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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Gameloft S.E. v. Registration Private, Domains By Proxy, LLC / Peter Zmijewski

Case No. D2020-0387

1. The Parties

Complainant is Gameloft S.E., France, internally represented.

Respondent is Registration Private, Domains By Proxy, LLC, United States / Peter Zmijewski, Philippines.

2. The Domain Name and Registrar

The disputed domain name <asphalt9legend.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 18, 2020. On February 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 20, 2020, 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 and contact information in the Complaint. The Center sent an email communication to Complainant on February 21, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 21, 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 Respondent of the Complaint, and the proceedings commenced on March 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 23, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 25, 2020.

The Center appointed Roberto Bianchi as the sole panelist in this matter on March 31, 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

Complainant, founded in 1999, is a publisher and developer of digitally distributed video games, and has a leading position in the mobile gaming industry. Since 2004, Complainant developed and published the series of ASPHALT racing video games, including Asphalt: Urban GT (2004), Asphalt: Urban GT 2 (2005), Asphalt 3: Street Rules (2006), Asphalt 4: Elite Racing (2008), Asphalt 5 (2009), Asphalt 6: Adrenaline (2010), Asphalt 7: Heat (2012), Asphalt 8: Airborne (2013), Asphalt 9: Legends (March 2018).

According to the Google Play store, the game Asphalt 9: Legends has been downloaded more than ten million times on Android mobile devices.

Complainant owns, inter alia, the following trademarks:

- European Union Trademark ASPHALT 9 LEGENDS, Registration No. 017866940, registered on June 29, 2018 in classes 9, 28, 38, 41, and 42;

- United States of America Trademark ASPHALT 9: LEGENDS, Registration No. 5597603, registered on October 30, 2018 in class 9;

- International Trademark ASPHALT 9 LEGENDS, Registration No. 1439919, registered on October 3, 2018 in classes 9, 28, 38, 41, and 42;

- European Union Trademark ASPHALT 9, Registration No. 017649484, registered on April 27, 2018 in classes 9, 28, 38, 41, and 42; and,

- United States of America Trademark ASPHALT 9, Registration No. 5597433, registered on October 30, 2018 in class 9.

Complainant owns, inter alia, the domain names <asphalt9legends.com>, registered on February 27, 2018; <asphaltlegends.com>, registered on February 21, 2018; <asphalt-9.com> and <asphalt-9.fr>, registered on January 19, 2018; and, <asphalt9.com>, registered on August 8, 2016.

The disputed domain name was registered on September 30, 2019, using a privacy service.

At the time of filing the Complaint, the website at the disputed domain name was used to deceive Internet users presumably looking for Complainant’s game, inducing them to download malicious software and redirecting them to the website of a competitor of Complainant. The disputed domain name does not currently resolve to any active website.

5. Parties’ Contentions

A. Complainant

Complainant contends as follows:

The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. The disputed domain name copies Complainant’s ASPHALT 9 LEGENDS mark without the letter “s” in the word “legends” in order to create confusion, which is typical typosquatting. The registration of the disputed domain name consists of a common, obvious and intentional misspelling of Complainant’s trademarks.

Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent does not have any commercial activity under the disputed domain name. Respondent registered the disputed domain name after the release of the game Asphalt 9 Legends in order to refer to Complainant’s racing game. There is no sponsorship or affiliation between Complainant and Respondent. Complainant did not allow Respondent to use the name “Asphalt 9 Legends” or its trademarks, for creating a website regarding this game or for any other purposes. Respondent is using Complainant’s trademarks, works and intellectual property without any prior authorization. To Internet users, the disputed domain name appears to correspond to Complainant’s official website. Thus, Respondent infringes Complainant’s rights and creates a likelihood of confusion as to whether Complainant was the source, sponsor, affiliate or endorser of the disputed domain name.

Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The corresponding website is presented as the official website of the game, without disclaimers clearly stating that it is not endorsed by Complainant or that it is not Complainant’s official website. Instead, at the bottom of the website there is only a very discreet note in small grey characters on a black background stating, “Asphalt 9: Legend is an unofficial fan site to the game Asphalt 9 Legends”, as provided in Annex 15 to the Complaint. This text is inadequate to dispel the initial confused interest that drives Internet users to the website. Moreover, at the bottom of this page is displayed “Copyright © 2019 Asphalt9legends.com”, which maintains the confusion for Internet users. Thus, the website is misleadingly diverting consumers, depriving Complainant of visits by Internet users to its official website at the <asphalt9legends.com> domain name. UDRP panels have consistently considered typosquatting as an indication of lack of rights or legitimate interests in a domain name.

In addition, the website at the disputed domain name invites to download Complainant’s Asphalt 9 Legends game whereas Complainant never authorized Respondent to offer such service. When the Internet user attempts to download this game, it is redirected to an “E-INSTALLER” software, defined on the Internet as a “browser hijacker and an infection risk”, as provided in Annexes 17 and 18 to the Complaint.

Moreover, the game downloaded is not “Asphalt 9 Legends” but a game that seems impossible to play after its download. In addition, a MobiGame/DesktopGame program is also downloaded which seems useless and rather looks like a malware. Further, when the Internet user clicks on the hyperlink “Copyright © 2019 Asphalt9legends.com”, it is redirected to the website “www.mobilelegends-pc.com”, related to the mobile game MOBILE LEGENDS developed by Moonton, a competitor of Complainant in the app game industry. Thus, Respondent also is tarnishing Complainant’s reputation by associating fraudulent links to the website at the disputed domain name. Consequently, Respondent has no rights or legitimate interests in the disputed domain name.

The disputed domain name was registered and is being used in bad faith. The disputed domain name has been registered after the release of the game Asphalt 9 Legends, copying the name of Complainant’s video game name, ASPHALT 9 LEGENDS trademarks, and domain names, by simply deleting the letter “s” in the term “legends”, in order to create confusion. This is a typical act of typosquatting, a deliberate misspelling of Complainant’s mark, which constitutes evidence of bad faith registration and use by Respondent.

The disputed domain name is confusing and disruptive in that visitors to the associated website believe that it is connected to or approved by Complainant as it is using Complainant’s marks, features, arts, posters, videos, et cetera. In addition, the website at the disputed domain name offers to download software with infection risks instead of the game Asphalt 9 Legends. The disputed domain name is used in bad faith as it seriously disrupts Complainant’s commercial, marketing and public relations activities and tarnishes the Complainant’s image. Moreover, the website at the disputed domain name redirects to a website at the <mobilelegends-pc.com> domain name, dedicated to the “Mobile Legends” mobile game developed by Moonton, a competitor of Complainant in the app game industry.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

By submitting printouts taken from various official trademark databases, Complainant has shown to the satisfaction of the Panel that it owns trademark rights in the ASPHALT 9 LEGENDS trademark. See section 4 above.

The Panel notes that the disputed domain name only differs from this mark in that the letter “s” in the term “legends” is missing, which constitutes a common, obvious, or intentional misspelling of the Complainant’s mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which Complainant has rights.

B. Rights or Legitimate Interests

The Panel notes that the registrant of record of the disputed domain name, i.e. Respondent, is Peter Zmijewski, and nothing in the case file suggests that this person is known by the disputed domain name. Thus, Policy paragraph 4(c)(ii) is not applicable. The Panel also notes that there is no evidence of sponsorship, affiliation or between Complainant and Respondent, or that any authorization or license was given to Respondent to use the disputed domain name.

Complainant has shown that the website at the disputed domain name was used as if it were the official website of Complainant’s Asphalt 9 Legends game, and without making clear to Internet users that the website does not belong to, and that it is not endorsed by, Complainant. The Panel agrees with Complainant that the text appearing at the bottom of one of the pages of the website at the disputed domain name is insufficient as it reads, “Asphalt 9: Legend is an unofficial fan site to the game Asphalt 9 Legends”. Such text is also deceitful, in that the website has offered Internet users to download not Complainant’s game but a “Aspahlt Streetorm” game. Moreover, by using the website at the disputed domain name, an Internet user is inadvertently lead to download a program described as malware on the Internet. In the view of the Panel, this content of the website at the disputed domain name strongly indicates that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i).

Complainant also has shown that an Internet user visiting the disputed domain name is redirected to a website related to a mobile game developed by a competitor of Complainant in the industry of games for mobile applications, which in this context means that Respondent is not making a fair or legitimate noncommercial use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s ASPHALT 9 LEGENDS trademark, under Policy paragraph 4(c)(iii).

Thus, Complainant succeeded in making a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. For its part, Respondent failed to provide any explanation or reasons for having rights or legitimate interests in the disputed domain name.

For these reasons, the Panel concludes that Respondent does not have any rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

As seen in Section 4 above, Complainant’s registrations for its ASPHALT 9 LEGENDS mark in various jurisdictions predate the registration of the disputed domain name by well over a year. It is also noteworthy that the “Asphalt 9: Legends” mobile app game, launched in March 2018, is the last version in a series beginning in 2004: “Asphalt: Urban” GT (2004), “Asphalt: Urban GT 2” (2005), “Asphalt 3: Street Rules” (2006), “Asphalt 4: Elite Racing” (2008), “Asphalt 5” (2009), “Asphalt 6: Adrenaline” (2010), “Asphalt 7: Heat” (2012), and “Asphalt 8: Airborne” (2013).

In addition, Complainant has shown that in June 2019, several months before the registration of the disputed domain name, the Asphalt 9 Legends game was granted an Apple design award. Further, the Panel notes that the whole content of the website at the disputed domain name refers to Complainant’s game. Lastly, the disputed domain name is almost identical to Complainant’s mark, and a clear example of typosquatting. For these reasons, the Panel concludes that at the time of registering the disputed domain name, Respondent perfectly knew of and targeted Complainant, its ASPHALT 9 LEGENDS mark and game. In the circumstances of this case, this is evidence of registration in bad faith.

As shown above, the website at the disputed domain name was used to deceive Internet users presumably looking for Complainant’s well-known game, leading them into confusion as to the source of the website, inducing them to download malicious software, and redirecting them to the website of a competitor of Complainant. The Panel considers this is clear evidence of bad faith registration and use of the disputed domain name.

Lastly, the Panel notes that currently the disputed domain name does not resolve to any active website. This inaction, together with the fact that Respondent failed to present any explanation for its conduct, reinforce the Panel’s overall impression that Respondent is acting in bad faith.

For these reasons, the Panel concludes that the disputed domain name was 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 <asphalt9legend.com> be transferred to Complainant.

Roberto Bianchi
Sole Panelist
Date: April 14, 2020

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