WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ubisoft Entertainment v. Milen Radumilo

Case No. DIO2021-0015

1. The Parties

Complainant is Ubisoft Entertainment, France, represented internally.

Respondent is Milen Radumilo, Romania.

2. The Domain Name and Registrar

The disputed domain name <hungryshark.io> (the “Domain Name”) is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2021. On August 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 4, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 4, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 4, 2021.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .IO Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .IO Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IO Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 29, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 30, 2021.

The Center appointed Robert A. Badgley as the sole panelist in this matter on September 2, 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

Complainant describes itself as “a leading creator, publisher, and distributor of video games.” Complainant’s Hungry Shark series of mobile video games was launched in 2010. According to Complainant, the game has been downloaded more than 100 million times. There is evidence in the record to suggest that the Hungry Shark series has been extremely popular. For instance, according to Wikipedia, the game Hungry Shark World was downloaded 10 million times in a six-day period in May 2016.

Through a subsidiary, Complainant holds several registered trademarks for HUNGRY SHARK, including European Union Reg. No. 009311853 (registered January 24, 2011), and International Reg. No. 1072122 (registered February 1, 2011).

Complainant also owns a number of domain names incorporating its HUNGRY SHARK trademark, including <hungryshark.game> and <hungryshark.app>.

The Domain Name was registered on May 7, 2021. The Domain Name has resolved at various times to a parking page which contains various commercial hyperlinks and other material not related to video games or Complainant, or to an unrelated advertising page, or to a page featuring a security warning.

Complainant discovered that the Domain Name was listed for sale at an auction site for EUR 1,483.67.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied each of the three elements required under the Policy for a transfer of the Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered or is being used in bad faith.

A. Identical or Confusingly Similar

The Panel concludes that Complainant has rights in the trademark HUNGRY SHARK through registration and use demonstrated in the record.

The Panel also concludes that omitting the Top Level Domain, as is standard practice under the Policy, the Domain Name is identical to that mark.

Complainant has established Policy paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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 Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent has not come forward in this proceeding to articulate, much less demonstrate, his bona fides vis-à-vis the Domain Name.

The three non-exclusive “safe harbors” quoted above do not appear present here. Respondent does not assert or demonstrate any efforts to use the Domain Name in connection with a bona fide offering of goods or services. See Legislator 1357, Limited, et al. v. Alberta Hot Rods, WIPO Case No. D2008-0832 (transferring <ianfleming.com>; use of a domain name “which intentionally trades on the fame of another cannot constitute bona fide offering of goods or services”).

There is no basis to conclude that Respondent is commonly known by the Domain Name.

Respondent has not claimed that he is seeking to make a noncommercial or fair use of the Domain Name, and the Panel cannot perceive any such effort from the record here. Respondent is misleadingly diverting Internet users seeking Complainant’s website to a website that contains commercial hyperlinks or a security warning.

The Panel cannot conceive of any other legitimate basis upon which Respondent could have registered this Domain Name, which is identical to Complainant’s well-known trademark.

Complainant has established Policy paragraph 4(a)(ii).

C. Registered or Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration or use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii) that 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 Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent has registered and/or used the Domain Name in bad faith.

On the undisputed record here, the Panel finds it more likely than not that Respondent registered the Domain Name with awareness of Complainant’s HUNGRY SHARK trademark rights (noting also the “.io” Top Level Domain bears some relation to the Internet-entertainment industry of the Complainant), and that Respondent did so to derive per-click revenue (on the back of Complainant’s reputation) until such time as the Domain Name could be sold for profit (the asking price here was EUR 1,483.67).

The Panel also notes the appearance at some moments of a security warning attached to the disputed domain name.

Such conduct, in the Panel’s view constitutes bad faith registration or use within the meaning of the above-quoted Policy paragraphs 4(b)(i) and 4(b)(iv).

Complainant has established Policy paragraph 4(a)(iii).

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 Domain Name <hungryshark.io> be transferred to Complainant.

Robert A. Badgley
Sole Panelist
Date: September 8, 2021