WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
King.com Limited and Midasplayer.com Ltd. v. Whoisguard, Inc. / Raymond Tan
Case No. D2013-1986
1. The Parties
Complainants are King.com Limited (“King”) of St. Julians, Malta and Midasplayer.com Ltd. (“Midas”) of London, United Kingdom of Great Britain and Northern Ireland, represented by Origin Ltd., United Kingdom of Great Britain and Northern Ireland.
Respondent is Whoisguard, Inc. of Panama / Raymond Tan of Singapore.
2. The Domain Names and Registrar
The disputed domain names are <crush-the-candy.com>, <farmheroessecrets.com> and <petrescuesecrets.com> which are registered with eNom (“Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2013. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 22, 2013, 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.
On November 25 and 26, 2013, Complainants sent by email to the Center a request for the suspension of the proceeding. On November 26, 2013, the Center sent an email to the parties communicating a 30-day period suspension. On December 6, 2013, Complainants sent by email to the Center a request for reinstatement of the proceeding and withdrawal of a domain name originally included in the Complaint, which the Center confirmed on that same day in an email communication sent to the parties.
The Center sent an email communication to Complainants on December 12, 2013, providing the registrant and contact information disclosed by the Registrar and invited Complainants to submit an amendment to the Complaint. Complainants filed an amendment to the Complaint on December 18, 2013. The Center verified that the Complaint, as amended, 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 8, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was January 28, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 29, 2014.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on February 6, 2014. This Panel finds that it was properly constituted. This Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
4. Factual Background
Complainant King has rights, inter alia, over (i) the CANDY CRUSH SAGA trademark for which it holds trademark registration No. 010718542 with the European Office of Harmonization in the Internal Market, classes 9, 25, 41, registration date August 9, 2012, and trademark registration No. 1143295 with the World Intellectual Property Organization, classes 9, 25, 41, registration date August 28, 2012; (ii) the CANDY CRUSH SAGA and design trademark for which it holds trademark registration No. 011560448 with the European Office of Harmonization in the Internal Market, classes 3, 9, 16, 25, 28, 29, 30, 32, 35, 41, registration date July 5, 2013; (iii) the CANDY CRUSH and design trademark for which it holds trademark registration No. 011560604 with the European Office of Harmonization in the Internal Market, classes 3, 9, 16, 25, 28, 29, 30, 32, 35, 41, registration date July 5, 2013; (iv) the PET RESCUE SAGA trademark for which it holds trademark registration No. 011257755 with the European Office of Harmonization in the Internal Market, classes 9, 25, 41, registration date October 2, 2013; (v) the FARM HEROES trademark for which it holds trademark registration No. 011648581 with the European Office of Harmonization in the Internal Market, classes 9, 25, 28, 41, registration date July 24, 2013, filing date March 12, 2013; and (vi) the FARM HEROES SAGA trademark for which it holds trademark registration No. 011648763 with the European Office of Harmonization in the Internal Market, classes 9, 25, 28, 41, registration date October 10, 2013, filing date March 12, 2013.
Complainant Midas has rights, inter alia, over (i) the CANDY CRUSH trademark for which it holds trademark registration No. 1177239 with the World Intellectual Property Organization, classes 9, 25, 41, registration date February 8, 2013; and (ii) the PET RESCUE trademark for which it holds trademark registration No. 1174371 with the World Intellectual Property Organization, classes 9, 25, 41, registration date April 25, 2013.
The disputed domain names were created: <crush-the-candy.com> on October 18, 2013, <farmheroessecrets.com> on May 21, 2013 and <petrescuesecrets.com> on May 21, 2013.
5. Parties’ Contentions
A. Complainants
Complainants’ assertions may be summarized as follows.
Complainant King is a worldwide leader in casual games with more than 30 billion games played per month globally by 225 million unique users. King develops and markets online social and mobile games, including the Candy Crush Saga, Pet Rescue Saga and Farm Heroes Saga.
The game Candy Crush Saga is an expanded version of King’s game Candy Crush which was released by Midas in March 2011. King released (i) Candy Crush Saga in March 2012 on the Facebook platform and in November 2012 on Apple’s iOS platform for iPhone and iPad and around the same time on Google Play for Android phones; (ii) Pet Rescue Saga in October 2012 on the Facebook platform and in April 2013 on Apple’s iOS platform for iPhone and iPad and around the same time on Google Play for Android phones; (iii) Farm Heroes Saga in April 2013 on the Facebook platform.
King’s Candy Crush Saga game has been positioned as the most popular game on Facebook and iOS and is available on several online platforms in numerous countries worldwide. The game has been installed over half a billion times across Facebook and mobile devices and has had over 150 billion individual games played to date. The game is also discussed in mainstream worldwide publications such as The New York Times and The Economist. The games Candy Crush Saga, Pet Rescue Saga and Farm Heroes Saga currently hold three of the top four Facebook application spots with the most monthly active users.
King is the registered proprietor of a number of trademark registrations and applications worldwide consisting of or containing “Candy Crush”, “Candy Crush Saga”, “Pet Rescue”, “Pet Rescue Saga”, “Farm Heroes” or “Farm Heroes Saga” as a word mark or as text in a figure mark.
King has extensively used and promoted such trademarks worldwide in respect of, inter alia, social and casual games and other online and offline use. Because of King’s extensive marketing and promotional activities, nearly unprecedented number of players of its games, worldwide media attention, and Complainants’ strong enforcement and registration program, its trademarks were extensively and prominently used prior to the registration dates of the disputed domain names, and were as of those dates (and continue to be) highly distinctive and famous trademarks that symbolise substantial goodwill.
The disputed domain names are identical or at least confusingly similar to several registered and unregistered trademarks in which Complainants have rights.
The disputed domain name <crush-the-candy.com> incorporates the words “Candy” and “Crush”, and is therefore identical or confusingly similar to several registered and unregistered trademarks in which Complainants have rights. The disputed domain name <crush-the-candy.com> includes Complainants’ registered trademark CANDY CRUSH with the addition of the generic word “the”. Neither “Candy Crush” nor “Crush the Candy” are phrases that are generally used in the English language. Merely changing the order of the words does not stop the general Internet user from confusion as to the origin of the disputed domain name. Both phrases will to the average user be specifically associated with Complainants’ games.
The disputed domain names <farmheroessecrets.com> and <petrescuesecrets.com> are almost exclusively made up of Complainants’ registered trademarks with only the addition of a generic descriptive word “Secrets”. Given the reputation and wide recognition of King’s games, the average user will no doubt associate domains that incorporate the full names of King’s games as being associated with Complainants.
Respondents have no rights or legitimate interests in respect of the domain names.
For the domain name <crush-the-candy.com> the user is presented with a website that is primarily set up for commercial gain that takes unfair advantage of Complainants’ trademarks and reputation. The site features several of Complainants’ registered trademarks and also several copyrighted elements. On the website Respondent offers a guide with secrets for King’s game Candy Crush Saga that can be downloaded for USD 27. The guide is a mere overview of the game rules for King’s game. The guide is not authorized by King or in any way endorsed by Complainants, although a user of such site is highly likely to get that impression.
Complainants have already pursued and won a UDRP proceeding concerning the similar domain name <candycrushsecrets.com> (King.com Limited and Midasplayer.com Ltd. v. Peng Chan / WhoisGuard Protected, WIPO Case No. D2013-1405). That domain name resolved at a website offering a similar guide.
For <farmheroessecrets.com> and <petrescuesecrets.com> the user is presented with websites whose main purpose is to attract users and drive traffic to <crush-the-candy.com>. These websites are primarily set up for commercial gain that take unfair advantage of Complainants’ trademarks and reputation. The websites feature several of Complainants’ registered trademarks and also several copyrighted elements. The purpose of the websites is to attract users to <crush-the-candy.com> which is where the user is taken when clicking on the “Crush The Candy” banner to the right hand side of the landing page.
Such websites further contain advertising populated by a third party advertising network, Google’s AdSense. Respondent is gaining financial gain also by attracting users to the websites themselves and the websites are clearly for commercial purposes.
The websites at the disputed domain names are not used for bona fide offerings of goods and services and to Complainants’ knowledge there are no demonstrable preparations for such use. The websites are used for commercial gain from Complainants’ trademarks and business success.
To the best of Complainants’ knowledge, Respondent is not known by a name consisting in whole or in part of the wording “Crush the Candy”, “Farm Heroes Secrets”, “Pet Rescue Secrets” or its substantial equivalent. Respondent is not an agent or licensee of Complainants.
Respondent is clearly not making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain, but is acting misleadingly to divert consumers. The websites at the disputed domain names have a clear objective commercial gain.
The use of copyrighted material in connection with a website that attempts to cause confusion with Complainants’ trademarks and otherwise reflects obvious disregard for Complainants’ intellectual property rights cannot establish a right or legitimate interest in the disputed domain names.
The disputed domain names were registered and are used in bad faith.
The disputed domain names were registered several years after the launch of Candy Crush and well over a year after the release of Candy Crush Saga, Pet Rescue Saga and at least months after Farm Heroes Saga was launched. Candy Crush Saga had experienced a tremendous commercial success in 2012 and was in January 2013 the No. 1 game of Facebook. The game had also more than 10M downloads on Apple’s iOS in December alone.
Respondent clearly noticed the success of King’s games before registering the disputed domain names. In fact, Respondent registered the disputed domain names because of the games’ success. Innocent use is not plausible as the contents of the websites associated to the disputed domain names clearly indicate that Respondent was (and is) aware of and registered them with knowledge of Complainants’ trademarks.
The websites associated to the disputed domain names use Complainants’ CANDY CRUSH SAGA, PET RESCUE SAGA and FARM HEROES SAGA families of trademarks and copyrighted artwork in such a manner as to appear to a visitor to be an official site for Complainants or a site being endorsed or affiliated with Complainants. The websites generate income for Respondent through the commercial offering or promotion of a guide that visitors can pay to download for an advertised fee. Thus, Respondent uses the disputed domain names to intentionally attempt to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with Complainants’ trademarks as to the source, sponsorship, affiliation, or endorsement of the websites. This, in itself, is an independent basis for finding the requisite bad faith.
Respondent does not have permission to use Complainant’s copyrighted works or registered trademarks, and has not tried to seek permission from Complainants to incorporate Complainants’ copyrighted works or trademarks into the websites. Such unauthorized use of Complainants’ intellectual property on the websites of the disputed domain names constitute further evidence of Respondent’s bad faith.
The websites that resolve from the disputed domain names all have a disclaimer at the bottom of the page in small ‘greyed out’ text that for <crush-the-candy.com> reads “This site and the products and services offered on this site are not related to, associated with, endorsed or sponsored by King.com or Facebook, and they have not been reviewed, tested or certified”. The other disputed domain names have similarly worded disclaimers.
Common for all of the disclaimers is that they are in small grey or light type (at least 3 points smaller than the next smallest font on the site – most fonts are double or triple the size) and are unlikely to be noticed or remarked upon, even if the visitor scrolls all the way to the bottom of the page. By the time a visitor to the website reaches and possibly reads the disclaimer, the objective of attracting visitors to the site for commercial and financial gain through use of Complainants’ trademarks in the disputed domain names will have been achieved. The visitor will also have had several opportunities to purchase the guide by clicking on “BUY NOW” buttons while scrolling to the bottom of the page.
Complainants request that the disputed domain names be transferred to Complainant King.
B. Respondent
Respondent did not reply to Complainants’ contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a 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”.
The Complaint filed with the Center on November 21, 2013, named Whoisguard, Inc. as Respondent. A printout of the corresponding WhoIs database confirmed the above. At the Center’s request, the Registrar sent its registrar verification on November 22, 2013, disclosing a different registrant of the disputed domain names. On December 18, 2013, Complainants filed an amendment to the Complaint in which they named Raymond Tan as additional Respondent. Pursuant to paragraph 1 of the Rules “Respondent means the holder of a domain-name registration against which a complaint is initiated”. Since the name of the real holder of the disputed domain names registration has been identified, in this case, this Panel decides to have Raymond Tan as the proper Respondent and thus further references to Respondent herein should be understood to Raymond Tan1.
The lack of response from Respondent does not automatically result in a favorable decision for Complainants2 . The burden for Complainants, under paragraph 4(a) of the Policy, is to show: (i) that each disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainants have rights; (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) each disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is undisputed that Complainants have rights in the trademarks mentioned in the Factual Background section above.
Each of the disputed domain names incorporates a trademark of Complainants, albeit with other words. The addition of such other words is not enough to avoid similarity, nor does it add anything to avoid confusion with Complainants’ trademarks, respectively, which appear to be the central element in the disputed domain names. Prior UDRP panel decisions support this Panel’s view (see Nokia Corporation v. Nokiagirls.com a.k.a. IBCC, WIPO Case No. D2000-0102; LEGO Juris A/S v. Masayuki Sato, WIPO Case No. D2011-1639; King.com Limited and Midasplayer.com Ltd. v. Peng Chan / WhoisGuard Protected, WIPO Case No. D2013-1405).
Thus this Panel finds that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Complainants have alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain names.
Complainants contend that Respondent is not known by the disputed domain names, that Respondent is not a licensee or agent of Complainants and that Respondent is not authorized to use Complainants’ trademarks.
Complainants assert that the websites associated to each of the disputed domain names show several of Complainants’ copyrighted graphical elements and trademarks and that such websites are primarily set up for commercial gain to take unfair advantage of Complainant’s trademarks and reputation. The printouts of the websites associated to the disputed domain names, attached as exhibits to the Complaint, confirm Complainants’ assertion. Further, the first impression such websites convey is that they correspond to or are somewhat associated with Complainants. All that is not a bona fide offering of products or services in this Panel’s view.
This Panel considers that Complainants have established prima facie that Respondent has no rights or legitimate interests in the disputed domain names3 . From the documentation that is on the file there is no indication that may lead to consider that Respondent might have rights or legitimate interests in the disputed domain names, but rather the opposite may be validly inferred.
Therefore, this Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Complainants contend that Respondent’s registration and use of the disputed domain names is in bad faith, which Respondent chose not to rebut.
The overall evidence in the file indicates that Respondent’s choice of the disputed domain names was deliberate with the apparent intention to benefit from the reputation and goodwill of Complainants’ trademarks, which denotes bad faith. In this Panel’s view, the lack of response in this case is also indicative that Respondent either has no interest in the disputed domain names or lacks arguments and evidence to support its holding of the disputed domain names.
Taking into consideration the undisputed exponential growth and widespread use of Complainants’ trademarks and games identified thereunder, the incorporation in the disputed domain names of Complainant’s trademarks with generic terms, and the content of the websites associated to the disputed domain names, this Panel is of the view that Respondent was fully aware of the existence of Complainants’ trademarks and the games identified thereunder at the time it obtained the registration of each disputed domain name.
As regards the disputed domain name <farmheroessecrets.com>, this Panel notices that Complainants’ trademark registrations No. 011648581 for FARM HEROES and No. 011648763 for FARM HEROES SAGA were granted in July and October 2013, respectively (i.e. after the creation of such disputed domain name), although both have filing dates March 12, 2013 (i.e. before the creation of such disputed domain name). Complainants assert that King released the Farm Heroes Saga game in April 2013 on the Facebook platform, that is, before the registration of the <farmheroessecrets.com> disputed domain name on May 21, 2013. From the above it may be validly concluded that Respondent had Complainants’ games and trademarks in mind when registering the <farmheroessecrets.com> disputed domain name since (i) such registration took place after the Farm Heroes Saga game was launched on Facebook and after Complainants have applied for the registration of the FARM HEROES and FARM HEROES SAGA trademarks, and (ii) on the same date Respondent also registered the <petrescuesecrets.com> disputed domain name4 .
Taking into consideration the content of the websites associated to the disputed domain names, this Panel considers that in using the disputed domain names, Respondent has intentionally sought to attract, for commercial gain, Internet users to the websites associated to the disputed domain names by creating a likelihood of confusion with Complainants and Complainants’ trademarks and games as to the sponsorship or source or affiliation or endorsement of such websites, when in fact there is no such connection.
Complainants notice that the websites associated to the disputed domain names show a disclaimer at the bottom5 . The printouts attached to the Complaint of the websites associated to the disputed domain names <crush-the-candy.com> and <petrescuesecrets.com> show a small and discreet disclaimer at their very bottom, which simply reinforces this Panel’s above-reached conclusion that Respondent deliberately targeted Complainants’ games and trademarks.
In light of all the above, this Panel finds that Complainants have satisfied 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, this Panel orders that the disputed domain names <crush-the-candy.com>, <farmheroessecrets.com> and <petrescuesecrets.com> be transferred to Complainant King.com Limited.
Gerardo Saavedra
Sole Panelist
Date: February 20, 2014
1 The use of privacy service providers, the disclosure of underlying registrants and the determination of the proper respondent have been dealt with in several panel decisions. For instance, see The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658], WIPO Case No. D2007-1438; and Costco Wholesale Corporation and Costco Wholesale Membership, Inc., v. Yezican Industries and Domains By Proxy, Inc., WIPO Case No. D2007-0638.
2 See Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465: “the panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence”.
3 See Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467: “For methodical reasons it is very hard for the Complainant to actually prove that Respondent does not have rights or legitimate interests in respect of the domain name, since there is no strict logical means of verifying that a fact is not given[...] Many legal systems therefore rely on the principle negativa non sunt probanda. If a rule contains a negative element it is generally understood to be sufficient that the complainant, by asserting that the negative element is not given, provides prima facie evidence for this negative fact. The burden of proof then shifts to the respondent to rebut the complainant’s assertion”.
4 See section 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), available at “www.wipo.int/amc/en/domains/search/overview2.0/”.
5 See section 3.5, Ibid.