9,000,000 mobile application downloads of the Five Nights Games have been sold worldwide through Amazon.com, Inc. and through Apple Inc.’s App Store; (iv) to date, videos related to Five Nights at Freddy’s have YouTube views exceeding 30 billion viewers; (v) Mr. Cawthon and the Complainant have established a high degree of consumer recognition and goodwill in the Five Nights Marks, including “FNaF” and “FNaF World”; and (vi) the Respondent has specifically chosen to utilize the Five Nights Marks in the disputed domain name to compete with the Complainant by promoting unauthorized and/or pirated, free, playable versions of the Five Nights Games. The Order invited the Respondent to make a submission in reply to the evidence and information submitted by the Complainant in response to it. The Complainant submitted a response to the Order. The Respondent did not submit a reply to the Complainant’s response to the Order. 4. Factual Background Mr. Scott Cawthon is the creator, author and owner of intellectual property rights in several computer games and mobile applications, including those entitled “Five Nights at Freddy’s”, “Five Nights at Freddy’s 2”, “Five Nights at Freddy’s 3”, “Five Nights at Freddy’s 4”, “FNaF World”, “Five Nights at Freddy’s: Sister Location”, “Freddy Fazbear’s Pizzeria Simulator”, “Ultimate Custom Night”, “Five Nights at Freddy’s VR: Help Wanted”, “Five Nights at Freddy’s AR: Special Delivery”, and “Freddy in Space 2” (collectively, the “Five Nights Games”). Mr. Cawthon is the sole member of the Complainant, which is 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 Games”. As of September 15, 2016, over 900,000 computer games for personal computers in North America, and over 9,000,000 mobile application downloads worldwide, of the first five of the above-listed Five Nights Games had been sold. YouTube videos related to “Five Nights at Freddy’s” are claimed to have had more than 30 billion viewers. In addition, Mr. Cawthon and the Complainant have marketed and exploited the intellectual property rights related to the Five Nights Games under numerous license agreements. Mr. Cawthon is the owner of United States Trademark Registrations No 4,755,325 (registered on June 16, 2015) for the word trademark FIVE NIGHTS AT FREDDY’S, and No 4,855,473 (registered on November 17, 2015) for the word trademark FIVE NIGHTS AT FREDDY’S (the “FIVE NIGHTS AT FREDDY’S trademark”). The disputed domain name was registered on November 13, 2018. The Complainant has provided a screenshot, said to be of the website resolving from the disputed domain name and taken on January 2, 2020, at which a large number of online games are offered for download. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights because it incorporates the so-called “Five Nights Marks” (being the FIVE NIGHTS AT FREDDY’S trademark and the “FNaF World” game title and the “FNaF” abbreviation), and fully incorporates the “FNaF World” game title and the “FNaF” abbreviation thus causing a likelihood of confusion as to the source and/or sponsorship of the disputed domain name. The Complainant contends that the Respondent has no rights or legitimate interests with respect to the disputed domain name because: (i) neither the Complainant nor Mr. Cawthon nor their agents have granted the Respondent any license or other authorization to use the Five Nights Marks; (ii) there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services prior to the Complainant’s use of the Five Nights Marks; (iii) the Respondent’s only use of the disputed domain name in this matter is in connection with the infringement of the Complainant’s intellectual property rights, as it is designed to attract individuals with knowledge of the Five Nights Games who are looking for a website developed by Mr. Cawthon; (iv) the WhoIs database records for the disputed domain name reveal no evidence to suggest that the Respondent is commonly known by or could be commonly known by the disputed domain name, and there is no other evidence in the record to suggest that the Respondent has been commonly known by the disputed domain name or similar; and (v) it appears that the Respondent has specifically chosen to utilize the Five Nights Marks in the disputed domain name to compete with the Complainant by promoting unauthorized and/or pirated, free, playable versions of the Five Nights Games which the Complainant offers for sale. The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) the disputed domain name incorporates the “FNaF World” game title and the “FNaF” abbreviation in their entirety and neither the Complainant nor Mr. Cawthon has authorized these actions; (ii) the Respondent has used the disputed domain name to promote, inter alia, an unauthorized and/or infringing version of the Five Nights Games, and to attract Internet users to the associated websites and generate advertising revenue; (iii) the Respondent has attempted to avoid the Complainant’s efforts to enforce its intellectual property rights by employing a privacy or proxy service as the registrant, rather than a named Respondent; and (iv) the Respondent was previously found to have registered the domain name The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar When the generic Top-Level Domain (“gTLD”) suffix “.co” is ignored (which is appropriate in this case), the disputed domain name consists of the word “world”, preceded by either an acronym (if “fnaf” is pronounced as a word) or an initialism (if “fnaf” is not pronounced as a word) of the FIVE NIGHTS AT FREDDY’S trademark. In either case, the disputed domain name is neither identical nor confusingly similar to the FIVE NIGHTS AT FREDDY’S trademark. The Complainant asserts that the game title “FNaF World” and the abbreviation “FNaF” are trademarks. In response to the request in the Order to provide evidence proving this assertion, the Complainant provided screenshots of results for Google searches on the terms “fnaf world” and “fnaf”. These screenshots showed that the top-ranked organic results were, respectively, the website at “www.gamejolt.com” and the website at “www.fivenightsat-freddys.com”. The relevance and the weight of this evidence is very weak, for the following reasons. First, it is notorious that Google search results vary widely, depending on when, where and by whom the search is undertaken. (A Google search on the same terms conducted by the Panel on the date of this decision returned very different results.) Secondly, a high-ranking of a website in the organic results returned from a Google search demonstrates, at most, only that the website is highly related to the term searched; it does not establish that the term searched is a trademark. Thirdly, no evidence or even explanation was provided as to what connection, if any, exists between the first-ranked websites returned by Google and the Complainant. This evidence alone does not establish to the Panel’s satisfaction that the game title “FNaF World” and the abbreviation “FNaF” are trademarks. The Complainant sought to rely on the decision in two other cases under the Policy concerning the Five Nights Marks: Scottgames, LLC v. Ong Dai Vu Hao, Tran Tich Quan, Delvin Dragon and Tran Dai,WIPO Case No. D2016-1367; and Scottgames, LLC v. Domain Administrator, PrivacyGuardian.org / Kris Miranda, DTFAFF / Dang Ngo / Thuan Tran / Wiley Prince, DTD / Duong Ngo Huynh, DTD SOFTWARE CO., LTD./ Fidel Vance, Spiritual, WIPO Case No. D2016-2372. Both cases involved many domain names, only some of which contained the string “fnaf”. InWIPO Case No. D2016-1367 the Panel concluded, without reasoning, that “the Complainant has clearly evidenced that it has trademark rights to Five Nights Marks”. While it is not possible to know for certain, it appears that the Complainant in that case sought to establish trademark rights in the strings “FNaF World” and “FNaF” in the same way it did initially in this case – i.e., by mere assertion. The decision inWIPO Case No. D2016-1367 makes no reference to any evidence that was provided in support of the assertion. InWIPO Case No. D2016-2372, the Panel simply noted the conclusion reached inWIPO Case No. D2016-1367, and then proceeded on the (apparent) assumption that the strings “FNaF World” and “FNaF” are trademarks. Since no express finding to that effect was made by the Panel, it is not possible to know on what basis, exactly, the Panel was willing to make that assumption. Due to the absence of reasoning in the decisions in these two cases, the Panel is not satisfied, on the basis of the findings in these cases alone, that the game title “FNaF World” and the abbreviation “FNaF” are trademarks. The evidence provided by the Complainant included a screenshot of the website to which the disputed domain name resolves. That website contains, among other things, the heading “FNAF World”, under which appears the text “Five nights at Freddy’s World is an epic RPG of the night in the Freddy movie […]”. It is clear that the string “FNAF World” is used by the Respondent to refer to “Five Nights at Freddy’s World”. While the matter is not without doubt, in the absence of any argument by the Respondent to the contrary the Panel is willing to conclude, on the balance of probabilities, that the game title “FNaF World” is an unregistered trademark (i.e., a distinctive identifier which consumers associate with the Complainant’s goods and/or services) in which the Complainant has rights. The Panel makes no finding on the separate issue of whether the string “FNaF” is an unregistered trademark. The disputed domain name is identical to the Complainant’s “FNaF World” unregistered trademark. Accordingly, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its “FNaF World” unregistered trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainant shows that the disputed domain name has been used to resolve to a website that competes with the Complainant by promoting unauthorized and/or pirated playable versions of the Five Nights Games for free, being games which the Complainant offers for sale. According to the present record, therefore, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith The disputed domain name was registered some years after the Complainant first used its “FNaF World” unregistered trademark. The evidence on the record provided by the Complainant with respect to the use of its “FNaF World” unregistered trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time of registration of the disputed domain name, the Respondent knew of the Complainant’s “FNaF World” unregistered trademark and knew that it had no rights or legitimate interests in the disputed domain name. Furthermore, the evidence on the record provided by the Complainant with respect to the Respondent’s use of the disputed domain name indicates that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainant. Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith. 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 Andrew F. Christie
Sole Panelist
Date: April 8, 2020
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