WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Skydance Productions, LLC v. Taiwo Adelanre
Case No. D2021-3681
1. The Parties
The Complainant is Skydance Productions, LLC, United States of America (“United States”), represented by Hanson Bridgett LLP, United States.
The Respondent is Taiwo Adelanre, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <skydancegames.com> is registered with OwnRegistrar, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. Also, on the same day, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 November 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 2, 2021.
The Center appointed Antony Gold as the sole panelist in this matter on December 8, 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 media company based in Santa Monica, California, United States. It has been responsible for the production of many well-known feature films including Terminator Genisys, Mission Impossible – Rogue Nation and True Grit. It also has a gaming division, Skydance Interactive, which creates and publishes a range of virtual reality and other video games.
The Complainant owns trade and service marks to protect its SKYDANCE trading style, including, by way of example only, United States trade and service mark, registration number for 6053525, for SKYDANCE in class 9, registered on May 12, 2020. Additionally, it has trade and/or service marks for SKYDANCE PRODUCTIONS, SKYDANCE TELEVISION, and SKYDANCE INTERACTIVE. The Complainant also owns and operates the domain name <skydance.com>, which resolves to a website promoting its business, as well as other domain names incorporating its SKYDANCE mark.
The disputed domain name was registered on October 11, 2021. It does not resolve to an active website. In circumstances more particularly set out below, the Complainant says that the disputed domain name has been used to send fraudulent emails to third parties.
5. Parties’ Contentions
The Complainant says that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which it has rights. It refers to its SKYDANCE mark and says that the disputed domain name is identical to that mark, save that the descriptive term “games” has been added in order to trick third parties into believing that the Respondent is associated with the Complainant. According to the Complainant, this, in itself, supports a finding of confusing similarity.
The Complainant says that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It contends it is not commonly known as “Skydance Games” nor could it have developed any common-law trade mark rights in the Complainant’s SKYDANCE mark, nor has it been licensed or permitted by the Complainant to use its mark. It claims that since the date of registration of the disputed domain name, the Respondent has been using it to send email correspondence to third parties in an attempt to trick them in to believing it is the Complainant so that it can defraud them and obtain confidential information such as bank numbers. For example, the Complainant says that the Respondent has been sending emails from addresses such as “[...]@skydancegames.com”, which include the Complainant’s legitimate contact information and phone numbers and which promise employment or purported payments in return for “office supplies”. According to the Complainant, this does not amount to use of the disputed domain name in connection with a bona fide offering of goods and services, nor a noncommercial or fair use of the disputed domain name.
Lastly, the Complainant says that the disputed domain name was registered and used in bad faith. It contends that the disputed domain name was registered in a deliberate attempt to deceive third parties as to the Respondent’s identity by sending fraudulent and phishing emails designed to appear as communications from, and offers of employment with, the Complainant. It also says that registration and use of a domain name for the purposes of impersonating the trade mark owner comprises bad faith registration and use, citing CareerBuilder, LLC v. Stephen Baker, WIPO Case No. D2005-0251. Moreover, the Complainant contends that the use of a deceptive domain name for an email scam is sufficient to establish that a domain name has been registered and is being used in bad faith, citing Beam Suntory Inc. v. Ken Robert, WIPO Case No. D2019-3027.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission, as it considers appropriate.
Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark 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 Complainant has provided details of its trade mark registration for SKYDANCE, as set out above, which establish its rights in this mark.
As a technical requirement of registration, the Top-Level Domain, that is “.com” in the case of the disputed domain name, is typically disregarded when assessing confusing similarity. The disputed domain name comprises the Complainant’s SKYDANCE trade mark in its entirety, followed by the word “games”. This additional term does not prevent the disputed domain name from being found confusingly similar to the Complainant’s mark. As explained at section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “Where the relevant trade mark 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 Complainant’s SKYDANCE mark is recognizable within the disputed domain name and the Panel accordingly finds that it is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides, without limitation, examples of circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used, or made demonstrable preparations to use, the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name or a name corresponding to the domain name, or if a respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue.
Whilst the Complainant has not provided copies of the phishing emails which it says have been sent by the Respondent using email addresses associated with the disputed domain name, it has submitted a declaration by the Complainant’s outside counsel, made under penalty of perjury, which provides the date when the Respondent began sending the emails (being October 11, 2021), a brief summary of their content, and one of the email addresses used by the Respondent. The declaration also explains that a number of recipients of the Respondent’s emails have contacted the Complainant to enquire whether they were genuine. In view of the serious nature of the Complainant’s allegations, it would have been preferable for the Complainant to have provided examples of the emails referred to or, alternatively, an explanation as to why they could not be provided; see section 2.13.2 of the WIPO Overview. However, having regard to the level of detail provided by the Complainant’s counsel, coupled with the fact that the Respondent has chosen not to come on record to challenge the Complainant’s assertions, the Panel finds that the Respondent has used the disputed domain name in order to send phishing emails and engage in other fraudulent activity and that this does not comprise bona fide use of the disputed domain name. In this respect see, for example, Werfenlife S.A. v. Sean Hamilton, WIPO Case No. D2020-3257.
There is no evidence to indicate that the Respondent has been commonly known by the disputed domain name and the second circumstance set out at paragraph 4(c) of the Policy is therefore inapplicable. Nor is the Respondent making a legitimate noncommercial use of the disputed domain name and its characteristics are strongly suggestive of an affiliation or connection with the Complainant, which prevents its use from being considered fair.
The Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and the burden of production shifts to the Respondent. In the absence of any response from the Respondent to the Complaint, it has failed to satisfy that burden. The Panel accordingly finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
As at the date of registration of the disputed domain name, the Complainant had been established for approximately 15 years and had been associated with the production of a number of well-known films as well as video games. The disputed domain name comprises the Complainant’s mark in full and adds the word “games”, which is descriptive of the nature of the products provided by the Complainant through its Skydance Interactive gaming division. The use of the disputed domain name to send phishing emails to third parties immediately after it was registered establishes that the Respondent was aware of the Complainant as at the date of registration of the disputed domain name and that it was registered by the Respondent so that it could profit unfairly from the confusing similarity between the disputed domain name and the Complaint’s SKYDANCE mark. The Respondent’s registration of the disputed domain name was therefore in bad faith; see Beam Suntory Inc. v. Ken Robert (supra).
Whilst the disputed domain name does not resolve to an active website, use of a domain name for purposes other than to host a website may constitute bad faith; see section 3.4 of the WIPO Overview 3.0. In particular, use of the disputed domain name for the purpose of sending phishing emails, amounts to bad faith use; see for example, Sarepta Therapeutics, Inc. v. Domain Privacy Service FBO Registrant, The Endurance International Group, Inc. / Name Redacted, WIPO Case No. D2020-3239. The Panel accordingly finds that the disputed domain name was registered and is being used in bad faith.
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, <skydancegames.com>, be transferred to the Complainant.
Date: December 22, 2021