Demonware Ltd. v. Jonathan McClintock
Claim Number: FA2110001967329
Complainant is Demonware Ltd. (“Complainant”), represented by Adam D. Mandell of Millen, White, Zelano & Branigan, P.C., Virginia, USA. Respondent is Jonathan McClintock (“Respondent”), Kentucky, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <demonware.tech>, registered with Google LLC.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Lars Karnøe (Chair), Sandra J. Franklin and Ho-Hyun Nahm, Esq. as Panelists.
Complainant submitted a Complaint to the Forum electronically on October 1, 2021; the Forum received payment on October 1, 2021.
On October 1, 2021, Google LLC confirmed by e-mail to the Forum that the <demonware.tech> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google LLC 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 October 11, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 1, 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@demonware.tech. Also on October 11, 2021, 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 9 November 2021, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Lars Karnøe (Chair), Sandra J Franklin and Ho-Hyun Nahm, Esq. as Panelists.
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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a video game developer. Complainant has common law rights in the DEMONWARE mark. Respondent’s <demonware.tech> domain name is identical or confusingly similar to Complainant’s mark as it incorporates it in its entirety and adds the “.tech” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <demonware.tech> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its DEMONWARE mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead offers illegal hacking codes in violation of Complainant’s terms of service.
Respondent registered and uses the <demonware.tech> domain name in bad faith. Respondent exhibits a pattern of bad faith registration and use. Respondent disrupts Complainant’s business for commercial gain by passing off as Complainant on the disputed domain name’s resolving website. Respondent uses the disputed domain name to offer illegal hacking codes in violation of Complainant’s terms of service.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the Complainant has demonstrated common law rights in the DEMONWARE trademark.
Secondly, there can be no doubt that the disputed domain name was registered by the Respondent with prior knowledge of the DEMONWARE trademark, which is not disputed by the Respondent.
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 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.
Complainant claims common law rights in the DEMONWARE mark. Under Policy ¶ 4(a)(i), common law rights may suffice as evidence of rights in a mark in lieu of a registration with a trademark authority. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
To successfully demonstrate common law rights in a mark, complainants must provide evidence of secondary meaning. This can include examples of how the mark is advertised and promoted as well as external recognition of the mark such as news articles and the like. See Psyonix Inc. v. robert gray / notpsyonix, FA 1759780 (Forum Jan. 3, 2018) (finding Complainant had satisfied the requirements for common law rights in the PSYONIX mark where it was “the center of the press worldwide since the release of its Rocket League game, selling over 10 million copies, totaling 36 million registered users and grossing over $110 million worldwide,” and “Complainant provided a sampling of articles from 2015 to 2017, which shows that the PSYONIX trademarks have been extensively used by Complainant, [and] are associated with Complainant amongst the consuming public worldwide.”). Here, Complainant provides samples of use of the DEMONWARE mark in combination with the well-known trademark CALL OF DUTY, a list of games that the DEMONWARE software supports, including statistics of over 385 million units sold prior to the registration of the disputed domain name, as well as expenditure numbers for worldwide marketing and promotion campaigns in excess of 1.7 billion USD in 2019, and reviews of its services from recognized business news outlets, all of which significantly predate the creation of the disputed domain name. Based on this evidence, the Panel finds that Complainant has demonstrated common law rights in the DEMONWARE trademark under Policy ¶ 4(a)(i).
Complainant argues that the DEMONWARE mark has secondary meaning. Under Policy ¶ 4(a)(i), secondary meaning is generally considered evidence of common law rights in a mark, and may be demonstrated through a variety of factors, including longstanding use of a mark in a business and advertising, and public recognition of a mark. 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 provides exhibits showing the DEMONWARE mark’s use in multiple scenarios, including on the covers of Complainant’s products, in Complainant’s marketing materials, and its mention in articles and conference presentations written about Complainant, as well as sources demonstrating global recognition of the product developed by the company under the DEMONWARE mark. Therefore, the Panel finds Complainant has demonstrated secondary meaning, and thus common rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <demonware.tech> domain name is identical or confusingly similar to Complainant’s DEMONWARE mark. Adding a descriptive or relevant gTLD is insufficient in differentiating a disputed domain name from the mark it incorporates under Policy ¶ 4(a)(i). See Chex Systems, Inc. v. Mark Heinrich, FA 1578916 (Forum Oct. 8, 2014) (finding that “Respondent clearly took advantage of the “.systems” new top-level domain to make a domain name that is effectively identical to the trademark.”). The disputed domain name incorporates Complainant’s DEMONWARE mark in its entirety and adds the “.tech” gTLD, which relates to Complainant’s business, to the end of the mark. Therefore, the Panel finds that Respondent’s domain name is identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that the Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and the burden therefore shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant argues that Respondent is not commonly known by the <demonware.tech> domain name, nor has Complainant authorized or licensed Respondent to use its DEMONWARE mark in the disputed domain name. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS Information may demonstrate that a Respondent is not commonly known by a disputed domain name, while a lack of evidence demonstrating otherwise may affirm a Complainant’s assertion that it never authorized or licensed Respondent to use its mark in the disputed domain name. See PragmaticPlay Limited v. Robert Chris, FA2102001932464 (Forum Mar. 23, 2021) (“The WHOIS information of record lists the registrant as “Robert Chris,” and no other information of record suggests Respondent is commonly known by the domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). The WHOIS of record identifies Respondent as “Jonathan McClintock”, and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its DEMONWARE mark in the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the <demonware.tech> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Using a disputed domain name for illegal purposes is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Airbnb, Inc. v. Nima Rahnemoon, FA 1737766 (Forum July 25, 2017) (“It is clear from the evidence that Respondent has used the site attached to the Domain Name to promote illegal unauthorized use of Complainant’s systems… As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name.”). Complainant provides screenshots of the disputed domain name’s resolving website, which purports to offer “cheat codes” to give players in its online games an unfair advantage during play, which violates the terms and conditions of player’s agreements with the company, and in effect unlawfully “hacks” the online video games. Therefore, the Panel finds that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Panel concludes that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent registered and uses the <demonware.tech> domain name for bad faith disruption for commercial gain. Under Policy ¶¶ 4(b)(iii) and (iv), using a disputed domain name to pass off as a Complainant on the domain name’s resolving website may demonstrate bad faith disruption for commercial gain. See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). The Panel points to Complainant’s screenshots of the disputed domain name’s resolving website, which features Complainant’s DEMONWARE mark and offers online “cheat codes” for Complainant’s gaming products. Therefore, the Panel finds that the Respondent registered and uses the disputed domain name for bad faith disruption for commercial gain under Policy ¶¶ 4(b)(iii) and (iv).
Complainant argues that Respondent registered and uses the <demonware.tech> domain name in bad faith for illegal purposes. Under Policy ¶ 4(a)(iii), using a disputed domain name for illegal purposes is evidence of bad faith registration and/or use. See Twitter, Inc. v. Alvaro Martins / Domaina Admin / Whois Privacy Corp., FA 1703001721606 (holding that use of the disputed domain name to offer instructions on how to hack a <twitter.com> account and offer hacking services is evidence of bad faith). The Panel points to Complainant’s screenshots of the disputed domain name’s resolving website, which purports to offer online “cheat codes” that Complainant claims violate its terms of service and are akin to “hacking” its online servers. Therefore, the Panel finds that the Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concurs and concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <demonware.tech> domain name be TRANSFERRED from Respondent to Complainant.
Lars Karnøe, Chair of the Panel,
Sandra J Franklin and Ho-Hyun Nahm, Esq. as Panelists
Dated: November 23, 2021
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