WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
King.com Limited and Midasplayer.com Ltd. v. Peng Chan / WhoisGuard Protected
Case No. D2013-1405
1. The Parties
Complainants are King.com Limited of Gzira, Malta and Midasplayer.com Ltd. of London, United Kingdom of Great Britain and Northern Ireland, represented by Origin Ltd., United Kingdom. They allege that they “are part of the same corporate group of companies and will be collectively referred to as ‘King.’”
Respondent is Peng Chan of Petaling Jaya, Selangor, Malaysia / WhoisGuard Protected of Panama City, Panama.
2. The Domain Name and Registrar
The disputed domain name <candycrushsecrets.com> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 8, 2013. On August 8, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 9, 2013, 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 Complainants on August 9, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting Complainants to submit an amendment to the Complaint. Complainants filed an amended Complaint on August 14, 2013.
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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 16, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 5, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 6, 2013.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on September 16, 2013. 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
Complainants develop and market online, social and mobile games, including the “Candy Crush Saga” game, which has over 9 million daily active users in numerous countries worldwide.
The game Candy Crush Saga is an expanded version of Complainant King’s game “Candy Crush”
which was released by the group company Midasplayer.com Limited in March 2011. The use of “Saga” designates that this is a game in King’s “Saga family” of games. The Saga family of games allows the player to progress over a map and play the game at each level as indicated by nodes on the map. The Saga games are played online and have a broad user base, many of which are fairly inexperienced online users. King released Candy Crush Saga in March 2012 on the Facebook platform and in November 2012 on Apple’s iOS platform for iPhone and iPad and on Google Play for Android phones. Before the disputed domain was registered, in January 2013, Candy Crush Saga was the No. 1 game on Facebook and had 9 million daily active users. The game now has an estimated 45 million monthly active users.
Complainants own the following registrations, among others:
European Community trademark registration, No.: 011106713 filed on August 8, 2012 and issued on July 5, 2013 for the mark CANDY CRUSH in International Classes 09, 25 and 41;
European Community trademark registration, No.: 010718542 filed on March 12, 2012 and issued on August 9, 2012 for the mark CANDY CRUSH SAGA in International Classes 09, 25 and 41; and
European Community trademark registration, No.: 011560604 filed on February 8, 2013 and issued on July 5, 2013 for the mark CANDY CRUSH and Design in International Classes: 3, 9, 16, 25, 28, 29, 30, 32, 35, and 41.
The disputed domain name was created on February 19, 2013.
5. Parties’ Contentions
With respect to paragraph 4(a)(i) of the Policy, Complainants allege that:
Complainants are the registered proprietor of a number of trademark registrations and applications worldwide consisting of or containing CANDY CRUSH or CANDY CRUSH SAGA as noted above.
The disputed domain name includes Complainants’ CANDY CRUSH mark with the addition of the generic word “secrets.” Complainants’ Candy Crush Saga game is the casual social game genre and the group of players is varied with a weight towards inexperienced game players and online users. Candy Crush is a phrase that is not generally used in the English language. The addition of merely generic and descriptive wording to Candy Crush in the disputed domain name does not stop the general Internet user from confusion as to the origin of the disputed domain name.
With respect to paragraph 4(a)(ii) of the Policy, Complainants allege that:
The website features several of Complainants’ registered trademarks and also several copyrighted elements.
On the website Respondent offers a “guide” with “secrets” for Complainant, 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.
The website at the disputed domain name is not used for a bona fide offering of goods and services and to Complainants’ knowledge there are no demonstrable preparations for such use. The website is 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 Candy Crush Secrets or its substantial equivalent. Respondent also is not an agent or licensee of Complainants.
Respondent is clearly not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish Complainants’ trademarks.
The use of copyrighted material in connection with a website that attempted to cause confusion with and tarnish Complainants’ trademarks and otherwise reflected obvious disregard for Complainants’ intellectual property rights cannot establish a right or legitimate interest in the disputed domain name.
With respect to paragraph 4(a)(iii) of the Policy, Complainants alleges that:
Respondent registered and is using the disputed domain name with an intentional attempt to attract for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and/or of a product on Respondent’s website or location. The use of the disputed domain name should therefore be found to be in bad faith.
The disputed domain name was created on February 19, 2013, several years after the launch of Candy Crush and just under a year after the release of Candy Crush Saga. Candy Crush Saga had experienced a tremendous commercial success in 2012 and was in January 2013 the No. 1 game of Facebook. Respondent clearly noticed Candy Crush Saga’s success before registering the disputed domain name.
The website uses Complainants’ CANDY CRUSH SAGA family of marks and copyrighted artwork in such a manner as to appear to a visitor to be an official website for Complainants or a website being endorsed or affiliated with Complainants.
The website generates income for Respondent through the commercial offering of a “guide” that visitors to the website can pay to download. Thus, Respondent uses the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainants’ marks as to the source, sponsorship, affiliation, or endorsement of the website. This is an independent basis for finding the requisite bad faith.
Respondent does not have the permission to use Complainants’ copyrighted works or registered trademark, and has not tried to seek permission from Complainants to incorporate Complainants’ copyrighted works or trademark into the website. Such unauthorized use of Complainants’ intellectual property on the website of the disputed domain name constitutes further evidence of Respondent’s bad faith.
The website has a disclaimer at the bottom of the page in small greyed out text that states “This site and the products and services offered on this site are not associated, affiliated, endorsed, or sponsored by King, nor have they been reviewed, tested or certified by King”. The disclaimer is in fairly small grey type and it could easily be missed altogether, 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 website for commercial and financial gain through use of Complainants’ trademark in the disputed domain name will have been achieved. The visitor will also have had several opportunities to purchase the “guide” by clicking on “Add to basket” buttons while scrolling to the bottom of the page.
Respondent did not reply to Complainants’ contentions.
Because of Respondent’s default, the Panel may accept as true the reasonable factual allegations in the Complaint, and may draw appropriate inferences. Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; see also paragraph 5(e) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.”).
6. Discussion and Findings
As a preliminary matter, the Panel notes that there are two complainants. Because they have alleged that they are part of the “same corporate group of companies,” the Panel finds that this consolidation is proper. See National Dial A Word Registry Pty Ltd and others v. 1300 Directory Pty Ltd, WIPO Case No. DAU2008-0021 (reviewing WIPO UDRP decisions regarding multi-complainant cases and observing: “Another example is where multiple complainants form part of a single entity such as where individual companies are part of a larger corporate group or joint venture. In this situation, it might be said that each company has a common legal interest in trademarks held collectively by or within such entity, such that it may be appropriate to entertain a complaint brought by that entity and its constituent members against a single respondent in respect of multiple domain names alleged to contain such marks in whole or part”).
A. Identical or Confusingly Similar
Given Complainants’ trademark registrations and millions of players of their Candy Crush games prior to the registration of the disputed domain name worldwide, the Panel finds that Complainants have trademark rights in the CANDY CRUSH mark.
The Panel also finds that the disputed domain name is either identical or confusingly similar to Complainants’ CANDY CRUSH mark. The disputed domain name <candycrushsecrets.com> incorporates Complainants’ entire registered trademark with the addition of only the descriptive term “secrets”. The mere addition of a generic or descriptive term does not avoid confusing similarity. Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin WIPO Case No. D2003-0888. (The fact that the word “autoparts” is added to the complainant’s trademark does not eliminate the identity, or at least the similarity, between the complainant’s trademark and the domain name at issue, as “autoparts” is a descriptive component of the domain name at issue.) See also, Bayer Aktiengesellschaft v. Dangos & Partners, WIPO Case No. D2002-1115 (addition of generic words “healthcare” to form <bayerhealthcare.org> domain name deemed “confusingly similar to the BAYER trademark”); Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037 (addition of “ordinary descriptive” term “buy” to mark LANTUS in domain name <buylantus.com> “does nothing to dispel and serves only to reinforce the connection in the public mind between the word LANTUS and the Complainants, and therefore increases the risk of confusion”); PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696 (finding domain names such as <pepsibasketball.com>, <pepsigames.com>, <pepsihockey.com>, and <pepsisoccer.com> confusingly similar to complainant’s PEPSI mark stating that “[t]hat the mere addition of common terms such as ‘sports,’, ‘basketball’ or ‘soccer’ to the PEPSI mark is of no import”). The addition of the “.com” generic Top-Level Domain (gTLD) to Complainants’ trademark likewise does nothing to avoid confusion. Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127 (“the addition of the generic top-level domain (gTLD) name ‘.com’ is […] without legal significance since use of a gTLD is required of domain name registrants”).
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that Respondent may establish rights or legitimate interests in the disputed domain name by proving any of the following non-exclusive circumstances:
(i) before any notice to Respondent of the dispute, 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; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or made demonstrable preparation 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.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the disputed domain name.
With respect to 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name.
It is a complainant’s burden to prove that a respondent lacks rights or legitimate interests in a domain name. National Construction Rentals, Inc. v. Toilets.com, Inc., WIPO Case No. D2009-0147. Because it is difficult to prove a negative assertion, the threshold is low. A complainant need only make a prima facie showing on this element, at which point the burden of production shifts to the respondent to present evidence that it has some rights or legitimate interests in the domain name at issue. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1. The ultimate burden of proof, however, remains with the complainant. Id. Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141.
The Panel finds that the above facts establish a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain name. Moreover, Respondent has not rebutted such a prima facie showing and therefore Complainants have succeeded with respect to this Policy element.
In particular, Respondent’s website is not fair use. While it is conceivable that a companion guide to a video game could be designed to comport with principles of nominative fair use, this website does not come close to respecting the limitations on such use. See New Kids on the Block v. News America Pub., Inc., 971 F. 2d 302 (9th Cir. 1992) and Century 21 Corp., LendingTree, Inc., 425 F.3d 211, 228 (3d Cir, 2005). It is universally required that the user limit its borrowing to “only so much of the mark as may be used as is reasonably necessary to identify the product or service…”, New Kids, 971 F.2d at 308. And the user must avoid the impression that its use sponsored or affiliated with the target brand. Id. Respondent here has made no attempt to respect either of these universal rules, taking much more than necessary to reference the CANDY CRUSH mark. Respondent has copied wholesale the distinctive graphics associated with the mark, as well as its iconic cartoon characters. It has also extensively copied copyrighted game images. In this Panel’s view, Respondent’s grayed out nearly invisible disclaimer buried deep on the last page of its promotional discourse is nearly does not prevent confusion.
Accordingly, Complainants have satisfied its burden with respect to paragraph 4(c)(ii) of the Policy.
C. Registered and Used in Bad Faith
Respondent did not contest Complainants’ allegations of bad faith registration and use. Also, it is highly unlikely that Respondent was unaware of Complainants’ trademark rights when Respondent registered the disputed domain name since Complainants had released its Candy Crush Saga game in March 2012 and allegedly had 9 million daily active Facebook users as of January 2013, before the date that the disputed domain name was created.
Under the Policy, it is evidence of bad faith that, “by using the disputed domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with complainant’s mark as to source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” Paragraph 4(b)(iv) of the Policy.
The evidence shows that Respondent’s website at “www.candycrushsecrets.com” generates income for Respondent through the commercial offering of a “guide” that visitors to the website can pay to download. Thus, Respondent uses the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainants’ marks as to the source, sponsorship, affiliation, or endorsement of the website.
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 <candycrushsecrets.com> be transferred. Per Complainants’ request, the transfer should be to Complainant, King.com Limited.
Lawrence K. Nodine
Date: September 30, 2013