WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
King.com Limited and Midasplayer.com Ltd. v. Whoisguard, Inc. and Rami Ivey
Case No. D2014-0017
1. The Parties
The Complainants are King.com Limited of St. Julians, Malta, and Midasplayer.com Ltd. of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Origin Ltd., UK.
The Respondents are Whoisguard, Inc. of Panama City, Panama, and Rami Ivey of Gibraltar, Overseas Territory of UK.
2. The Domain Names and Registrar
The disputed domain names <crushthecandy.com>, <crushthecandy.net> and <crushthecandy.org> are registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2014. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. Also on January 8, 2014, the Registrar transmitted by email to the Center its verification response confirming the underlying Respondent as the registrant and provided contact details.
The Center verified that the 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on January 13, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was February 2, 2014. The Respondents did not submit any Response. Accordingly, the Center notified the Respondents’ default on February 3, 2014.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on February 10, 2014. 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 paragraph 7 of the Rules.
4. Factual Background
According to the Complainants, they supply games that people can play on electronic platforms with various means of access including Facebook, iPhone and iPad devices with the Apple iOS operating system and Android-based phones through Google Play. The games have names including Candy Crush Saga, Pet Rescue Saga and Farm Heroes Saga. They are highly popular, with more than 30 billion games played per month globally by 225 million unique users. Candy Crush Saga is especially popular and involves matching sweets in a combination of three or more. The game has received mention in publications such as The New York Timesand The Economist.
The Complainants variously hold registered trademarks for CANDY, CANDY CRUSH and CANDY CRUSH SAGA as follows:
CANDY, European Community Trademark No. 4748232, registration date January 5, 2007, classes 9, 25, 35, 38, 41;
CANDY, European Community Trademark No. 11538147, registration date June 25, 2013, classes 9, 25, 41;
CANDY CRUSH, European Community Trademark No. 11106713, registration date July 5, 2013, classes 9, 25, 41;
CANDY CRUSH SAGA, European Community Trademark No. 10718542, registration date August 9, 2012, classes 9, 25, 41;
CANDY CRUSH SAGA (device), European Community Trademark No. 11560448, registration date July 5, 2013, classes 3, 9, 16, 25, 28, 29, 30, 32, 35, 41;
CANDY CRUSH (device), European Community Trademark No. 11560604, registration date July 5, 2013, classes 3, 9, 16, 25, 28, 29, 30, 32, 35, 41.
Nothing is known about the Respondent except for such information as has been provided for the purpose of registration of the disputed domain names, which were registered on July 29, 2013.
5. Parties’ Contentions
The Complainants state that they are the owners of the trademarks listed in section 4 above and have produced copies of downloads from the relevant European Union website in evidence.
The Complainants contend that the disputed domain names are confusingly similar to registered and unregistered trademarks of the Complainants, and that the generic Top-Level Domains (gTLD) “.com”, “.net” and “.org” are not relevant in this instance. Through their incorporation of the words “Candy” and “Crush”, the disputed domain names are identical or confusingly similar to the Complainants’ trademarks including CANDY, CANDY CRUSH and CANDY CRUSH SAGA. It is submitted that the incorporation of a trademark in its entirety in a disputed domain name is sufficient to establish confusing similarity.
The Complainants further contend that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not an agent or licensee of the Complainants. The Respondent cannot demonstrate any right or legitimate interest in the disputed domain names because its use of them to trade on the Complainants’ trademarks is not a bona fide use in the supply of goods or services; the Respondent is not known by the disputed domain names; and the use of the disputed domain names is not fair or noncommercial.
The Complainants further contend that the disputed domain names were registered and are being used in bad faith. The Respondent has registered the disputed domain names some years after the launch of the CANDY CRUSH game and has done so because of the success of the game. The disputed domain names resolved to the website “www.crushthecandy.com” which among other things offered a non-authentic purported guide to the game for USD 27.00. Thus it is contended that the Respondent has been attempting to divert the Complainants’ intended visitors to the Respondent’s Internet presence for commercial gain by confusion with the Complainants’ trademarks.
The Complainants state that the websites of the disputed domain names display a disclaimer in small print that reads: “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 at the bottom of the page where it would be unlikely to be noticed, and if noticed, this would happen after the viewer had been attracted to the website by one of the disputed domain names.
The Complainants request the transfer of the disputed domain names.
The Respondents did not reply to the Complainants’ contentions.
6. Discussion and Findings
A. Procedural Matters
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that a complainant asserts to the applicable provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainants have made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
The Complainants had expressed some concern as to the identity of the Respondent or Respondents since at an earlier stage of case preparation Whoisguard, Inc., a privacy service, had been the named registrant of the disputed domain names.
Paragraph 1 of the Rules defines a respondent as “the holder of a domain-name registration against which a complaint is initiated”. The Registrar concerned has since named the holder of all three registrations as Rami Ivey who accordingly is the Respondent. It is not uncommon for a complainant to name also a privacy service as a respondent and the Complainants in this case have chosen to do so.
The Registration Agreement between eNom as Registrar and the Respondent states at paragraph 4(a) under the heading “Account Contact Information And Domain Name Whois Information”:
“i. You must provide certain current, complete and accurate information about you with respect to your Account information and with respect to the WHOIS information for your domain name(s). You must maintain and update this information as needed to keep it current, complete and accurate.”
Written Notice of the Complaint sent to the physical address of the Respondent could not be delivered. There has been no acknowledgement that emails sent to the various email addresses connected with the Respondent were received and some were undeliverable.
The Panel in this case is satisfied that the Center has fulfilled its obligations to attempt to contact the Respondent in service of the Notification of Complaint in accordance with paragraph 2 of the Rules. As observed by the respected panel in Grove Broadcasting Co. Ltd v. Telesystems Communications Limited, WIPO Case No. D2000-0703:
“[the Center] goes to some lengths to ensure that proper service is effected on the named registrant at the place disclosed in the WHOIS database or in the information supplied to the domain name Registrar. Some registrants provide only a post office box number or a convenience address. If the place of service does not happen to be the Respondent’s address as advised to the Registrar, then the Respondent has only him or herself to blame in that circumstance.”
B. Identical or Confusingly Similar
The Panel is satisfied by the evidence that the Complainants have rights in the registered trademarks CANDY, CANDY CRUSH and CANDY CRUSH SAGA in the respective classes of registration. In the disputed domain names <crushthecandy.com>, <crushthecandy.net> and <crushthecandy.org> the respective gTLD may be disregarded and the operative element remaining is “crushthecandy”, which is easily read as “crush the candy”. In the determination of confusing similarity under the Policy, ordinary generic words such as “the” are unlikely to be distinguishing or of any consequence. The words remaining are “crush” and ”candy”. Out of any context these are generic or descriptive words. In the Complainants’ trademarks, the words “crush” and ”candy” have been placed in an association that creates the distinctive trademarks CANDY CRUSH and CANDY CRUSH SAGA. Similarly, in the disputed domain names, the association of the words “crush” and ”candy” is found by the Panel to evoke the trademarks CANDY CRUSH and CANDY CRUSH SAGA so strongly as to constitute confusing similarity with those trademarks in the terms of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainants must prove under paragraph 4(a)(ii) of the Policy that the Respondent does not have rights or legitimate interests in the disputed domain names. The Complainants assert prima facie that the Respondent is not an agent or licensee of the Complainants.
Paragraph 4(c) of the Policy provides for the Respondent to establish rights or legitimate interests in a disputed domain name by demonstrating:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The above circumstances are without limitation and rights or legitimate interests may be established by the Respondent alternatively to the satisfaction of the Panel.
The Respondent has not replied with any assertion of right in the disputed domain names. The Panel has not been made aware of any basis upon which the Respondent might plausibly demonstrate any such right or legitimate interest and accordingly the Panel finds for the Complainants in the terms of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Complainants must prove under paragraph 4(a)(iii) of the Policy that the respective disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Respondent has used the disputed domain names in order to offer for commercial sale, through the website to which they resolve, an unauthorised purported guide to the Complainants’ game Candy Crush. The website has carried a disclaimer naming King, being a reference to one of the Complainants. These actions by the Respondent demonstrate a prior knowledge of the Complainants and of their product Candy Crush.
The Respondent has shown by its actions an intention to sell for commercial gain a product of its own that has an association solely with the Complainants’ game Candy Crush. In order to sell that product the Respondent has needed to attract Internet visitors who have an interest in the game Candy Crush. In the Panel’s finding on the evidence and on the balance of probabilities, the Respondent has intended to attract those visitors by the use of domain names containing the key words “candy” and “crush” in an association, namely “crushthecandy”, that is likely to confuse visitors into believing it to lead to an authentic website of the Complainants. The Panel further finds that the point of confusion of Internet visitors is likely to occur at the time of seeing any of the disputed domain names appear in search results or elsewhere and before visiting the website, constituting initial interest confusion. The disclaimer on the Respondent’s website, even if it had been prominently displayed at the head of the page in large type, would not have negated initial interest confusion.
The Panel is satisfied on the evidence and on the balance of probabilities that the disputed domain names were registered specifically for the purpose for which they have been used. Registration and use of the disputed domains name in bad faith are found proven in the terms of paragraphs 4(b)(iv) and 4(a)(iii) of the Policy.
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 names <crushthecandy.com>, <crushthecandy.net> and <crushthecandy.org> be transferred to the Complainant King.com Limited.
Dr. Clive N.A. Trotman
Date: February 17, 2014