WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Gameloft S.E. v. Withheld for Privacy EHF / Hanh HoNguyen

Case No. D2021-3184

1. The Parties

The Complainant is Gameloft S.E., France, represented internally.

The Respondent is Withheld for Privacy EHF, Iceland / Hanh HoNguyen, Viet Nam.

2. The Domain Names and Registrar

The disputed domain names <dungeonhunter.net> and <dungreonhunter.net> are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2021. On September 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 27, 2021, 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 6, 2021, 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 October 7, 2021.

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 October 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 3, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 4, 2021.

The Center appointed Tuukka Airaksinen as the sole panelist in this matter on November 23, 2021. 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 European company registered in Paris, France. It is a publisher and developer of digitally distributed video games and was founded in 1999. The Complainant is the owner of the trademark DUNGEON HUNTER, registered in various jurisdictions, for example as a European Union Trade Mark No. 13873203 on July 15, 2015. The Complainant also uses the domain name <dungeon-hunter.com>, registered on August 2, 2010.

The disputed domain names were registered on August 18, 2021.

5. Parties’ Contentions

A. Complainant

The disputed domain names are identical or very similar to the Complainant’s trademark as the disputed domain name <dungeonhunter.net> uses “dungeonhunter” and the disputed domain name <dungreonhunter.net> is merely a misspelled version of it.

The Respondent has nor rights or legitimate interests to the disputed domain names. The disputed domain names resolve to almost identical websites using the design elements of the Complainant’s website in a deceiving way in order to sell non-fungible tokens (NFT) to the users.

The disputed domain names resolve to almost identical, but fraudulent, websites with those of the Complainant pretending to belong to the Complainant and to attain commercial benefit from the confusion.

B. Respondent

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

6. Discussion and Findings

In order to obtain the transfer of a domain name, a complainant must prove the three elements of paragraph 4(a) of the Policy, regardless of whether the respondent files a response to the complaint or not. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The second element a complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. The third element a complainant must establish is that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires that the Complainant establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark.

According to section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “The applicable Top Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”.

Furthermore, “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements”. See section 1.8 of the WIPO Overview 3.0.

The disputed domain name <dungeonhunter.net> is identical with the Complainant’s trademark. The disputed domain name <dungreonhunter.net> is otherwise identical with the Complainant’s trademark, with the exception that a second letter “r” is also included in the disputed domain name. This does not prevent the confusing similarity between the Complainant’s trademark and the disputed domain name.

This means that the disputed domain names are identical or confusingly similar with the Complainant’s trademark and hence the first element of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests to the disputed domain names.

It is widely accepted among UDRP panels that once a complainant has made a prima facie showing indicating the absence of the respondent’s rights or legitimate interests in a disputed domain name the burden of production shifts to the respondent to come forward with evidence of such rights or legitimate interests. If the respondent fails to do so, the complainant is deemed to have satisfied the second element of the Policy. See section 2.1 of the WIPO Overview 3.0.

The Complainant has credibly submitted that the Respondent is neither affiliated with the Complainant in any way nor has it been authorized by the Complainant to use and register the disputed domain names, that the Respondent has no prior rights or legitimate interests in the disputed domain names, and that the Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain names and is not commonly known by the disputed domain names in accordance with paragraph 4(c)(ii) of the Policy.

Moreover, the Panel finds that the nature of the disputed domain name <dungeonhunter.net> carries a high risk of implied affiliation with the Complainant’s trademark. See section 2.5.1 of the WIPO Overview 3.0.

Accordingly, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. Considering also the Panel’s findings below, the Panel finds that there are no other circumstances that provide the Respondent with any rights or legitimate interests in the disputed domain names. Therefore, the Panel finds that the second element of the Policy is fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant establish that the disputed domain names have been registered and are being used in bad faith. Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that [the respondent has] registered or has acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is 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) [the respondent has] 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) [the respondent has] registered the domain name primarily for the purpose of disrupting the business or competitor; or

(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location.”

Considering that the Complainant’s trademark is identical with and confusingly similar to the disputed domain names, and that the disputed domain names resolve to a website which is clearly an imitation of the Complainant’s website, it is evident that the Respondent must have been aware of the Complainant’s trademark when registering the disputed domain names. Accordingly, the Panel finds that the disputed domain names were registered in bad faith.

The disputed domain names resolved to a website pretending to be the Complainant’s website or affiliated with it. The Respondent has clearly used the disputed domain names to create an image that it is the Complainant or affiliated with it. The Respondent is furthermore using the design elements of the Complainant’s website in a deceiving way in order to sell non-fungible tokens (NFT) to the users.

It is therefore evident that the Respondent has registered the disputed domain names to intentionally attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation, or endorsement of the Respondent’s website.

Therefore, the Panel finds that the third element of the Policy is fulfilled.

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 <dungeonhunter.net> and <dungreonhunter.net> be transferred to the Complainant.

Tuukka Airaksinen
Sole Panelist
Date: December 8, 2021