Epic Games, Inc. v. M Vijfwinkel
Claim Number: FA2009001913288
Complainant is Epic Games, Inc. (“Complainant”), represented by Christopher M. Thomas of Parker Poe Adams & Bernstein LLP, North Carolina, USA. Respondent is M Vijfwinkel (“Respondent”), represented by Douglas M Isenberg of The GigaLaw Firm, Douglas M Isenberg, Attorney at Law, LLC, Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <megascans.com>, registered with NameCheap, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Luiz Edgard Montaury Pimenta as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 22, 2020; the Forum received payment on September 22, 2020.
On September 22, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <megascans.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 23, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 19, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@megascans.com. Also on September 23, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on October 8, 2020.
On September 23, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Luiz Edgar Montaury Pimenta as Panelist.
On October 19, 2020, Additional Submissions were received.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Epic Games, is a creator, developer, and publisher of both video games and content-creation software. Complainant has rights in MEGASCANS mark, which has been used in commerce since 2013 by Quixel AB. In November 2019, the Complainant acquired certain Intellectual Property from Quixel, including the rights in the trademark MEGASCANS.
The mark MEGASCANS in used by Complainant in connection with an online library of digital content.
Complainant also has a pending trademark application before the United States Patent and Trademark Office (“USPTO”) based on use of the referred mark.
Complainant defends that the disputed domain name <megascans.com> is identical to Complainant’s trademark except for the presence of the ".com" generic Top-Level Domain ("gTLD").
Complainant informs that has acquired common rights in the mark MEGASCANS on March 25 2013, which would predates Respondent’s registration of the domain name on January 5, 2014.
Complainant alleges that the Respondent has no right or legitimate interests in the disputed domain name, as the counterparty is not commonly known by the domain name and was not authorized to use any of its trademarks.
Complaint also argues that Respondent lacks rights or legitimate interests in the <megascans.com> domain name and would not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead Respondent would resolve the domain name only to a parked page with sponsored links.
Complainant defends that the Respondent registered and uses the <megascans.com> domain name in bad faith. In response to an inquiry from Complainant, Respondent would have offered to sell the <megascans.com> domain name for $950,000.
B. Respondent
Respondent alleges that Complainant's pending trademark application is insufficient to establish rights in the mark and would not have provided sufficient evidence to show that the mark has acquired distinctiveness.
Respondent informs that it is the sole proprietor of the company "textures.com," which offers digital pictures for use in graphic design, visual effects, in computer games, and for background images.
Respondent argues that would have obtained <megascans.com> domain name in connection with plans to create a separate business website for 3-D scan images, but chose to ultimately not to develop the website. At the time, Respondent would not be aware of the MEGASCANS mark when respondent acquired the domain name.
Respondent argues that he did not seek to sell the domain name and kept it for potential use in future business.
Further, Respondent argues that the Complainant has not provided sufficient evidence showing use of the MEGASCANS mark in commerce and does not show use of the mark until March 21, 2014, after Respondent registered the domain name. In addition to this, the domain name would consist of the common terms "mega" and "scans".
Also, Respondent defends that he does not use the <megascans.com> domain name in bad faith and did not initiate the discussion regarding the sale of the disputed domain name.
Finally, Respondent argues that Complainant did not initiate the discussion until six years after Respondent registered the domain name.
C. Additional Submissions
Complainant´s Additional Submission
Complainant´s argues that Respondent sells/licenses textures and 3D scans, which is Complainant´s main activity and makes Respondent a direct competitor.
Complainant also argues that Respondent created the alias “Larry Mills” to request $950,000 from Complainant’s agent, a fact admitted by Respondent, in order to conceal his operation of textures.com since it would be a direct competitor to Complainant’s MEGASCANS library.
Complainant included Declaration affirming Complainant’s predecessor-in-interest, Quixel AB, publicly unveiled its MEGASCANS library at the event GDC 2013, which was held between March 25-29, 2013 and more than 23,000 consumers attended the event and would prove length on the Complainant´s mark and it´s secondary meaning.
Complaint informs that the timing of Respondent’s registration, soon after the large event under the denial of being aware of any usage of the word ‘Megascans’ at the time, would not be acceptable.
Additionally, Complainant defends Respondent’s web page displays commercial parking page that includes sponsored links, although Respondent informed the website was not used. Complaints informs Respondent has no rights or legitimate interests in the domain name.
Complaint also argues that Respondent would be in bad faith since he tried to sell the Domain Name, but only in Respondent’s Response did Respondent reveal it is a direct competitor of Complainant.
Finally, Complainant argues that Respondent offered no explanation or proof that “mega” was descriptive of Respondent’s business or its scans. Moreover, Complainant’s argues that its pending U.S. application Serial No. 79265806 for MEGASCANS, was not refused on descriptiveness ground.
Respondent’s Additional Submission
Respondent submitted an additional written statement, informing that Complainant did not learn for the first time from the Response that Responded is engaged in the business of offering digital images of textures. Rather, Complainant knew of Respondent’s identity at least as early as September 23, 2020, when Complainant received a letter from the Forum identifying Respondent as the registrant of the Disputed Domain Name.
Also, Respondent argued that Complainant and Respondent are parties to an Asset License Agreement dated November 6, 2019 – 11 months prior to Respondent’s submission of the Response.
Respondent informs that his use of an alias was consistent with Respondent’s use of a privacy service for the registration of the Disputed Domain Name – a legitimate practice that is expressly acknowledged by the UDRP Rules and would have had legitimate personal and business reasons to use an alias.
Respondent restresses to being unaware of any usage of the word “Megascans” by Epic Games, Inc., or by Quixel AB when Respondent registered the Disputed Domain Name on January 5, 2014
Respondent claims that an Internet user being aware of an advertisement in 3D Artist magazine would be irrelevant to whether Respondent was aware of any alleged use of the word “Megascans” by Epic Games, Inc., or by Quixel AB when Respondent registered the Disputed Domain Name.
Respondent states that Complainant has never shown that used “Megascans” as a trademark before Respondent registered the Disputed Domain Name and Complainant’s assertion that 23,000 potential users saw Complainant’s “MEGASCANS library” would not be supported anywhere in the record and would not prove Respondent knew of the mark, especially since he did not attend said conference and it was held in another country.
Complainant, is Epic Games, Inc. (“Complainant”), represented by Christopher M., which has been using the mark MEGASCANS since 2013, when the company was part of an event with more than 23.000 participants.
Complainant has a pending trademark application before the United States Patent and Trademark Office (“USPTO”) based on use of the MEGASCANS mark.
Respondent acquired the <megascans.com> domain name in 2014 in connection with plans to create a separate business website for 3-D scan images, but chose not to develop the website.
The disputed domain name, redirects users to a webpage with unrelated hyperlinks
The Respondent tried to sell the domain name to the Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In order to prevail under policy paragraph 4(a)(i), Complainant must establish that it has rights in a trademark and that the Disputed Domain Name is identical or similar thereto.
Complainant asserts rights in the MEGASCANS mark based on use of the mark in commerce by the predecessor in interest of the mark since 2013 and subsequent assignment of the mark to Complainant. Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”).
To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”).
Complainant asserts that its predecessor in interest, Quixel AB, used the mark as early as 2013 and provides photographs of Quixel's demonstration booth at a trade show in 2013, a screenshot of a YouTube video regarding the mark from March, 18, 2014, and archived screenshots from Quixel's own webpage showing MEGASCANS available for preorder. See Declaration of Beata Sobkow, Compl. Ex. D.
Complainant’s predecessor-in-interest, Quixel AB, publicly unveiled its MEGASCANS library at the event GDC 2013, which was held March 25-29, 2013.
Complainant contends it has rights in the mark via assignment of the trademark rights from Quixel AB to Complainant. Assignment of trademark rights can confer rights in the mark to a Complainant under the Policy. See Golden Door Properties, LLC v. Golden Beauty / goldendoorsalon, FA 1668748 (Forum May 7, 2016) Complainant provides a document entitled trademark assignment, executed November 11, 2019, assigning rights to the MEGASCANS marks to Complainant. See Declaration of Beata Sobkow, Compl. Ex. D.
Next, the mere addition of a gTLD is not sufficient to avoid a finding of identity or confusing similarity under Policy ¶ 4(a)(i). See Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”).
Therefore, the Panel concludes that Complainant does hold common law rights in the name for the purposes of Policy ¶ 4(a)(i) and the domain name is confusingly similar.
The Panel concludes that the first requirement of the UDRP is satisfied.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(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 trade mark or service mark at issue.
The WHOIS information for the disputed domain name lists the registrant as “M Vijfwinkel,” and there is no other evidence to suggest that Respondent was authorized to use the MEGASCANS mark.
Respondent lacks rights or legitimate interests in the <megascans.com> domain name, is not commonly known by the disputed domain name, is not connected with Complainant and is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks.
Also, Complainant contends Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent resolves the domain name only to a parked page with sponsored links. Such use of a domain name does not generally constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent has does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”); see also Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”).
Therefore, the Panel finds Respondent is not making a bona fide offering or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant argues Respondent registered and uses the <megascans.com> domain name in bad faith as evidenced by Respondent's offer to sell the <megascans.com> domain name for $950,000 in response to an inquiry from Complainant. Even where a complainant initiates the discussion, an offer to sell a disputed domain name in excess of normal registration costs can show bad faith registration and use under Policy ¶ 4(b)(i). See Galvanize LLC, dba Galvanize v. Brett Blair / ChristianGlobe Network, FA1405001557092 (Forum June 26, 2014) (finding that the respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(i) because it countered Complainant’s offer to buy the disputed domain name with an offer to sell the disputed domain name of $100,000). Complainant provides email correspondence with Respondent in which Complainant offers to purchase the domain name for $800 and Respondent counteroffers with $950,000.
Also, Complaint argues that Respondent alleges that in 2013 the prior owner of the trademark rights took out a full-page advertisement using the mark MEGASCANS and the advertisement appeared in a publication specifically directed to the target audience of both Complainant and Respondent. Thus, Respondent should have known about Complainant’s mark when registering the domain name under dispute on January 5, 2014.
The Panel finds that the third requirement of the UDRP is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED
Accordingly, it is Ordered that the <megascans.com> domain name be TRANSFERRED from Respondent to Complainant.
Luiz Edgard Montaury Pimenta, Panelist
Dated: October 26, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page