WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sybo ApS v. Whoisguard Protected, Whoisguard, Inc. / Egbert Offens, Roeg Web
Case No. D2017-2125
1. The Parties
The Complainant is Sybo ApS of Copenhagen, Denmark, represented by Løje, Arnesen & Meedom LLP, Denmark.
The Respondent is Whoisguard Protected, Whoisguard, Inc. of Panama / Egbert Offens, Roeg Web of Groningen, the Netherlands.
2. The Domain Name and Registrar
The disputed domain name <subwaysurfers-cheats.com> (the "Domain Name") is registered with eNom, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 31, 2017. On October 31, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 1, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 7, 2017, 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 November 7, 2017.
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 November 8, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 28, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 29, 2017.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on December 5, 2017. 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 Danish company that develops computer game applications known under the trademark SUBWAY SURFERS. The game is launched world-wide. The first version was released in May 2012. It is an "endless running game" where game characters run through different environments attempting to avoid various obstacles and collect various items continuously occurring in the screen. The games have been downloaded more than 1.5 billion times.
The Complainant owns many trademark registrations around the world, covering computer games in class 9 and various online games services in class 41. For example, the European Union trade mark registration of the word mark SUBWAY SURFERS, registered on November 3, 2016, and International Registration No. 1333584 of the word mark SUBWAY SURFERS, registered on May 20, 2016, designating a wide range of countries, such as Australia, China, the Republic of Korea, Japan, the Russian Federation, Turkey, Mexico, India and the United States of America. The Complainant also owns domain names, such as <subwaysurfers.com>, which is used by Complainant for a website facilitating global promotion and sale of the Subway Surfers computer game.
At the time of filing of the Complaint, the Domain Name resolved to a webpage that promotes a "cheat" offer of coins and keys for use in the Subway Surfers computer game. At the time of drafting this decision, the Domain Name resolved to an error webpage. According to the Registrar, the Domain Name was registered on December 12, 2016.
5. Parties' Contentions
The Complainant provides trademark registrations, and submits that its trademark is wellknown in the market. The Complainant argues that the Domain Name incorporates its well-known trademark in its entirety. The word "cheats" connects to a range of sites offering "cheats", "cheat codes" etc. for computer games to circumvent various restrictions in the game, and is used and apprehended as being completely generic by computer game players/users. The Domain Name consists of the trademark's dominant and distinctive part, with the generic term "cheats" added. The added term refers to the fact that the website offers a hacking-based tool that generates free coins and keys etc. in the game without actually purchasing the coins and keys from the Complainant.
The Complainant argues further that the Respondent is not affiliated or related to the Complainant in any way, or licensed or otherwise authorized to use the Complainant's trademarks. There is no relationship between the Parties that justifies the registration of the Domain Name by the Respondent and nothing in the record suggests that the Respondent is commonly known by the Domain Name. The Respondent uses the Domain Name for a website that is not bona fide. On the contrary, the use is illegitimate and fraudulent.
As to bad faith, the Complainant argues that the Respondent knew of the Complainant and its games. Due to the commercial nature of the Respondent's website, the prominent and repeated illegal use of the Complainant's trademark for the Respondent's sale of coins and keys for the Complainant's games, and promotion of competing computer games, it can be established that the Domain Name was registered, and is being used, to attract for commercial gain, Internet users to the Respondent's website. This disrupts the business of the Complainant and tarnishes the reputation of the Complainant.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademark SUBWAY SURFERS.
The test for confusing similarity involves the comparison between the trademark and the Domain Name. In this case, the Domain Name is confusingly similar to the Complainant's trademark. The addition of the word "cheats" does not avoid a finding of confusing similarity. For the purpose of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain ".com".
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register a domain name containing its trademark or otherwise make use of its mark. Based on the evidence, the Respondent is not affiliated or related to the Complainant in any way. As documented by the Complainant, the Respondent's webpage uses the Complainant's trademark for the Respondent's sale of coins and keys for the Complainant's games, coins and keys that the Complainant sells itself. Furthermore, the Respondent promotes competing computer games. This is not a bona fide offering nor a legitimate noncommercial or fair use, within the meaning of the Policy.
The Panel finds that the Complainant has made out an unrebutted prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
It is obvious that the Respondent must have been aware of the Complainant's trademark and its games when the Respondent registered the Domain Name.
The Panel finds the Respondent registered and is using the Domain Name with the intention of confusing Internet users into believing that the Domain Name is associated with the Complainant. The use of the Domain Name to sell the Complainant's coins and keys is indeed a cheat, and it puts beyond doubt that the Domain Name has been registered to take unfair advantage of the goodwill associated with the Complainant's trademark. It also documents that the Respondent attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion. The bad faith is supported by the fact that the Respondent has not responded to the Complainant's contentions.
For the reasons set out above, the Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of the paragraph 4(a)(iii) of the Policy.
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 <subwaysurfers-cheats.com> be transferred to the Complainant.
Date: December 7, 2017