WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gameloft S.E. v. Privacy service provided by Withheld for Privacy ehf / Edward Jarman, MONSOON BLOCKCHAIN
Case No. D2021-4285
1. The Parties
The Complainant is Gameloft S.E., France, internally represented.
The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Edward Jarman, MONSOON BLOCKCHAIN, United States of America (“United States”).
2. The Domain Names and Registrar
The disputed domain names <gameloftmetaverse.com> and <gameloftnft.com> are registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2021. On December 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 20, 2021, 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 December 22, 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 23, 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 December 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 17, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 18, 2022.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on January 25, 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
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 200 games and several have been downloaded by millions of players
The Complainant is the owner of various registered trademarks around the world that comprise or incorporate the name “Gameloft”. They include: (i) European Union registered trademark 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 trademark No. 2474984 for GAMELOFT as a typed drawing filed on June 21, 1999, and registered on August 7, 2001, in class 38.
The Complainant is the owner of various domain names that are used in connection with its gaming business activities, including <gameloft.com>, which was registered on April 8, 1999.
The disputed domain names <gameloftnft.com> and <gameloftmetaverse.com> were registered on October 23, 2021, and November 2, 2021, respectively. They are being used to display a hosting page with pay-per-click ads.
5. Parties’ Contentions
The Complainant argues its trademark is widely recognized by consumers around the world and the disputed domain names are identical to said trademark.
The Complainant argues that the disputed domain names respectively contain the terms “nft” and “metaverse”, corresponding to two new technologies and trends expected to be the future of the gaming industry. The addition of descriptive or commons terms to a trademark is not a distinguishing feature.
The Complainant asserts that the Respondent is not sponsored or related in any way with the Complainant. The Respondent has never been allowed to use the disputed domain names. The Respondent has used the disputed domain names for pay-per-click ads. The website itself does not make any mention to the Complainant’s products nor its name/trademarks, and only contains information about competitors’ products.
The Complainant argues that this use is evidence of bad faith registration and use. The disputed domain names were registered to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
The Respondent must have known of the Complainant and its trademark rights. It is evident from the use, but also the fact that “Gameloft” is a distinctive name. It makes a coincidental registration of the disputed domain names by the Respondent completely unlikely.
The Complainant requests the transfer of the disputed domain names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Complainant to obtain a transfer of the disputed domain name, paragraphs 4(a)(i) – (iii) of the Policy require that the Complainant must demonstrate to the Panel that:
(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.
A. Identical or Confusingly Similar
The disputed domain names incorporate the trademark GAMELOFT of the Complainant in its entirety.
The Panel agrees with Complainant that the addition of the terms “nft” and “metaverse” to the disputed domain names, do not serve to prevent the trademark from being recognizable in the disputed domain names. This difference does not prevent a finding of confusing similarity under the first element.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the disputed domain names or to use the trademarks.
The Complainant has prior rights in the trademarks which precede the Respondent’s registration of the domain names. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that it has acquired any trademark rights in respect of the disputed domain names or that the domain names are used in connection with a bona fide offering of goods or services. Rather, the disputed domain names consist of the Complainant’s trademark in their entirety, along with terms descriptive of services offered, or speculated to be offered, in the Complainant’s industry, and resolve to pay-per-click sites through which the Respondent presumably receives click-through revenue as a result of Internet users mislead by the confusingly similar disputed domain names. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests to the disputed domain names and is not using them for a bona fide offering of goods or services.
Therefore, the Panel finds that the Complainants have satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove both that the disputed domain names were registered in bad faith and that they are being used in bad faith.
Complainant’s allegations with regard to the Respondent’s registration and use of the domain names in bad faith have been considered by the Panel. These allegations have not been contested by the Respondent because of its lack of response.
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 disputed domain names
There is also the timing of the registration of the disputed domain names. The disputed domain names <gameloftnft.com> and <gameloftmetaverse.com> were registered on October 23, 2021, and November 2, 2021, only with a few difference days and several years after the Complainant registered its trademark. The addition of the terms “nft” and “metaverse” to each of the disputed domain names, terms that are related to the Complainant industry, is a clear evidence that Respondent was targeting the Complainant.
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 disputed domain names were registered.
The Panel visited the disputed domain names and was able to verify that they contain pay-per-click advertising. The disputed domain names contain a statement that reads: “The Sponsored Listings displayed above are served automatically by a third party”. Further to section 3.5 of the WIPO Overview 3.0, “Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith”.
The circumstances in the case before the Panel indicate that the Respondent was aware of the Complainant’s GAMELOFT trademark when registering the disputed domain names and that the Respondent has intentionally been using them in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’ trademarks as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on a website.
Therefore, taking all the circumstances into account and for all the above reasons, the Panel concludes that the Respondent has registered and is using the disputed domain names 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 names <gameloftmetaverse.com> and <gameloftnft.com> be transferred to the Complainant.
Pablo A. Palazzi
Date: February 7, 2022