WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sybo ApS v. Whois Privacy, Private by Design, LLC / Hoang Trong Thach, Hoang Trong Thach
Case No. D2019-1570
1. The Parties
The Complainant is Sybo ApS, Denmark, represented by Løje, Arnesen & Meedom LLP, Denmark.
The Respondent is Whois Privacy, Private by Design, LLC, United States of America (“United States”) / Hoang Trong Thach, Hoang Trong Thach, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <subwaysurfersgameplay.net> (the “Domain Name”) is registered with Porkbun LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 4, 2019. On July 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 9, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 12, 2019.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 1, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 5, 2019.
The Center appointed Martin Schwimmer as the sole panelist in this matter on August 9, 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
The Compainant, Sybo ApS, is a Danish computer game developer. It launched a series of computer games under the name SUBWAY SURFERS in 2012. It owns various trademark registrations for SUBWAY SURFERS or SUBWAY SURFERS and design, the oldest registration bearing a filing date of January 10, 2013 and a registration date of May 8, 2019 (European Union Trademark Registration No. 011478831). The Domain Name was registered on May 24, 2014. The Domain Name resolves to a website purporting to offer online or downloadable versions of video games published by the Complainant and by other game developers.
5. Parties’ Contentions
The Complainant launched the SUBWAY SURFERS game in May 2012. The games are available on various computer and mobile platforms. The games have been downloaded an estimated 2.8 billion times. The Complainant claims 20 million active users worldwide. The game was the second most downloaded title worldwide in the year and half period prior to registration of the Domain Name. At various times since, it has been the most downloaded mobile game in the world.
The Complainant uses and has registered the SUBWAY SURFERS trademark in various jurisdictions. The SUBWAY SURFERS trademark is distinctive and well known, and was well known at the time the Domain Name was registered.
The Domain Name incorporates the Complainant’s trademark in its entirety, with the addition of the descriptive words “game” and “play”.
The Respondent is not authorized by nor affiliated with the Complainant in any manner. The Respondent’s website purports to promote games originating with the Complainant. The website reproduces the Complainant’s distinctive logo, as well as the Complainant’s copyrighted materials, in the form of screenshots and animations from the Complainant’s games.
The unauthorized infringing use of the Complainant’s trademarks and copyrighted art to promote unauthorized versions of the Complainant’s games, as well as the games of its competitors, is not a bona fide offering of goods and services.
The Respondent adopted the Domain Name at a time when the Complainant’s games were already successful and well known. The unauthorized promotion of the Complainant’s games (as well as the games of third parties who compete with the Complainant), is per se illegitimate behavior. Such illegitimate behavior is clearly in bad faith, and was undertaken to disrupt the business of the Complainant for commercial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademark SUBWAY SURFERS. It has documented prior use of the SUBWAY SURFERS trademark, and has proffered evidence of ownership of numerous trademark registrations, such as European Union Trademark Registration No. 015437742 for SUBWAY SURFERS.
The test for confusing similarity involves the comparison between the trademark and the Domain Name. Here, the Domain Name incorporates the Complainant’s trademark in its entirety. The addition of the descriptive words “game” and “play” does not avoid a finding of confusing similarity, and in fact affirms the connection with the Complainant’s trademark. For the purpose of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain “.net”.
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register a domain name containing its trademark or otherwise make use of its mark. Based on the evidence, the Respondent is not affiliated with nor related to the Complainant in any way. As documented by the Complainant, the website at the Domain Name uses the Complainant’s trademark, as well as the Complainant’s distinctive logo, to allegedly offer online or downloadable versions of the Complainant’s games, as well as those of competitors. The website at the Domain Name offers links to other websites which offer many games from many publishers. This is not a bona fide offering nor a legitimate noncommercial or fair use of the Domain Name, within the meaning of the Policy.
The Panel finds that the Complainant has made out an un-rebutted prima facie case, and therefore the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
As the mark SUBWAY SURFERS is arbitrary and distinctive in relation to computer games, and as the Complainant’s games were already a worldwide success by May 2014, the Respondent was clearly aware of the Complainant’s trademark and its games when the Respondent registered the Domain Name.
The Panel finds the Respondent registered and is using the Domain Name with the intention of confusing Internet users into believing that the Domain Name is associated with the Complainant. The use of the Domain Name, as well as the Complainant’s trademark and distinctive logo, to offer unauthorized versions of the Complainant’s games and those of its competitors, puts beyond doubt that the Domain Name has been registered to take unfair advantage of the goodwill associated with the Complainant’s trademark.
The Panel may also make negative inferences as to bad faith supported by the fact that the Respondent has not responded to the Complainant’s contentions, that the Respondent attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion. Such registration and use of the Domain Name falls into paragraph 4(b)(iv) of the Policy.
For the reasons set out above, the Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of paragraph 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 Domain Name <subwaysurfersgameplay.net> be transferred to the Complainant.
Date: August 10, 2019