WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fomo Oyun Yazilim Ve Pazarlama Anonim Şirketi v. Sotirios Sarmpezoudis

Case No. D2020-2663

1. The Parties

The Complainant is Fomo Oyun Yazılım ve Pazarlama Anonim Şirketi, Turkey, represented by Erdem Kaya Partners, Turkey.

The Respondent is Sotirios Sarmpezoudis, United Kingdom (“UK”), represented by Ankara Patent Bureau Ltd., Turkey.

2. The Domain Name and Registrar

The disputed domain name <fomo.games> is registered with 1&1 IONOS SE (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on October 13, 2020. On October 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 20, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 20, 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 amendment to the Complaint on October 26, 2020.

The Center verified that the Complaint together with the amendment to 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 October 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 17, 2020. On November 16, 2020, the Respondent requested an extension of time to file a response. On the same day, the Center granted the Respondent an automatic four calendar day extension for response under paragraph 5(b) of the Rules. The Response was filed with the Center on November 21, 2020. Both the Complainant and the Respondent submitted unsolicited supplemental filings on December 4 and 16, 2020, respectively.

The Center appointed Warwick A. Rothnie, Dilek Ustun Ekdial, and Richard G. Lyon as panelists in this matter on December 29, 2020. The Panel finds that it was properly constituted. Each member of 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 joint stock company based in Turkey. According to the Complaint, it was established in October 2018 to develop and publish mobile games. It was registered with the Istanbul Companies Registry on April 11, 2019.

On November 15, 2018, the domain name <fomo.gs> was registered by an Internet services company associated with one of the Complainant’s directors. Complainant’s website resolves from this domain name.

On September 22, 2019, the Complainant published its first game on the Apple App Store, Perfect Peel.

On September 27, 2019, the Complainant applied to register a stylized form of FOMO GAMES as a trademark in Turkey in respect of a range of goods and services in International Classes 9, 35, 41, 42, and 45. This application proceeded to registration on February 4, 2020, Turkish Registered Trademark No. 2019 92290. A feature of this trademark is that it is depicted in colours – fuchsia, pistachio green, and tangerine.

The two directors of the Complainant were also the founders and executives of another Turkish company, Digitouch Dijital Pazarlama ve Medya Anonim Sirketi (“Digitouch”). For some years, Digitouch used a company, Seoetc Ltd, to provide search engine optimization services for its clients. The Respondent is a, or the, director of Seoetc Ltd.

Digitouch terminated the relationship with Seoetc Ltd in April 2016.

Following termination, a dispute arose about unpaid moneys which Seoetc Ltd claims are owing under the contract. Seoetc Ltd has sued Digitouch in Turkey to recover that money. The Court of First Instance in Istanbul has upheld Seoetc Ltd’s claim, ruling that Digitouch owes Seoetc Ltd some GBP 81,807.88. Digitouch has appealed that ruling and that appeal is still pending.

Like the Respondent, Seoetc Ltd is based in London, UK. However, on January 30, 2017, the Respondent also registered another company, Unbd Ajans Dijital Pazarlama Anonim Sirketi (“Ajans”), with the Istanbul Chamber of Commerce. The stated business of this company is the provision of computer consultancy services.

On June 10, 2019, the Respondent registered the disputed domain name. Prior to the Complaint being filed, the disputed domain name resolved to a website which featured:

(a) an obscene or offensive device in the same fuschia, pistachio green, and tangerine colours as used in the Complainant’s trademark;

(b) A “banner” headline “FOMO Games: We’re coming (after you) sooner or later…”

(c) Below the “fold” the heading “Mobile Gaming Made Badly” followed by the text “Build your game with the power of AI & creativity of the crowd”;

(d) Some inactive “boxes” with headings including “Submit”, “Develop”, “Publish”, and “Monetize”. Each box includes some promotional text such us “Our AI engine (GAIMer®) provides multiple storytelling paths and adventure themes” and “Use our platform to quickly develop your MVP and collaborate with other active members”.

(e) After the text “[Re]Think Your Gaming Experience – A real-time development platform powered by AI & the passion of millions”, there is an embedded video of Rick Astley performing “Never Gonna Give You Up”; and

(f) “We’re Coming Soon[er]” followed by “Get Notified” button and the obscene or offensive device.

The first obscene or offensive device and the “FOMO Games” banner are superimposed over a background which is a screenshot from the Black Mirror episode, “Bandersnatch”.

On June 14, 2019, the Respondent created a Facebook page: “FOMO GS” claiming to be “FOMO Mobile Gaming Studio – AI Powered mobile gaming made badly”. The Facebook page features a banner or “masthead” featuring the obscene or offensive device which appears on the website at the disputed domain name and includes the text “we simply suck, we really DO!”.

5. Discussion and Findings

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.

Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.

A. Admissibility of the Supplemental Filings

As noted above, the Complainant has submitted an unsolicited supplemental filing following the filing of the Response. The Respondent has also submitted a supplemental filing objecting to the admissibility of the Complainant’s unsolicited supplemental filing and addressing substantive matters.

Apart from documents requested by the Panel pursuant to paragraph 12 of the Rules, neither the Policy nor the Rules expressly provide for supplemental filings. Their admissibility is therefore in the discretion of the Panel bearing in mind the requirements under paragraph 10 of the Rules to ensure that the proceeding is conducted with due expedition and both parties are treated equally, with each party being given a fair opportunity to present its case.

As proceedings under the Policy are intended to be an expeditious and comparatively inexpensive process, complainants are expected to put forward all arguments and materials in support of their case when submitting their complaints. Unsolicited supplemental filings are discouraged due to the potential to disrupt the nature and expedition of the proceedings. Where unsolicited supplemental filings are admitted, therefore, it is usually because the material corrects some error or addresses something raised in a Response which could not reasonably have been anticipated or which was not otherwise appropriate to deal with until a respondent’s position on a particular point was clear.

In its proposed Supplemental Response, the Respondent objects to the admissibility of the Complainant’s Supplemental Filing.

While the Panel does have reservations that at least some matters which the proposed supplemental filing seeks to address could and should have been addressed in the Complaint, on balance the Panel considers that it is appropriate to admit both proposed supplemental filing into the record. Materials in both filings relevant to the dispute are publicly available and while the Respondent has objected to the admissibility of the proposed supplemental filing, the Respondent has not pointed to any particular prejudice which would flow from admission. Moreover, the proposed supplemental response addresses the substance of the further allegations made in the Complainant’s supplemental filing. Accordingly, the Panel admits the Complainant’s supplemental filing into the record. In the interests of ensuring that both parties are given a fair opportunity to present their respective cases, the Panel also admits the supplemental response into the record.

B. 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 at the date the Complaint was filed, 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.

The Complainant has proven ownership of the registered trademark FOMO GAMES in a stylised form.

The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. 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 here. Such matters, if relevant, may fall for consideration under the other elements of the Policy. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

While the Complainant’s registered trademark is in a stylised form, the words “fomo games” are clearly the core feature of such mark and they are also clearly recognisable in the disputed domain name. That makes the present case distinguishable from the cases Pullmantur, S.A. v. Domain Asset Holdings, LLC, Domain Administrator, WIPO Case No. D2015-0053 and Philip Morris USA Inc. v. Marlboro Beverages / Vivek Singh, WIPO Case No. D2014-1398 referenced by the Respondent. As the Complainant’s trademark remains visually and aurally recognisable within the disputed domain name, therefore, the Panel finds that the disputed domain name is at least confusingly similar to the Complainant’s trademark. See WIPO Overview 3.0, section 1.10.

The Respondent also points out that the Complainant’s trademark was not registered until February 2020, some eight months after the Respondent registered the disputed domain name. The date of registration, however, is not relevant under the first requirement of the Policy which is essentially a standing requirement. There have been many cases where transfer has been ordered where a domain name has been registered with knowledge of a complainant’s adoption of a sign even though the complainant’s rights are inchoate or have not yet crystallised into registered trademark rights when the domain name was registered. The considerations raised by such situations call for an assessment whether the domain name has been adopted in good faith (e.g., by not targeting the complainant’s nascent trademark rights) or otherwise and are better assessed under the second and third requirements of the Policy.

The Respondent further contends that the words “fomo games” are generic or descriptive. The Complainant acknowledges on its webpage that it adopted “fomo” as an acronym for “fear of missing out”. With very few exceptions, none of which is present in this case, the fact that a trademark is registered in a national or multi-national system is determinativeof the necessary trademark rights. It is not part of the Panel’s role to go behind the fact of such registration at this stage of the inquiry under the Policy. See WIPO Overview 3.0, section 1.2. While it could be seen to be an acronym for the expression “fear of missing out”, the Panel is not persuaded “fomo” is directly descriptive of games or gaming in the same way as expressions like “action game” or “online gaming” or “mobile game”. And in any event whether “fomo” is descriptive (or generic) bears, if at all, under the latter two clauses of paragraph 4(a).

Accordingly, the Panel finds that the Complainant has established the requirement under the first limb of the Policy.

C. 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, with the ultimate burden of proof remaining with the Complainant. See e.g., WIPO Overview 3.0, section 2.1.

The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it.

The disputed domain name is not derived from the Respondent’s name or, so far as the evidence in this proceeding shows, any name by which the Respondent was known before he registered the disputed domain name.

These matters are not in dispute between the parties and are typically sufficient to raise the prima facie case calling for rebuttal by the Respondent.

The Complainant goes further. It points to the prior relationship between Digitouch and Seoetc Ltd and, in particular, the litigation between them. The Complainant then contends that the Respondent has registered the disputed domain name to disrupt or tarnish the Complainant’s business.

The Respondent disputes this. He points to the so-called generic or (more accurately) descriptive nature of the expression “fear of missing out” and the character of “fomo” as an acronym for that expression. The Respondent notes he registered the disputed domain name before the Complainant applied for, or registered, its trademark or launched its first game. The Respondent submits that the Complainant has not provided sufficient evidence to establish it has rights in FOMO or FOMO.GS as an unregistered trademark. He contends that the matters advanced by the Complainant are insufficient to establish the Respondent registered the disputed domain name with knowledge of the Complainant or its adoption of the trademark.

The Respondent further contends that he registered the disputed domain name in connection with a good faith business or service. The Respondent states:

“It should also be stated that the Respondent has no direct activity in the mobile app stores (Google Play or App Store) or end game users. The primary functionality is to generate leads by information sent via an online form. The goal is to crowd-source scriptwriters (scenarists) who can provide alternative story paths similar to the mainstream Bandersnatch concept – a Black Mirror special episode on Netflix – which is also the main theme and creative communication of the website inspired by the related characters.” (cross‑references to annexures omitted)

On the other hand, however, the Respondent points to the critical nature of the commentary on the website to which the disputed domain name resolves and contends that it is a fair use in exercise of its rights of free speech under the Policy.

A number of matters taken together lead the Panel to reject the Respondent’s attempted rebuttal of the Complainant’s prima facie case.

First, insofar as the Respondent is claiming to be providing a “crowd-sourcing” service in good faith from the website, the Respondent has presented the website only. The Respondent has not provided evidence of any dealings with third parties such as suppliers or users or customers to corroborate the claimed use.

Second, the Respondent’s claim that it is using the disputed domain name in connection with the exercise of its free speech rights under the Policy to criticise the Complainant and the quality of its games is inconsistent with the Respondent’s claim that he adopted the disputed domain name in connection with a good faith “crowd-sourcing” activity or service.

Third, the claimed fair use as a criticism site is also inconsistent with the Respondent being unaware of the Complainant and its trademark. No critic can honestly deny knowledge of the subject of the criticism.

Fourth, the Panel is not in any position to assess the merits of the dispute between Seoetc Ltd and Digitouch. Nor is that any part of the Panel’s function under the Policy. The Panel’s role is limited solely to addressing the matters set out in paragraph 4(a) of the Policy. In that connection, it would be most unusual for a domain name to qualify as a legitimate fair use under the Policy where the domain name consisted solely of a complainant’s trademark and did not include any qualifier to indicate clearly that the holder of the domain name is not affiliated with, or intends to be critical of, the trademark owner. See e.g.,WIPO Overview 3.0 , section 2.6.2 . Whatever the merits of Seoetc Ltd’s claims, therefore, the dispute between Seoetc Ltd and Digitouch does not confer on the Respondent rights or legitimate interests in the disputed domain name.

Fifth, as already noted, the Panel does not accept that “fomo”, even as an acronym for “fear of missing out”, is so directly descriptive of games and gaming as to naturally or readily suggest itself for adoption by someone in the gaming business, i.e., it is not generic for gaming or related services.

Sixth, and quite tellingly, the colour scheme adopted by the Respondent on the website to which the disputed domain name resolves is the same colour scheme as that adopted by the Complainant in its trademark: fuchsia, pistachio green, and tangerine orange. Moreover, as the Complainant points out, fuchsia is the predominant or main colour of both the Complainant’s trademark and the Respondent’s website.

Seventh, the Respondent also uses the same colour scheme on his Facebook page, “@fomo_gs”. The Panel notes also that the Respondent’s Facebook page uses the same designation, “fomo_gs” as the domain name used by the Complainant.

Eighth, the Complainant claims that it first posted its trademark with its fuchsia, pistachio green, and tangerine orange colour scheme on its Facebook page on June 12, 2019. That is two days after the Respondent registered the disputed domain name. It is also two days before the Respondent created his Facebook page “@fomo_gs” declaring “we suck at games we really DO!” in the same colour scheme as adopted by the Complainant. The Respondent points out that the date of the post could be edited by the account holder, but does not provide evidence that such editing occurred here.

It seems unlikely that two independent parties (even putting aside that the parties here have some history) would arrive at the same term, “fomo” (or “fomo.gs” / “fomo_gs”) for a games-related business. It seems even more unlikely that they would do so and also adopt the same particular combination of fuchsia, pistachio green, and tangerine orange colours for their trade dress.

Ninth, the parties, or at least the directors of the Complainant and the Respondent, have a prior history which ended acrimoniously, leading to litigation. As the Respondent points out, the litigation has resulted in the Court of First Instance finding in favour of the Respondent’s company. However, the litigation is even now not finally resolved, with an appeal still pending.

Tenth, there appears to have been opportunity for the Respondent to have discovered the Complainant and its use of the trademark before the Respondent registered the disputed domain name.

The Complainant was registered in the Istanbul Companies Registry two months before the Respondent registered the disputed domain name. That is a publicly available register which can be searched by a variety of criteria including the company name or the names of the directors and shareholders.

The domain name, <fomo.gs>, which the Complainant uses was registered by an associated company in late 2018. The Complainant claims it has been using that domain name from before the Respondent registered the disputed domain name. While the Respondent notes that the Wayback Machine at <archive.org> did not crawl and store the website at <fomo.gs> until August 2020, the Complainant points to a Google search showing the Complainant published its Terms and Conditions of Use on May 3, 2019; that is a month before the Respondent registered the disputed domain name.

The Respondent points out the date in the Google search is part of the title meta-data and not part of the data automatically generated by the Google algorithms. That is, the title meta-data can be edited by the user. However, the Respondent has not been able to provide any evidence that the Complainant has in fact edited the date.

The Facebook page for the Complainant’s account, “@fomogames”, states the page was first created on April 1, 2019. And, as already noted, the Complainant posted its trademark in its particular colour scheme on that page two days before the Respondent created his own Facebook page, “@fomo_gs”, using the same colour scheme.

The Panel consider that these matters, taken together, lead to a finding that the Respondent is not using the disputed domain name in connection with a good faith offering of goods or services or a legitimate or fair use as he claims and so has not rebutted the prima facie case made out by the Complainant. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy.

D. 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.

For the reasons set out in section 5C, the Panel has found that the Respondent registered the disputed domain name with knowledge of the Complainant and its adoption of the trademark. The only use which has been made of the disputed domain name is to denigrate the Complainant and its services.

Bearing in mind the Respondent embarked on that denigration on his Facebook page under the name “Fomo GS” only a few days after registering the disputed domain name, the Panel infers that was the Respondent’s primary purpose in registering the disputed domain name.

As also discussed in section 5C, the nature of the disputed domain name consisting solely of the Complainant’s trademark without any qualifier indicating the true nature of the site or relationship to the Complainant did not constitute legitimate fair use under the Policy.

The Panel finds therefore that the disputed domain name was registered in bad faith. The way the disputed domain name has been used to denigrate the Complainant and its products in the absence of rights or legitimate interests in the disputed domain name – and also noting the prior history between the parties – also constitutes use of the disputed domain name in bad faith.

Accordingly, the Complainants have established all three requirements under the Policy.

6. 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, <fomo.games>, be transferred to the Complainant.

Warwick A. Rothnie
Presiding Panelist

Dilek Ustun Ekdial
Panelist

Richard G. Lyon
Panelist
Date: January 8, 2021