ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Netflix Studios, LLC v. Artem Rutkovsky Case No. DIO2024-0030 1. The Parties The Complainant is Netflix Studios, LLC, United States of America (“United States”), represented by Coates IP, United States. The Respondent is Artem Rutkovsky, Russian Federation. 2. The Domain Name and Registrar The disputed domain name is registered with Porkbun LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 3, 2024. On October 4, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent (Unknown) and contact information in the Complaint. The Center sent an email communication to the Complainant on October 7, 2024 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 7, 2024. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .IO Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .IO Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IO 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 14, 2024. In accordance with the Rules, paragraph 5, the due date for Response was November 3, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 4, 2024.
page 2 The Center appointed Matthew Kennedy as the sole panelist in this matter on November 12, 2024. 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 an Internet entertainment service with over 278 million paid memberships in over 190 countries and territories. On September 17, 2021, the Complainant released a television series named “Squid Game”, which tells the story of a secret contest where players who face financial struggles are invited to compete in deadly children’s games. In its first four weeks, the “Squid Game” series attracted an audience of more than 142 million households and it became the Complainant’s most-watched series. The Complainant holds trademark registrations in multiple jurisdictions, including the following: - Singapore trademark registration number 40202124241S for SQUID GAME, registered on March 24, 2023 (application filed on October 8, 2021), specifying goods and services in classes 9, 16, 18, 21, 25, 28, and 41; and - Singapore trademark registration number 40202125719W for a figurative mark containing the words SQUID GAME, registered on September 16, 2023 (application filed on October 27, 2021), specifying goods and services in classes 9, 16, 18, 21, 25, 28, and 41. The Respondent is an individual based in the Russian Federation. The disputed domain name was registered on September 29, 2021. It resolves to a site that offers a children’s video game. The title of the site is “Squid Game.io” displayed in a logo that resembles the Complainant’s logo. A page on the site headed “Squid game – play for free online game” presents a description of the Complainant’s SQUID GAME television series, beginning as follows: “The hugely popular Netflix kdrama called Squid game became an international phenomenon”. On another page, the privacy terms explain that the site places cookies to be able to show and sell advertising, and it allows “a limited number of advertising, analytics, and social media companies to also place cookies and/or collect your data via Squid-Game.io”. The site collects and uses visitors’ data “to enable the automated auction (bidding process) of the ad inventory of our clients, and to record views and clicks on ads”. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that the disputed domain name is identical to the Complainant’s SQUID GAME mark. The website associated with the disputed domain name features a game that incorporates content, copyrighted elements and the look and feel of the Complainant’s SQUID GAME series. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not have a license to offer a video game under the Complainant’s SQUID GAME mark or featuring the Complainant’s copyrighted content. The disputed domain name was registered and is being used in bad faith. The disputed domain name resolves to a site that solely offers a video game related to the Complainant’s Squid Game series and depicts the SQUID GAME mark. This clearly evidences the Respondent’s bad faith attempt to ride on the well-known status and fame of the name SQUID GAME.
page 3 B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements with respect to each disputed domain name: (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 or is being used in bad faith. The complainant must prove that each of these three elements are present. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. In the present case, the Complainant has shown rights in respect of the SQUID GAME trademark for the purposes of the Policy. The disputed domain name wholly incorporates the SQUID GAME mark, adding only a hyphen between the words and a country and territory code Top-Level Domain (“ccTLD”) extension (“.io”). Despite the addition of the hyphen, the mark is clearly recognizable within the disputed domain name. As for the ccTLD extension, it does not serve to prevent confusing similarity between a domain name and a mark. See, for example, Amazon Technologies, Inc. v. Tuk Anthony, WIPO Case No. DIO2024-0024. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. Therefore, the Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which a respondent may demonstrate rights or legitimate interests in a disputed domain name. In the present case, the Respondent uses the disputed domain name, which wholly incorporates the Complainant’s SQUID GAME mark, in connection with a website that displays a title resembling the Complainant’s SQUID GAME logo and offering an online game based on the Complainant’s television series. The website presents a description of the Complainant’s television series and names the Complainant. The website gives the impression that the game is affiliated with, or sponsored or endorsed by, the Complainant. However, the Complainant submits that the Respondent has no license to offer a video game under the Complainant’s SQUID GAME mark or featuring the Complainant’s copyrighted content. In view of these circumstances, the Panel finds that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.
page 4 Although the Respondent’s website indicates that its online game is free, it also indicates that it places cookies to be able to show and sell advertising; that it allows advertising, analytics, and social media companies to also place cookies and/or collect users’ data via the site; and that it collects and uses visitors’ data for the purposes of advertising. This indicates that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain within the meaning of paragraph 4(c)(iii) of the Policy. Further, the Registrar has confirmed that the Respondent’s name is “Artem Rutkovsky”, which does not resemble the disputed domain name. Nothing on the record indicates that the Respondent, whether as an individual, business or other organization, has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. Based on the record, the Panel finds the second element of the Policy has been established. C. Registered or Used in Bad Faith The third element of the Policy contains two requirements that apply disjunctively. It is sufficient for a complainant to demonstrate either that a domain name was registered in bad faith or that it is being used in bad faith, but not necessarily both. The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth of these is as follows: “(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 online 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] web site or location.” In the present case, the Complainant has acquired a strong reputation in its SQUID GAME trademark through widespread streaming of its television series of the same name. The disputed domain name, which wholly incorporates the Complainant’s SQUID GAME mark, is being used in connection with a website that displays a title resembling the Complainant’s SQUID GAME logo and that offers an online game based on the Complainant’s SQUID GAME television series. The website presents a description of the Complainant’s television series and name of the Complainant. All of this gives the false impression that the online game is affiliated with, or sponsored or endorsed by, the Complainant. Although the website indicates that its online game is free, the evidence regarding the placement of cookies and collection of user data (discussed in Section 6.B above) shows that the website is operated with intent for commercial gain. Accordingly, the Panel finds that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the affiliation, sponsorship or endorsement of the online game on that website within the terms of paragraph 4(b)(iv) of the Policy. Therefore, the Panel finds that the Complainant has established the third element of the Policy.
page 5 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. /Matthew Kennedy/ Matthew Kennedy Sole Panelist Date: November 17, 2024
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