WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Scottgames, LLC v. Domain Administrator, PrivacyGuardian.org /

Thuan Tran / Kinh Doanh

Case No. D2020-0339

1. The Parties

The Complainant is Scottgames, LLC, United States of America (“United States”), represented by Nissenbaum Law Group, LLC, United States.

The Respondent is Domain Administrator, PrivacyGuardian.org, United States / Thuan Tran, Viet Nam / Kinh Doanh, Viet Nam.

2. The Domain Names and Registrar

The disputed domain names <fivenightsatfreddysplay.com> and <fivenightsfreddys.com> are registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2020. On February 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 13, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 14, 2020, 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 February 19, 2020.

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 February 26, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 17, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 19, 2020.

The Center appointed Jane Seager as the sole panelist in this matter on March 27, 2020. 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 limited liability company incorporated in Texas, United States. The Complainant is owned and operated by Mr. Scott Cawthon. Mr. Cawthon is the creator, author and intellectual property owner of a number of computer games and mobile applications titled “Five Nights at Freddy’s”, “FNaF World”, and others. Five Nights at Freddy’s is a point-and-click survival horror video game, set in a fictional pizza restaurant.

For use in connection with Mr. Cawthon’s video game software products, Mr. Cawthon has registered, inter alia, the following trademarks:

- United States Trademark Registration No. 4755325, FIVE NIGHTS AT FREDDY’S, registered on June 16, 2015; and

- United States Trademark Registration No. 4855473, FIVE NIGHTS AT FREDDY’S, registered on November 17, 2015.

The Complainant acts as the contracting entity through which Mr. Cawthon’s intellectual property is licensed to third parties. Mr. Cawthon has granted the Complainant a license for the copyright and trademark rights related to the Five Nights franchise, including, without limitation, the “FIVE NIGHTS” group of trademarks. With Mr. Cawthon’s approval, the Complainant is entitled to take action to prevent misuse of Mr. Cawthon’s intellectual property rights.

The disputed domain name <fivenightsatfreddysplay.com> was registered on June 30, 2016. The disputed domain name <fivenightsatfreddysplay.com> resolves to a website titled “Five Nights At Freddy’s”, displaying a banner containing a character from the Complainant’s gameplay. The website further includes a description of the Complainant’s Five Nights at Freddy’s video game, and links to free-to-play versions of the Complainant’s video games, as well as to unrelated third-party video games. The website includes a Pay-Per-Click (“PPC”) banner advertisement to a third-party video game website.

The disputed domain name <fivenightsfreddys.com> was registered on October 24, 2016. The disputed domain name <fivenightsfreddys.com> resolves to a website also displaying links to what appear to be free-to-play versions of the Complainant’s video games, together with unrelated third-party video games, and displays several PPC advertising links to unrelated third-party products.

5. Parties’ Contentions

A. Complainant

The Complainant asserts rights in its FIVE NIGHTS AT FREDDY’S trademark. The Complainant submits that the disputed domain names are confusingly similar to its trademark. The Complainant argues that the disputed domain names incorporate its FIVE NIGHTS AT FREDDY’S trademark. The Complainant asserts that the addition of the term “play” to its trademark in the disputed domain name <fivenightsatfreddysplay.com> increases the likelihood of confusion with its trademark, as it is analogous to adding the word “download” or “game” to a game-based trademark. With regard to the disputed domain name <fivenightsfreddys.com>, the Complainant submits that it incorporates a dominant portion of its FIVE NIGHTS AT FREDDY’S trademark, only removing the word “at”, thereby causing a likelihood of confusion with the disputed domain name. The Complainant asserts that such a misspelling of its trademark is an example of typosquatting.

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant notes that its trademark registrations predate the registration of the disputed domain names, and states that neither the Complainant nor Mr. Cawthon has granted the Respondent any licence or other authorization to use its trademarks. The Complainant submits that the Respondent is not making any bona fide use of the disputed domain names. Rather, the Respondent’s sole use of the disputed domain names has been in connection with the infringement of the Complainant’s intellectual property rights. The Complainant further asserts that there is no evidence to suggest that the Respondent is commonly known by the disputed domain names, nor is the Respondent making any legitimate noncommercial or fair use of the disputed domain names. In this regard, the Complainant asserts that the Respondent has made use of the Complainant’s trademarks in the disputed domain names to promote unauthorized and/or infringing free, playable versions of the Complainant’s games, which the Complainant offers for sale.

The Complainant submits that the disputed domain names were registered and are being used in bad faith. The Complainant states that neither it nor Mr. Cawthon has authorized the registration of the disputed domain names, which incorporate the Complainant’s trademark. The Complainant asserts that the disputed domain names are being used to promote unauthorized and/or infringing versions of the Complainant’s games. The Complainant argues that substandard, derivative versions of the Complainant’s games are evidence of the Respondent’s bad faith. The Complainant argues that the Respondent’s use of a privacy service to conceal its identity in an attempt to avoid the Complainant’s efforts to enforce its intellectual property rights is further evidence of the Respondent’s bad faith. The Complainant also notes that the Respondent was previously found to have registered domain names comprising its trademarks, and submits that the Respondent has engaged in a bad faith pattern of domain name registration. The Complainant notes the presence of PPC links on the Respondent’s websites, and submits that by using the disputed domain names in the manner described above, the Respondent has intentionally attempted to attract Internet users to its websites by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites.

The Complainant requests transfer of the disputed domain names.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Procedural Matter: Consolidation of the Respondents

The Panel notes that the Complaint was filed against two nominally-distinct underlying registrants. As stated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2, “[w]here a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.”

The Complainant submits that it is justified in filing a single consolidated Complaint on the basis that the disputed domain names are subject to common control. In this regard, the Complainant notes that the disputed domain names were both registered with the same Registrar making use of the same privacy service. The Complainant argues that the disputed domain names are being used in a nearly identical fashion, comprising close variations of its FIVE NIGHTS AT FREDDY’S trademark, and resolving to websites that share substantially the same structure, design and purpose of generating advertising revenue by attracting Internet users to websites that provide unauthorized and/or infringing versions of the Complainant’s video games.

Notwithstanding the fact that the websites at the disputed domain names differ somewhat from one another in their “look and feel”, the Panel accepts the Complainant’s arguments in support of consolidation, and finds, on balance, that when taken together the above factors support an inference that the individuals behind the disputed domain names are acting in concert. Neither underlying registrant has come forward with any evidence to suggest otherwise.

The Panel considers that it would be fair and equitable to all Parties to allow the Complaint to proceed on a consolidated basis. The underlying registrants of the disputed domain names are referred to collectively as the “Respondent” throughout this decision.

6.2. Substantive Findings

In order to prevail, a complainant is required to prove, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the Policy, namely:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the FIVE NIGHTS AT FREDDY’S trademark, the registration details of which are provided in the factual-background section above.

The disputed domain name <fivenightsatfreddysplay.com> incorporates the Complainant’s FIVE NIGHTS AT FREDDY’S trademark in its entirety together with the term “play”, and omitting the apostrophe in the word “Freddy’s”, such punctuation being incapable of representation in a domain name per se. The Panel finds that the Complainant’s trademark is immediately recognizable in the disputed domain name <fivenightsatfreddysplay.com>, and that the addition of the term “play” does not prevent a finding of confusing similarity; see WIPO Overview 3.0, section 1.8.

The disputed domain name <fivenightsfreddys.com> comprises the dominant features of the Complainant’s FIVE NIGHTS AT FREDDY’S trademark, simply omitting the word “at”, and omitting the apostrophe in the word “Freddy’s”. The Panel finds that the Complainant’s trademark is also readily recognizable within the disputed domain name <fivenightsfreddys.com>; see WIPO Overview 3.0, section 1.7.

The Panel finds the disputed domain names to be confusingly similar to the Complainant’s FIVE NIGHTS AT FREDDY’S trademark. The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel finds that the Respondent’s use of the disputed domain name as described above does not amount to a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. The Panel notes that the Respondent is not a licensee of the Complainant, nor has the Respondent been authorized to make use of the Complainant’s trademarks in a domain name or otherwise. The Complainant has provided evidence of the Respondent making available unauthorized or derivative versions of the Complainant’s video games for free on the websites to which the disputed domain names resolve. Prior UDRP panels have categorically held that the use of a domain name for illegitimate purposes, such as impersonation or passing off, can never confer rights or legitimate interests on a respondent; see WIPO Overview 3.0, section 2.13. Moreover, the websites at the disputed domain names make use of the Complainant’s trademark alongside third-party games, creating the misleading impression that the games advertised therein are in some way connected to the Complainant, when they are not.

There is no evidence that the Respondent is commonly known by the disputed domain names in accordance with paragraph 4(c)(ii) of the Policy. The names of the underlying registrants, “Thuan Tran” and “Kinh Doanh”, bear no resemblance to the disputed domain names whatsoever. There is no evidence of the Respondent having acquired trademark rights for “five nights at freddys”, “five nights freddys”, or any variation thereof.

The Panel does not consider the Respondent’s use of the disputed domain names to amount to a legitimate noncommercial or fair use of the disputed domain names as contemplated by paragraph 4(c)(iii) of the Policy. It can be inferred that the Respondent intends to profit from the use of the disputed domain names by generating click-through revenue from the PPC links displayed on both of the Respondent’s websites. Even in the absence of such PPC links, the Respondent’s use of the disputed domain names to host websites making available unauthorized and/or derivative versions of the Complainant’s games would not support a finding that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.

The Respondent has not produced any evidence to rebut the Complainant’s assertions under this element of the Policy.

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

According to the Complainant, its suite of “Five Nights” games have been marketed and sold around the world, with over 900,000 sales and downloads to personal computers in North America, and over 9 million downloads of its applications to mobile devices. The registration of the Complainant’s trademarks predates the registration of the disputed domain names by over a year.

It is clear, from the use to which the disputed domain names have been put, as described above, that the Respondent registered the disputed domain names with full knowledge of the Complainant’s trademarks. The evidence on record suggests that the Respondent registered the disputed domain names comprising the Complainant’s trademark, without authorization from the Complainant, with a view to providing unauthorized and/or derivative versions of the Complainant’s video games on the websites to which the disputed domain names resolve, as well as to generate click-through revenue from PPC links to third-party products and services on the Respondent’s websites.

The Panel further notes that the Respondent “Thuan Tran” was named as a respondent in a previous UDRP case filed by the Complainant; see Scottgames, LLC v. Domain Administrator, PrivacyGuardian.org / Kris Miranda, DTDAFF / Dang Ngo / Thuan Tran / Wiley Prince, DTD / Duong Ngo Huynh, DTD SOFTWARE CO., LTD / Fidel Vance, Spiritual, WIPO Case No. D2016-2372, involving 20 domain names all found to have targeted the Complainant’s trademarks. In light of this, the Panel considers that the Respondent has engaged in a pattern of trademark-abusive domain name registration targeting the Complainant.

The Panel finds that the disputed domain names were registered in bad faith.

The Respondent has used the disputed domain names to provide unauthorized and/or derivative versions of the Complainant’s video games, alongside unrelated third-party games. Prior UDRP panels have found that given that the use of a domain name for per se illegitimate activity can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith; see WIPO Overview 3.0, section 3.1.4. Furthermore, the presence of links to unrelated third-party games on the Respondent’s websites creates a misleading impression that such games are provided by or otherwise endorsed by the Complainant.

As described above, the Respondent has also included PPC links on the websites to which the disputed domain names resolve from which it presumably derives click-through revenue. The Panel finds that by registering the disputed domain names that are confusingly similar to the Complainant’s FIVE NIGHTS AT FREDDY’S trademark, and by displaying unauthorized and/or derivative versions of the Complainant’s video games on the websites to which the disputed domain names resolve, together with PPC links to third-party products, the Respondent has attempted to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the goods and services advertised therein, in bad faith pursuant to paragraph 4(b)(iv) of the Policy.

The Panel finds that the disputed domain names were registered and are being used in bad faith. The Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

7. 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 names <fivenightsatfreddysplay.com> and <fivenightsfreddys.com> be transferred to the Complainant.

Jane Seager
Sole Panelist
Date: April 8, 2020