WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FPS Networks, Inc. v. Domain Administrator, Fundacion Privacy Services LTD
Case No. D2018-2854
1. The Parties
The Complainant is FPS Networks, Inc. of Alberta, Canada, represented by Wiley Rein LLP, United States of America (“United States”).
The Respondent is Domain Administrator, Fundacion Privacy Services LTD of Panama City, Panama.
2. The Domain Name and Registrar
The disputed domain name <addictinggams.com> is registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2018. On December 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 17, 2018, the Registrar transmitted by email to the Center its verification response confirming that:
(a) it is the Registrar for the disputed domain name;
(b) the Respondent is listed as the registrant and providing the contact details;
(c) the Respondent registered the disputed domain name with the Registrar on November 30, 2017;
(d) the language of the registration agreement is English;
(e) the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to the disputed domain name.
The Center verified that the Complaint satisfied the formal requirements of the Policy, 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 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 7, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 8, 2019.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on January 17, 2019. 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
According to the Complaint, “Addicting Games” is a multiplayer online browser-based platform in which players can play a variety of online computer and video games through a website to which the domain name <addictinggames.com> resolves. “Addicting Games” has been “live” since at least May 2007.
Since its launch, the website at <addictinggames.com> has received over one billion visits from 500 million unique users. The platform has over 1,100,000 followers on Facebook and over 15,000 followers on Twitter.
The Complainant has become the owner of United States Registered Trademark No. 3,326,790 for ADDICTING GAMES in respect of entertainment services being online computer games and video games in International Class 41. The application for Trademark No. 3,326,790 was filed by Atom Entertainment Inc. on November 1, 2005, and registered on October 30, 2007. It claimed a first use in commerce on May 9, 2005. Atom assigned its rights in the trademark to the Complainant on September 19, 2018.
According to a Domain Tools Domain Name WhoIs History report submitted with the Complaint, the disputed domain name was registered in the name of “Domain Admin, Whois Privacy Corp” with a different registrar before November 30, 2017, becoming registered in the Respondent’s name with the Registrar on that date.
Since its registration in the Respondent’s name, the disputed domain name redirects a user to a rotating list of websites. One of the redirect sites includes pay-per-click links to online games other than the Complainant’s platform. Another of the redirect sites includes what the Complainant describes as a fraudulent Google search. A third redirect site prompts the use to submit personal information to what the Complainant describes as a fraudulent survey. According to the Complainant, a fourth redirect site prompts the visitor to update his or her browser plug-ins by downloading what the Complainant describes as “fraudulent software”.
5. Discussion and Findings
No response has been filed.
Notice of the the Complaint has been sent, however, to the Respondent at the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Respondent has been given a fair opportunity to present its case.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed 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 in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
As noted above, the Complainant has proven ownership in the United States of the registered trademark No. 3,326,790 for ADDICTING GAMES.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system. See, e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.11 . Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Disregarding the “.com” gTLD, therefore, the disputed domain name differs from the Complainant’s trademark only by the omission of the letter “e” immediately before the final “s”. This kind of obvious variation has long been regarded as confusingly similar for the purposes of the Policy as a form of “typosquatting”. See WIPO Overview 3.0, section 1.14.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the 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) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., section 2.1 of the WIPO Overview 3.0.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it in any way.
The disputed domain name is plainly not derived from the Respondent’s name. If there is an entity or person behind the Respondent with a different name, that entity or person has not chosen to reveal themselves nor to claim that the disputed domain name is derived from the entity’s or person’s own name.
As the Complainant points out, the way the disputed domain name is being used does not qualify as a good faith use under the Policy. On the contrary, the pay-per-click page diverting potential users to competing games by reference to a domain name confusingly similar to the Complainant’s trademark is not bona fide. Still less the use of the disputed domain name as some form of phishing exercise or as a vehicle to download malware or “questionable” software. Each of the forms of “rotating use” identified by the Complainant does not qualify as bona fide for the purposes of the Policy.
In these circumstances, the Complainant has established a clear prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not sought to rebut that prima facie case. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see, e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The Complainant’s trademark has been in use since at least 2007. It has also been registered for the relevant services in the United States since 2007. As noted above, the Complainant’s website of the same name as its trademark has had over one billion visitors from over 500 million unique users. The Facebook and Twitter accounts for “Addicting Games” also have very large followings.
While “addicting” and “games” are ordinary English words, the normal or ordinary usage in English would be “addictive games” (if that is what the combination is intended to convey). The omission of the “e” from the disputed domain name also suggests an awareness of the Complainant’s trademark.
Accordingly, it seems highly likely that the Respondent (or whomever is behind the registration of the disputed domain name) was well aware of the Complainant’s trademark when the disputed domain name was registered. The Respondent, not having submitted a Response, has not sought to rebut the Complainant’s allegations of registration and use in bad faith. Given the use subsequently made of the disputed domain name upon registration, therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
Accordingly, the Complainant has established the third requirement under the Policy also.
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, <addictinggams.com>, be transferred to the Complainant.
Warwick A. Rothnie
Date: January 29, 2019