WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Big Fish Games, Inc. v. Joao Sacramento
Case No. D2017-0665
1. The Parties
The Complainant is Big Fish Games, Inc. of Seattle, Washington, United States of America ("United States"), represented by Lee & Hayes, United States.
The Respondent is Joao Sacramento of Pombal, Portugal, self-represented.
2. The Domain Name and Registrar
The disputed domain name <big-fishgames.com> is registered with Name.com (Name.com LLC) (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 1, 2017. On April 3, 2017 the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 3, 2017 the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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 the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 11, 2017. The Center received an informal communication from the Respondent on April 24, 2017. The Respondent did not submit any formal response. Accordingly, the Center informed the Parties that it would proceed to appoint the Administrative Panel on May 12, 2017.
The Center appointed Clive Duncan Thorne as the sole panellist in this matter on May 29, 2017. 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
The Complainant is a Washington State corporation that was formed on or about April 11, 2005. It develops and distributes casual video games played on computers and mobile devices, through social media and on other online platforms, all under the trademarks BIG FISH and BIG FISH GAMES and related branding.
The Complainant is the owner of multiple trademark registrations for the mark BIG FISH and BIG FISH GAMES including, but not limited to, United States trademark registrations numbers 4004420, registered on August 21, 2011, 4035789, registered on October 4, 2011 and 5086840, registered on November 22, 2016, for use in connection within the relevant part, interactive computer game software, entertainment services and providing online chat rooms. Copies of these registrations are listed in Annex 4 to the Complaint.
The Complainant has been using the trademarks BIG FISH and BIG FISH GAMES in commerce in connection with games and gaming technology since 2002. The history of the company's trading activities is set out at Annex 5 to the Complaint.
It came to the Complainant's attention that a third party had created a website using the domain name
<big-fishgames.com> the subject of the Complaint. Also that the website features links to other gaming websites not authorised by the Complainant including "A Game Online Games", "Play All Free Games Game", "A Forex", "Forex Games" and others that are not affiliated with and that are competitors of the Complainant.
The services and links featured on the Respondent's website link to third-party websites that offer goods and services that are identical to those used by the Complainant in conjunction with its BIG FISH and BIG FISH GAMES trademarks. The disputed domain name was registered on August 17, 2015.
In the absence of evidence to the contrary, the Panel accepts that the evidence set out above and adduced by the Complainant is true.
5. Parties' Contentions
The Complainant submits:
(a) That it has trademark rights in the marks BIG FISH and BIG FISH GAMES and that the disputed domain name is confusingly similar to such trademarks.
(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
(c) That the disputed domain name was registered and is being used in bad faith. The primary intent of the Respondent was to disrupt the Complainant's business by luring its customers away to play the competitors' games instead of those of the Complainant.
Apart from an informal communication of April 24, 2017, the Respondent did not submit any substantive response to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel, based upon the evidence adduced by the Complainant, is satisfied that the Complainant is the owner of trademark registrations for the marks BIG FISH and BIG FISH GAMES. The disputed domain name <big-fishgames.com> utilises the mark BIG FISH GAMES as the entirety of the disputed domain name with the exception of a hyphen between the words "big" and "fish".
The Panel therefore finds that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name because the Complainant has not granted the Respondent any rights to the mark nor does the Respondent have any way of demonstrating that it has rights to the disputed domain name through prior use.
In particular the Complainant asserts that the Respondent cannot meet any of the circumstances set out in the Policy at paragraph 4(c) that would indicate that there is a legitimate interest by the Respondent in the disputed domain name. These include:
(a) The Respondent's use of the disputed domain name is not in connection with the bona fide offering of goods of services;
(b) The Complainant points out that whilst there has been an offering of goods and services, that offering is not bona fide since the website associated with the disputed domain name is linking to third party websites that are not affiliated with and are competitive to the Complainant;
(c) The Respondent has not been commonly known by the disputed domain name. There is no evidence to that effect;
(d) The Respondent has not and is not making a legitimate noncommercial for use of the disputed domain name. Rather the evidence is that there is a clear intent by the Respondent that the disputed domain name be used for commercial gain and misleading consumers to the website and then diverting those consumers to competitive websites to play the same types of games offered by the Complainant.
In the absence of any evidence to the contrary, the Panel accepts this submission and finds for the Complainant with regard to this element.
C. Registered and Used in Bad Faith
The Complainant submits that the Respondent registered the disputed domain name to "intentionally attempt to attract for commercial gain internet users to the Respondent's website or other online location so as to create a likelihood of confusion with the Complainant's mark as to its source, sponsorship affiliation or endorsement".
It relies upon the fact that the Complainant is in the business of developing and distributing casual videogames on a variety of game platforms into which the Complainant has invested substantial sums of money using its trademarks BIG FISH and BIG FISH GAMES. Evidence of the Complainant's marketing materials can be seen on the Complainant's website.
The Complainant also submits that the Respondent has registered a confusingly similar domain name so that it can "trick" consumers into believing that they are linking to and playing the Complainant's games and purchasing virtual goods from the Complainant.
In the absence of evidence to the contrary and taking into account the evidence submitted by the Complainant, the Panel finds that the Complainant has satisfied this element of the Policy and that accordingly the disputed domain name was registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(1) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <big-fishgames.com> be transferred to the Complainant.
Clive Duncan Thorne
Date: June 1, 2017