WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Faze Clan Inc. v. Privacy Service Provided by Withheld for Privacy ehf / Babar Anwar

Case No. D2021-4368

1. The Parties

The Complainant is Faze Clan Inc., United States of America, represented by BrandIT GmbH, Switzerland.

The Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / Babar Anwar, Pakistan.

2. The Domain Name and Registrar

The disputed domain name <fazemerch.net> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2021. On December 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 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 January 4, 2022, 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 January 8, 2022.

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 January 11, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 31, 2022. The Respondent sent an informal communication to the Center on January 31, 2022. On February 3, 2022, the Center notified the Parties that it was proceeding with the panel appointment process.

The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on March 15, 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 an e-sports (electronic sports and games) and entertainment organisation, established in 2010. The Complainant has nine competitive teams and has 346 million followers worldwide. It has associations with other well-known brands, and with fashion and apparel products. In October 2021, the Complainant announced plans to become a publicly listed company with a USD 1 billion valuation.

The Complainant owns a number of trademarks, including:

- FAZE, United Kingdom trademark, registration number 00918211683, registered on August 14, 2020, in classes 9, 25, 28, 35, and 41;

- FAZE CLAN, Chinese trademark, registration number 36010151, registered on September 7, 2019, in class 41.

Little is known about the Respondent except for the name and contact details provided for the purpose of registration of the disputed domain name on June 7, 2021. The disputed domain name has resolved to a website (the “Respondent’s website”) offering merchandise for sale including hoodies emblazoned with the Complainant’s logo, shirts, tank tops, and sweaters.

The Complainant sent a cease and desist letter dated October 21, 2021 to the Respondent by means of the contact information provided on the Respondent’s website. There was no reply.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The element “faze” of the disputed domain name reproduces the Complainant’s trademark. The element “merch” is a generic term, which is recognised by dictionaries as being an abbreviation for the word “merchandise”.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant’s trademarks predates the registration of the disputed domain name. The Respondent has not been licensed or authorised to use the Complainant’s trademarks and is not affiliated with the Complainant.

The Complainant says there is no evidence that the Respondent is commonly known by the disputed domain name or owns any related trademark. Searching of trademark databases online yields no results related to the terms “fazemerch.net”, “fazemerch” or “faze merch”.

The Complainant says the Respondent’s website cannot be considered as making a bona fide offering of goods or services and cannot constitute a noncommercial or fair use of the disputed domain name because it is in use to offer for sale merchandise under the Complainant’s trademarks without any authorisation to do so. The display on the Respondent’s website of merchandise relating solely to the Complainant, together with further references and information about the Complainant, indicate an awareness of the Complainant’s rights and an intention to cause visitors to confuse the Respondent with the Complainant.

The Complainant further contends that the disputed domain name was registered in bad faith. The Complainant says it is inconceivable, considering the goods displayed for sale on the Respondent’s website and the references to Faze Clan, that the Respondent was unaware of the Complainant at the time of registration.

The Complainant says the disputed domain name is being used in bad faith, particularly in the terms of paragraph 4(b)(iv) of the Policy. The Respondent’s website may mislead potential customers by confusion into associating the goods displayed thereon with the Complainant’s trademarks. Furthermore, the Respondent’s website carries an untrue statement proclaiming “Official Faze Merch Shop, Get Your Favourite and Amazing items at one place”, adding to confusion between the Respondent and the Complainant’s trademarks.

A cease and desist letter sent to the Respondent on October 21, 2021, through the email contact details provided on the Respondent’s website, was returned undelivered. The Complainant says this, and the Respondent’s use of a privacy shield, are further indicative of the Respondent’s bad faith.

The Complainant has cited previous decisions under the Policy that it wishes to bring to the Panel’s attention.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent made no formal response but replied informally on January 31, 2022, saying, “Hi, thanks for let us know. We are making this site offline. Thanks for your cooperation”.

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:

“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith”.

The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.

A. Identical or Confusingly Similar

The Panel accepts the Complainant’s copy of a search of TM View records as evidence of its ownership of certain trademarks for FAZE and FAZE CLAN including those listed in section 4 above.

The disputed domain name may be read as “faze”, being identical to the Complainant’s trademark FAZE, and identical to the first word of the Complainant’s trademark FAZE CLAN, followed by the term “merch”. The generic Top-Level Domain (“gTLD”) “.net” may be disregarded in the determination of confusing similarity. On an objective comparison, the Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademarks, and that the additional word “merch” does not prevent a finding of confusing similarity.

The Panel finds for the Complainant under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has stated a prima facie case to the effect that the Respondent has no rights or legitimate interests in respect of the disputed domain name. On the evidence, the Complainant’s trademarks predate the registration of the disputed domain name. The Complainant says it has not authorised the Respondent to use the Complainant’s trademarks and it has no affiliation with the Respondent.

Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:

“(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”.

The Respondent has not responded formally and has not asserted rights or legitimate interests in the disputed domain name with reference to paragraphs 4(c)(i), (ii) or (iii) of the Policy or otherwise. The Complainant has found no evidence that the Respondent has been commonly known by the disputed domain name. The screen capture evidence shows the Respondent’s website to be in commercial use and to be displaying the Complainant’s trademarks, which cannot constitute a bona fide offering of goods or services, and cannot constitute a noncommercial or fair use of the disputed domain name.

The Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name and finds for the Complainant under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.

The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found alternatively by the Panel. In the present case, paragraph 4(b)(iv) of the Policy is pertinent.

The screen capture evidence produced by the Complainant shows the disputed domain name to be in use for a website that makes liberal use of the Complainant’s trademarks, including the display of priced goods featuring the Complainant’s logo and with statements and headings such as “Where to Shop Best Faze Merch?”, “Faze Hoodie”, and “Faze Shirts”. A shopping cart facility is provided. There are statements claiming an association with the Complainant, for example, “Faze Merch is the official merchandise of faze clan which is one of the popular groups in the field of entertainment and organization”, and “Faze clan is a gaming organization that was founded on May 30, 2010 in Los Angeles, United States”. Thus, there can be no doubt that the Respondent was aware of the Complainant and its business activities.

On the totality of the evidence and on the balance of probabilities, the Panel finds the disputed domain name to have been in use with the intention of commercial gain and with the intention of confusing at least some Internet users into believing that the website to which it resolved and the goods offered for sale thereon were authorised by or had the endorsement of the Complainant, constituting use in bad faith under paragraph 4(b)(iv) of the Policy. The Panel also finds on the balance of probabilities that the disputed domain name was registered for the bad faith purpose for which it has been used. Registration and use of the disputed domain name in bad faith are found therefore in the terms of paragraph 4(a)(iii) of the Policy.

Whilst the use of a privacy service may be legitimate, it is not so in circumstances indicative of an intention to frustrate or delay the service of a complaint under the Policy. Failure of a respondent to reply to a justified cease and desist notice may also be found to be an aggravating factor in bad faith. The Panel finds on balance that the Respondent’s use of a privacy service, and failure to reply to a justified cease and desist letter, in the particular circumstances, are additional factors underlining the Respondent’s registration and use of the disputed domain name in bad faith.

The Panel finds for the Complainant under paragraph 4(a)(iii) of the Policy.

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 name <fazemerch.net> be transferred to the Complainant.

Dr. Clive N.A. Trotman
Sole Panelist
Date: March 25, 2022