Scottgames, LLC v. Dejan Milivojevic
Claim Number: FA2012001926402
Complainant is Scottgames, LLC (“Complainant”), represented by Rebecca A. Schaefer of c/o Nissenbaum Law Group, LLC, New Jersey, USA. Respondent is Dejan Milivojevic (“Respondent”), Serbia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <fivenightsatfreddys.us> and <fnaf.us>, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 28, 2020; the Forum received payment on December 28, 2020.
On December 28, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <fivenightsatfreddys.us> and <fnaf.us> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On December 30, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 19, 2021 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@fivenightsatfreddys.us, postmaster@fnaf.us. Also on December 30, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 24, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant owns and developed the line of FIVE NIGHTS AT FREDDY’S video games.
Complainant has rights in the FIVE NIGHTS AT FREDDY’S mark through its registrations with the United States Patent and Trademark Offfice (“USPTO”).
Respondent’s <fivenightsatfreddys.us> and <fnaf.us> domain names are identical or confusingly similar to Complainant’s mark as they incorporate the mark in its entirety or an acronym of the mark and add the “.us” country code top-level domain (“ccTLD”) to the end of the mark.
Respondent lacks rights and legitimate interests in the <fivenightsatfreddys.us> and <fnaf.us> domain names. Respondent is not commonly known by the at-issue domain names, and does not use either domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Instead, Respondent uses the at-issue domain names to pass itself off as Complainant and offer popup advertisements and unauthorized pirated versions of Complainant’s video games on the website addressed by domain names.
Respondent registered or uses the <fivenightsatfreddys.us> and <fnaf.us> domain names in bad faith. Respondent attracts internet users for commercial gain by passing off as Complainant and offering popup advertisements and unauthorized pirated versions of Complainant’s video games on the at-issue domain names’ resolving websites.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the FIVE NIGHTS AT FREDDY’S mark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in its FIVE NIGHTS AT FREDDY’S trademark.
Respondent offers popup advertisements and unauthorized pirated versions of Complainant’s video games on the website(s) addressed by the at-issue domain names
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of its FIVE NIGHTS AT FREDDY’S mark with the USPTO is sufficient to allow the Panel to find that Complainant has rights in a mark under the Policy. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.)
Respondent’s at-issue <fivenightsatfreddys.us> and <fnaf.us> domain names each contain either Complainant’s entire FIVE NIGHTS AT FREDDY’S trademark less its domain name spaces and apostrophe, or an acronym for the mark. Each at-issue domain name is followed by a necessary top-level domain name. In each case the domain name is followed by the country code top-level domain name “.us.” The differences between Respondent’s domain names and Complainant’s trademark do nothing to distinguish Complainant’s trademark from either of the at-issue domain name under Policy ¶ 4(a)(i). Therefore, the Panel finds that the at-issue domain names are each confusingly similar to Complainant’s FIVE NIGHTS AT FREDDY’S SWEETS mark. See Lifetouch, Inc. v. Fox Photographics, FA 414667 (Forum Mar. 21, 2005) (finding the respondent’s <lifetouch.us> domain name to be identical to the complainant’s LIFETOUCH mark because “[t]he addition of “.us” to a mark fails to distinguish the domain name from the mark pursuant to the [usTLD] Policy”); see also Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated); see also Minn. State Lottery v. Mendes, FA 96701 (Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name was confusingly similar to the complainant’s MINNESOTA STATE LOTTERY mark under Policy ¶ 4(a)(i)).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Absent Policy ¶ 4(c) circumstances or other evidence supporting a finding of Respondent’s having rights or legitimate interests in an at-issue domain name Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of each of the at-issue domain names. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of either at-issue domain name.
The WHOIS information for the at-issue domain names identifies the domain names’ registrant as “Dejan Milivojevic” and there is no evidence in the record which suggests that the Respondent is known by either at-issue domain name. Therefore, the Panel concludes that under Policy ¶ 4(c)(iii) Respondent is not commonly known either at-issue domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
Furthermore, Respondent uses the confusingly similar or trademark identical <fivenightsatfreddys.us> and <fnaf.us> domain names to divert internet users who falsely associate one of the confusingly similar domain names with Complainant, to the domain name’s related website; a website displaying Complainant’s trademark along with pictures and descriptions of Complainant’s games, but that is controlled by Respondent. Notably, the websites also offer pop-up advertisements and links to pirated or unauthorized games that infringe on Complainant’s products. Respondent’s use of the confusingly similar at-issue domain names to pass itself off as Complainant and to address websites offering links to pirated or unauthorized products is neither a bona fide offering of goods or services under Policy ¶ 4(c)(ii), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Fadal Engineering, LLC v. DANIEL STRIZICH,INDEPENDENT TECHNOLOGY SERVICE INC, FA 1581942 (Forum Nov. 13, 2014) (finding that Respondent’s use of the disputed domain to sell products related to Complainant without authorization “does not amount to a bona fide offering of goods or services under policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business); see also, Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Forum June 3, 2003) (holding that the respondent’s use of infringing domain names to direct internet traffic to a search engine website that hosted pop-up advertisements was evidence that it lacked rights or legitimate interests in the domain names).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of legitimate interests in respect of either at-issue domain name.
Respondent’s <fivenightsatfreddys.us> and <fnaf.us> domain names were each registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present which support a finding regarding each domain name that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First as mentioned above regarding rights and legitimate interests, Respondent uses the at-issue domain names pass itself off as Complainant to divert internet users to one of the at-issue domain names’ websites. Such use of the confusingly similar domain names demonstrates Respondent’s bad faith registration and use of the domain names pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Furthermore and as also mentioned regarding rights and legitimate interests, the Respondent’s websites promote pop-up advertising and links, some of which connect to unauthorized or pirated products offered by Complainant. Such use also shows Respondent’s bad faith. See 3M Company v. Nguyen Hoang Son / Bussiness and Marketing, FA1408001575815 (Forum Sept. 18, 2014) (finding that the respondent’s use of the disputed domain name to host sponsored advertisements for Amazon, through which the respondent presumably profited, indicated that the respondent had used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also, Fossil Inc. v. NAS, FA 92525 (Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods); see also, Wilcom Pty Ltd v. Jinsu Kim, WIPO Case No. D2009-0670 (finding bad faith where respondent was selling pirated copies of Complainant’s software).
Additionally, Respondent had actual knowledge of Complainant’s rights in the FIVE NIGHTS AT FREDDY’S mark when it registered <fivenightsatfreddys.us> and <fnaf.us> as domain names. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademark and from Respondent offering of goods and/or services related with those offered by Complainant via the <fivenightsatfreddys.us> and <fnaf.us> websites as discussed above. Respondent’s registration and use of its confusingly similar domain names with prior knowledge of Complainant’s rights in such domain names further shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”); see also, Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fivenightsatfreddys.us> and <fnaf.us> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 26, 2021
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