WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Supercell Oy v. Ong Nguyen Huu Tam
Case No. D2017-2208
1. The Parties
The Complainant is Supercell Oy of Finland, represented by Roschier Brands, Attorneys Ltd., Finland.
The Respondent is Ong Nguyen Huu Tam of Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <vietclash.com> is registered with P.A. Viet Nam Company Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2017. On November 9, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 13, 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 and stating that the language of the Registration Agreement was Vietnamese.
On November 15, 2017, the Center sent a communication to the Parties, inviting the Complainant to either submit satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English, or to submit the Complaint translated into Vietnamese, or to submit a request for English to be the language of the administrative proceedings. The Respondent was also invited to submit comments. On November 16, 2017, the Complainant submitted a request for English to be the language of the proceedings. The Respondent did not reply to this request.
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 December 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 26, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2017.
The Center appointed William R. Towns as the sole panelist in this matter on January 16, 2018. 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 developer of mobile games headquartered in Helsinki, Finland. The “Clash of Clans” is a highly popular and successful mobile strategy video game developed by the Complainant and released in 2012. The “Clash of Clans” game since then has consistently been ranked as a leading revenue-generating game application. Japan’s SoftBank has valued the Complainant at USD 10.2 billion. The Complainant has registered CLASH OF CLANS both as a word mark and word plus design mark (logo) in the European Union (EUTM) and the United States of America (United States). The first of these trademark registrations was issued in the European Union on December 18, 2012 (EUIPO No. 011158086). Through popular usage the CLASH OF CLANS mark also has come to be referred to by the abbreviated term CLASH. See Supercell Oy v. WhoisProxy.com Ltd / Jordan Rach, Application Automation LLC, WIPO Case No. D2015-1445.
The disputed domain name <vietclash.com> was created on December 16, 2014, and updated on November 3, 2017, according to the concerned Registrar’s WhoIs records.1 The disputed domain name resolves to a website entitled “Clash of Clans Viet Nam.” The Respondent’s website displays images of the Complainant’s CLASH OF CLANS mark and appears to be offering a software tool for hacking gems, which is the premium in-game currency used in the Complainant’s CLASH OF CLANS game.
5. Parties’ Contentions
A. Complainant
The Complainant submits that the disputed domain name <vietclash.com> is confusingly similar to the Complainant’s CLASH OF CLANS mark. The Complainant explains that the dominant and distinctive element of its CLASH OF CLANS mark is CLASH, and that the game is commonly referred to by the relevant public as CLASH. According to the Complainant, “viet” as used in the disputed domain name is a
non-distinctive and descriptive abbreviation for Viet Nam and is specifically relevant because the Respondent’s website targets Vietnamese consumers. The Complainant contends that the addition of this generic and geographically descriptive word does not overcome the confusing similarity of the disputed domain name to the Complainant’s mark. Further, the Complainant asserts that the Respondent’s website claims to offer hacks that allow players to generate free gems inside the CLASH OF CLANS game.
The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant submits that the Respondent has not been licensed or otherwise authorized to use the Complainant’s mark, and that the Respondent has not registered the disputed domain name for use as a trademark, service mark, or trade name. According to the Complainant, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, but instead has used the disputed domain name with a website for illegitimate purposes, namely making available on the Respondent’s website for commercial gain a hacking tool to provide the Respondent’s customers with gems and other in-game currency central to the CLASH OF CLANS game.
In light of the foregoing, the Complainant asserts that the Respondent registered and is using the disputed domain name in bad faith, primarily for the purpose of disrupting the business of the Complainant, a direct competitor, in relation to the CLASH OF CLANS game. The Complainant cites its terms of service under which users of the CLASH OF CLANS game may face a revocation of their license in the event of the use of hacks, cheats, or other unauthorized software. According to the Complainant, the Respondent clearly was aware of these public license limitations and the consequences of violations caused by visitors to the Respondent’s website acquiring hacking software to target the Complainant’s CLASH OF CLANS game. The Complainant submits that the Respondent’s use of the disputed domain name to promote its <vietclash.com> hack tool results in commercial gain for the Respondent and commercial injury to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Preliminary Matters
A. Language of the Proceeding
Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties or otherwise specified in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the administrative panel, once appointed, to determine otherwise. The Registrar provided information to the Center indicating that the language of the registration agreement as provided for under the Rules is Vietnamese.
The Complainant did not take issue with the Registrar’s notification that the language of the proceeding was Vietnamese but submitted to the Center a request for the language of the proceedings to be English, asserting that the Respondent has sufficient ability to communicate in the English language. The Complainant noted that it also was not a native English speaker and agreed to submit the Complainant translated into Vietnamese if required. The Center determined to accept the Complainant as filed in English, and to accept a Response in either English or Vietnamese. The Respondent was notified by the Center in Vietnamese and English of the Commencement of Administrative Proceeding, but the Respondent did not reply to the Complainant’s request that English be the language of the proceedings or submit a Response to the Complaint. In view of the foregoing, the Panel has determined to render its decision in English.
7. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name are deemed to be in bad faith but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds that the disputed domain name <vietclash.com> is confusingly similar to the Complainant’s CLASH OF CLANS, in which the Complainant has demonstrated rights through registration and use. In considering this issue, the first element of the Policy serves essentially as a standing requirement.2 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name.
In this case, the disputed domain name incorporates the dominant CLASH element of the Complainant’s CLASH OF CLANS mark, which the Panel finds through popular usage has come to be referred to by the abbreviated term CLASH, as also found by the distinguished Panel in Supercell Oy v. WhoisProxy.com Ltd / Jordan Rach, Application Automation LLC, supra. The confusing similarity of the disputed domain to the Complainant’s mark is reinforced by the Respondent’s website, entitled “Clash of Clans Viet Nam,” which includes images of the Complainant’s CLASH OF CLANS mark, and offers for sale gems, the premium in-game currency used in the Complainant’s CLASH OF CLANS game. See Bayer Healthcare LLC v. Admin, Domain, WIPO Case No. D2016-2342 (<scholls.com>); VF Corporation v. Vogt Debra, WIPO Case No. D2016-2650 (<bagpakonline.com> and <eastpake.com>); Bayerische Motoren Werke AG (“BMW”) v. Registration Private, Domains By Proxy, LLC / Armands Piebalgs, WIPO Case No. D2017-0156 (<bmdecoder.com> and <bmwdecoder.com>).
Taking into consideration that the Respondent’s website is entitled “Clash of Clans Viet Nam,” the inclusion of the term “viet” in the disputed domain <vietclash.com> name does not serve to dispel the confusing similarity of the disputed domain name to the Complainant’s mark. Top-Level Domains (TLDs) generally are disregarded when evaluating the identity or confusing similarity of the complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the TLD.3
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s CLASH OF CLANS mark. The Respondent notwithstanding has registered the disputed domain name, which is confusingly similar to the Complainant’s mark, and as noted earlier resolves to a website entitled “Clash of Clans Viet Nam.” The Respondent’s website as previously noted displays images of the Complainant’s CLASH OF CLANS mark and appears to be offering a software tool for hacking gems, the premium in-game currency used in the Complainant’s CLASH OF CLANS game.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or
(iii) the respondent is 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 Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
A clear inference can be drawn from the record that the Respondent, a competitor of the Complainant, was aware of the Complainant and had the Complainant’s well-known CLASH OF CLANS mark in mind when registering the disputed domain name. In view of the attendant circumstances, the Panel concludes that the Respondent more likely than not registered the disputed domain name in order to disrupt the Complainant’s business or otherwise to create a false impression of affiliation with the Complainant.
The Panel accordingly finds that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name for purposes of paragraph 4(c)(iii) of the Policy. The Respondent has not been authorized to use the Complainant’s mark, and there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. It is clear from the record in this case that the Respondent targeted the Complainant. The Panel concludes from the record that the Respondent had the Complainant’s CLASH OF CLANS mark in mind when registering the disputed domain name. The Panel further concludes in view of the foregoing that the Respondent more likely than not registered the disputed domain name for the purpose of disrupting the business of the Complainant, or with the intention of exploiting and profiting from the Complainant’s trademark rights, by creating confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s website.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
8. 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 <vietclash.com> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: January 31, 2018
1 The Complainant acknowledges that due to the prior use of a privacy protection service it cannot be certain whether the Respondent was the original registrant of the disputed domain name or subsequently acquired the disputed domain name by transfer near the end of 2016. Regardless, the Complainant submits that the CLASH OF CLANS game already was very popular and well-known in 2014 and even more popular by 2016.
2 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
3 See WIPO Overview 3.0, section 1.11 and cases cited therein.