WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Supercell Oy v. WhoisProxy.com Ltd / Jordan Rash, Application Automation LLC
Case No. D2015-1445
1. The Parties
The Complainant is Supercell Oy of Helsinki, Finland, represented by Roschier Brands, Attorneys Ltd., Finland.
The Respondent is WhoisProxy.com Ltd of Auckland, New Zealand / Jordan Rash, Application Automation LLC of Raleigh, North Carolina, United States of America ("United States"), represented by Michael Horak, Germany.
2. The Domain Name and Registrar
The disputed domain name <clashbot.org> (the "Domain Name") is registered with Google Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 17, 2015, naming WhoisProxy.com Ltd as the Respondent. The Center transmitted its request for verification to the Registrar the same day. The Registrar replied on August 18, 2015, identifying the registrant as Jordan Rash, Application Automation LLC, and providing the full contact details held on its WhoIs database in respect of the Domain Name. The Registrar confirmed that it had received a copy of the Complaint, that the Domain Name was registered with it, that the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP") applied to the registration, that the Domain Name was registered or acquired by the current registrant on February 10, 2015, would expire on February 10, 2017, and would remain on Lock during this proceeding pursuant to the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and that the registration agreement was in English.
The Center informed the Complainant on August 20, 2015, that the registrant of the Domain Name had been identified by the Registrar as different to the Respondent named in the Complaint and invited the Complainant to amend the Complaint. The Complainant filed an amended Complaint on August 21, 2015, naming the Respondent as Jordan Rash, Application Automation LLC.
The Center verified that the amended Complaint satisfied the formal requirements of the UDRP, the Rules, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with paragraphs 2 and 4 of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 26, 2015. In accordance with paragraph 5 of the Rules, the due date for Response was September 15, 2015. The Response was filed with the Center on September 15, 2015.
The Center appointed Jonathan Turner as the sole panelist in this matter on September 25, 2015. The 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. Having reviewed the file, the Panel finds that the amended Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant is the creator of a successful game for mobile devices called "Clash of Clans". It was the most downloaded mobile game on Apple's App Store in June 2015, became a "top 5" download from the App Store between December 2012 and May 2013, and has been ranked as the top revenue-generating game application on the App Store. The Complainant has registered the word mark CLASH OF CLANS and a logo comprising the words "CLASH of CLANS" in the European Union and the United States, with filing dates for the word mark of September 3, 2012 in the European Union and September 6, 2012 in the United States.
The Domain Name was registered on February 10, 2015. The Respondent is using the Domain Name for a website on which it offers automated software to facilitate the playing of the game "Clash of Clans" on payment of a subscription. There is a disclaimer near the bottom of the home page of this website which states "LEGAL / Clash of Clans is a registered trademark of Supercell Oy. Automation Application LLC is not affiliated with Supercell Oy."
5. Parties' Contentions
The Complainant contends that the Domain Name is confusingly similar to its registered trademarks CLASH OF CLANS. The Complainant argues that in assessing confusing similarity, the first part of the trademark has more relevance, since consumers tend to pay more attention to the beginnings of trademarks as this is the part that generally attracts consumers' attention. The Complainant adds that "bot" is a descriptive term for an automatic software program.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name or any corresponding name. The Complainant states that it has not licensed the Respondent to use the Domain Name, that there is no relationship between them, and that the Respondent is using the Domain Name in bad faith for non-legitimate, commercial purposes.
The Complainant alleges that the Respondent registered and is using the Domain Name in bad faith to disrupt the Complainant's business and intentionally to attract Internet users to the Respondent's website for commercial gain by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the website or a product or service on it. The Complainant draws attention to the Respondent's use of the Complainant's copyright images to reinforce the impression of authenticity of the Respondent's website.
The Complainant requests that the Domain Name be transferred to it.
The Respondent denies that the Domain Name is confusingly similar to the Complainant's mark, pointing out that the Domain Name is a single word whereas the Complainant's mark comprises three words, and that the common element, "clash", is descriptive of the object of the Complainant's and other games.
The Respondent contends that it has a right or legitimate interest in the Domain Name because it is using the Domain Name for its website offering its "clashbot" software to its customers.
The Respondent denies that it registered or is using the Domain Name in bad faith. The Respondent states that it registered the Domain Name in good faith in order to offer its "clashbot" software to its customers and that it makes clear by its disclaimer on the website that its software is not offered by the Complainant. The Respondent points out that it did not register the Domain Name for the purpose of selling it to the Complainant or to prevent the Complainant from reflecting its mark in a corresponding domain name. The Respondent disputes that it registered the Domain Name primarily to disrupt the Complainant's business; on the contrary, the Respondent observes that it depends on the success of the Complainant's business. The Respondent also denies that it is attempting intentionally to attract Internet users to its website by creating a likelihood of confusion with the Complainant's mark.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove: (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. It is appropriate to consider each of these requirements in turn.
A. Identical or Confusingly Similar
The Panel finds on the evidence that the Complainant has registered and unregistered rights in the word mark CLASH OF CLANS and in its logo containing the same words. The Panel notes that these marks have been very extensively used for the Complainant's game and must be familiar to numerous Internet users. The Panel also accepts the Complainant's evidence that the mark "CLASH OF CLANS" is often abbreviated to its first syllable, "CLASH", as is commonly the case with widely used marks.
Apart from the generic top level domain ("TLD") suffix, which is generally to be discounted in applying the first requirement of the UDRP, the Domain Name consists of the elements "clash" and "bot". As the Complainant observes, the term "bot" is widely used to refer to an automatic software program, while "clash" is identical to a dominant element of the Complainant's marks.
In addition, it is evident that the Respondent adopted the name "Clashbot" for its product in order to identify it as an automatic software programme relating to the Complainant's game. It can be inferred that the name has the effect intended by the Respondent, in line with Panel decisions such as Schering-Plough Corporation, Schering Corporation v. Dan Myers, WIPO Case No. D2008-1641, and Florida Department of Management Services v. Domain Names, Administration / Name Administrator / Domain Admin / Domain, Administration, WIPO Case No. D2009-0403.
Given that Internet users are likely to understand "clashbot" as referring to the Complainant's game, the Panel further considers that many of them will assume that a domain name consisting of this second level domain ("SLD") and the generic TLD suffix locates a website of or authorized by the Complainant. This suffices to satisfy the first element of the UDRP which serves essentially as a standing requirement: see paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
In all the circumstances, the Panel concludes that the Domain Name is confusingly similar to the Complainant's mark for the purposes of the first requirement of the UDRP. The first requirement of the UDRP is satisfied.
B. Rights or Legitimate Interests
As noted in paragraph 2.3 of the WIPO Overview 2.0, many UDRP Panels have followed the guidance in the decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, as to the circumstances in which a reseller of a supplier's products who is using a domain name based on a supplier's mark may be regarded as making a bona fide offering, and hence as having a legitimate interest in the domain name in accordance with paragraph 4(c)(i) of the UDRP.
According to this guidance, the reseller may have a legitimate interest provided that it is actually offering the supplier's products; that the website at the domain name is used to sell only those products; that the website accurately and prominently discloses the true relationship between the registrant and the supplier, and that the respondent does not attempt to register all domain names that reflect the supplier's mark.
In this case the Respondent is not reselling a product supplied by the Complainant and does not meet the first condition of this test. Furthermore, the disclaimer on the Respondent's website, appearing as a small element at the bottom of a long page, is not at all prominent and does not satisfy the third condition of the test. Even if the user gets to read the disclaimer, it does not explain that the product is not supplied or authorized by the Complainant. In the Panel's view, many Internet users accessing the Respondent's website would assume that this website and the product advertised on it are connected with or authorized by the Complainant.
Accordingly, the Panel finds that the Respondent has not made a bona fide offering of goods or services such as to establish a right or legitimate interest in the Domain Name.
It is evident that the Respondent is not commonly known by the Domain Name or a corresponding name. Nor is the Respondent making legitimate noncommercial or fair use of the Domain Name. On the contrary, it is making unfair, commercial use of the Domain Name to attract Internet users by confusion to the Respondent's website for commercial gain.
On the material put forward by the Parties, there is no other basis on which the Respondent could claim a right or legitimate interest in respect of the Domain Name. The second requirement of the UDRP is satisfied.
C. Registered and Used in Bad Faith
On the evidence, the Panel finds that the Domain Name was plainly registered with the intention of indicating a connection with the Complainant's game. The Panel also notes the inadequacy of the disclaimer on the Respondent's website and the use of the Complainant's images to reinforce the apparent authenticity of the Respondent's offering.
In all the circumstances, the Panel considers that the Respondent chose the Domain Name in order to attract Internet users to its website in the belief that it is a website of the Complainant or affiliated with or endorsed by the Complainant. Accordingly, the Panel finds that by using the Domain Name the Respondent has intentionally attempted to attract Internet users to its website for commercial gain, in the form of subscriptions for its software, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the website or of the software offered on it.
In accordance with paragraph 4(b)(iv) of the UDRP this constitutes evidence of registration and use of the Domain Name in bad faith. This presumption is not displaced by countervailing evidence. The Panel concludes that the Domain Name was registered and is being used in bad faith.
All three requirements of the UDRP are satisfied and it is appropriate to direct that the Domain Name be transferred to the Complainant.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <clashbot.org>, be transferred to the Complainant.
Date: October 9, 2015