WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gameloft S.E. v. Super Privacy Service Ltd c/o Dynadot / esra tuncay
Case No. D2021-4041
1. The Parties
1.1 The Complainant is Gameloft S.E., France, represented internally.
1.2 The Respondent is Super Privacy Service Ltd c/o Dynadot, United States of America (“United States”) / esra tuncay, Turkey.
2. The Domain Name and Registrar
2.1 The disputed domain name <gameloftforbrands.com> (the “Domain Name”) is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2021. At that time the publicly available WhoIs details for the Domain Name identified the Registrar’s privacy service, Super Privacy Service Ltd, as the registrant of the Domain Name. On December 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 6, 2021, the Registrar transmitted by email to the Center its verification response disclosing underlying registrant and contact information for the Domain Name. The Center sent an email communication to the Complainant on December 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 December 7, 2021.
3.2 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”).
3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 29, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 30, 2021.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on January 11, 2022. 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
4.1 The Complainant is a company incorporated under European Union law with its registered office in Paris, France. Its business was founded in 1999 and it is an international publisher and developer of digitally distributed video games. The Complainant has released more than two hundred games, with several having been downloaded by millions of players.
4.2 The Complainant also offers business to business services under the “Gameloft For Brands” name. Those services involve content and advertising strategies for business based on the Complainant’s experience and know-how in the gaming industry. To date, it has delivered more than 10,000 campaigns in over 40 countries around the world.
4.3 The Complainant is the owner of various registered trade marks around the world that comprise or incorporate the name “Gameloft”. They include:
(i) European Union registered trade mark no. 2473767 for GAMELOFT as a word mark filed on November 22, 2001 and registered on March 13, 2006 in classes 9, 16, 28, 35, 38, 41 and 42; and
(ii) United States registered trade mark no. 2474984 for GAMELOFT as a typed drawing filed on June 21, 1999 and registered on August 7, 2001 in class 38.
4.4 The Complainant is also the applicant of the following:
(i) United States registered trade mark application no. 97110696 filed on November 5, 2021 for GAMELOFT FOR BRANDS as a standard character mark in classes 9 and 35, filed on a 1B “intent to use” basis.
(ii) European Union trade mark application no. 018594569 filed on November 8, 2021 for GAMELOFT FOR BRANDS as a word mark in classes 9, 28, 35, 38, 41 and 42.
4.5 The Complainant is the owner of various domain names that are used in connection with its business activities, including <gameloft.com>, which was registered on April 8, 1999. Its “Gameloft For Brands” services are currently being marketed from the webpage at “www.gameloft.com/for-brands/”.
4.6 The Domain Name was registered on November 8, 2021. It has been used since that date to display a Sedo.com web page offering the Domain Name for sale for the price of USD 1288.
4.7 The registration details for the Respondent provided by the Registrar would suggest that the Respondent is an individual based in Turkey, although whether the name and address given are real is open to question.
5. Parties’ Contentions
5.1 The Complainant describes its business, trade marks and domain names and the Sedo offers for sale of the Domain Name.
5.2 The Complainant contends that the Domain Name is identical to its GAMELOFT FOR BRANDS trade mark applications and confusingly similar to its GAMELOFT trade marks.
5.3 The Complainant further contends that the Respondent has no right or legitimate interest in the Domain Name and has been registered and being used in bad faith. In this respect the Complainant claims that “Gameloft For Brands” is not a generic term, it is a business of “renown” and it relies upon the facts that the only use made of the Domain Name has been to offer it for sale and that the Domain Name was registered only three days after the Complainant applied for a United States trade mark for “Gameloft For Brands”.
5.4 The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(f) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a formal Response.
6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
A. Identical or Confusingly Similar
6.4 The Complainant’s case based on its claimed rights in GAMELOFT FOR BRANDS is problematic. The Complaint does not advance a case of unregistered trade mark rights and the two marks it relies upon are actually trade mark applications that as at the date of the Complaint had not proceeded to grant. Generally, rights in a trade mark application are not sufficient rights for the purposes of the Policy. This is recorded, for example, in paragraph 1.1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
6.5 However, this is not fatal to the Complainant’s case. In order to satisfy the first element of the Policy it is usually sufficient for a complainant to show that the relevant mark is “recognizable with the disputed domain name” (see section 1.7 of the WIPO Overview 3.0). Regardless of the nature of the Complainant rights in GAMELOFT FOR BRANDS, there is no doubt that the Complainant owns registered trade mark rights in GAMELOFT. The most sensible reading of the Domain Name is as the term “Gameloft”, combined with the words “for” and “brands” and the “.com” generic Top-Level Domain (“TLD”). Accordingly, the Complainant’s GAMELOFT registered trade mark is clearly recognisable in the Domain Name and the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.6 For reasons that are set out in greater detail in the discussion of bad faith later on in this decision, the Panel is satisfied that the Domain has been registered and then held for the purposes of taking some form of unfair advantage of the Complainant’s rights; and most likely with the intention of profiting from the Domain Name’s association with the Complainant’s marks and business by way of sale to the Complainant. There is no right or legitimate interest under the Policy in holding a Domain Name for that purpose. Further, the fact that the Domain Name is being used in this manner also constitutes prima facie evidence that no such right or legitimate interest exists (see section 2.15 of the WIPO Overview 3.0 and, for example, Premier Farnell Corp. v. BlueHost.com, Bluehost Inc / Newark del Peru S.A. WIPO Case No. D2010-2111).
6.7 The Panel, therefore, finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.8 The Panel accepts that the Complainant is likely to have knowledge of the Complainant’s business using the GAMELOFT mark at the time of registration of the Domain Name. The Domain Name can only be sensibly read as either the term “gameloft” or the words “game” and “loft” in combination with the words “for brands”. Although “game” and “loft” are ordinary English words, this particular combination of words is unusual and it is obvious that the Domain Name involves a deliberate reference to the Complainant’s “Gameloft” business.
6.9 There is also the timing of the registration of the Domain Name. The Complainant contends that the registration of the Domain Name only three days after the Complainant’s United States trade mark application for GAMELOFT FOR BRANDS, is not mere coincidence. The Panel accepts the timing of the registration cries out for an explanation, and that in the absence of any such explanation the obvious conclusion is that the Domain Name was registered in response to that application. It does not matter that the application has not proceeded to grant, in circumstances where the Complainant has shown for the purposes of these proceedings that it also has rights in GAMELOFT alone. The GAMELOFT trade mark of the Complainant was clearly being referenced in the trade mark application and the Domain Name equally seeks to take unfair advantage of that mark.
6.10 In the absence of any argument or evidence to the contrary, the Panel accepts that the Respondent had actual knowledge of the Complainant’s “Gameloft” branded business at the time the Domain Name was registered. But even if that were not so and the Domain Name was registered simply in response to the United States application, it would make no difference. The reason would be that this would be a case of wilful blindness to the Complainant’s marks as discussed in section 3.2.3 of the WIPO Overview 3.0. A registrant is generally under no obligation to undertake a search of a trade mark register prior to registering a Domain Name. But if he has deliberately sought to register a domain name in response to a trade mark application, he cannot turn a blind or Nelsonian eye to either the commercial activities of the applicant which would be apparent from a simple Internet search, or the other trade mark rights of the applicant recorded in the same register where that trade mark application has been made.
6.11 The Panel further accepts that the Domain Name was registered to take unfair of the Complainant’s trade mark rights in the term “gameloft”. The Domain Name in incorporating the phrase “Gameloft For Brands”, inherently impersonates the Complainant’s business and it is difficult to see how it might be legitimately used. In any event, there is clear evidence that the Domain Name has been offered for sale at a price that exceeds the costs of registration and therefore the obvious inference is that in this case the primary motive for registering and holding of the Domain Name was for sale to the Complainant. Such activity falls within the scope of the circumstances indicating bad faith set out in paragraph 4(b)(i) of the Policy.
6.12 The Panel therefore finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
7.1 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 <gameloftforbrands.com> be transferred to the Complainant.
Matthew S. Harris
Date: January 12, 2021