Big Fish Games, Inc. v. dicky karina yuliansyah / blogger
Claim Number: FA1711001757359
Complainant is Big Fish Games, Inc. (“Complainant”), represented by Julianne A. Henley of Miller Nash Graham & Dunn, Washington, USA. Respondent is dicky karina yuliansyah / blogger (“Respondent”), Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bigfishgameonline.com>, registered with NameCheap, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 6, 2017; the Forum received payment on November 6, 2017.
On November 7, 2017, NameCheap, Inc. confirmed by e-mail to the Forum that the <bigfishgameonline.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 November 9, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 29, 2017 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@bigfishgameonline.com. Also on November 9, 2017, 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 December 4, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 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 states that it is the world’s largest producer and distributor of casual games. Complainant has distributed more than 2.5 billion games to customers in 150 countries. It registered the BIG FISH GAMES mark in the United States in 2011.
Complainant alleges that the disputed domain name is confusingly similar to Complainant’s BIG FISH GAMES mark because it incorporates the mark in its entirety, deletes the letter “s,” adds the descriptive term “online,” and attaches a “.com” generic top-level domain (“gTLD”). Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not affiliated with Complainant and has not been authorized by Complainant to use the mark in any manner. Additionally, Respondent’s use of Complainant’s mark was not authorized by Complainant. Respondent is not commonly known by the disputed domain name nor the BIG FISH GAMES mark. Rather, WHOIS information initially indicated that Respondent used a privacy service to shield its identity, but has since been identified as “dicky karina yuliansyah.” Furthermore, Respondent is not using the disputed domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, the disputed domain name prominently displays Complainant’s BIG FISH design mark in connection with offers for “cheat” and “hack” tools that result in hijacking/PUP software being installed on users’ computers, purports to sell “magic capsules” for sexual performance enhancement completely unrelated to Complainant’s goods and services, and displays adult-oriented images and material. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and used the disputed domain name in bad faith. The resolving web site disrupted Complainant’s business with the intent of commercially benefitting from such use by creating an initial confusion for users thinking Respondent is affiliated with Complainant. The resolving web site mimics Complainant’s legitimate site by using Complainant’s marks, fake text purportedly from Complainant, and fake legal notices identifying Complainant as the owner of the site content, which are all indications of bad faith registration and use. The resolving web site provides evidence of bad faith registration and use as it contains pornographic material, commercial promotion of click-through links to downloads and purchasing of cheats, hacks, and magic sex pills. Respondent’s constructive notice of Complainant’s BIG FISH GAMES mark also suggests bad faith registration and use. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the mark BIG FISH GAMES, and uses it to market games.
Complainant’s rights in its mark date back to 2011.
The disputed domain name was registered in 2017.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain name resolves to a web site that prominently displays Complainant’s BIG FISH design mark in connection with offers of “cheat” and “hack” tools that result in hijacking/PUP software being installed on users’ computers, purports to sell “magic capsules” for sexual performance enhancement completely unrelated to Complainant’s goods and services, and displays adult-oriented images and material..
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The disputed domain name is confusingly similar to Complainant’s BIG FISH GAMES mark as it only differs by removing the letter “s,” adding the descriptive term “online,” and attaching a “.com” gTLD. Generally, changes to the mark such as adding letters or generic/descriptive terms are insufficient ways to distinguish the disputed domain name from the mark. See AOL LLC v. AIM Profiles, FA 964479 (Forum May 20, 2007) (finding that Respondent failed to differentiate the <aimprofiles.com> domain name from Complainant’s AIM mark by merely adding the term “profiles”); see also Lockheed Martin Corporation v. toyosei maruyama, FA 1620489 (Forum July 7, 2015) (“Simply removing the letter ‘s’ from a mark in the creation of a domain name still creates a confusingly similar domain name.”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s BIG FISH GAMES mark under Policy ¶ 4(a)(i).
Complainant did not license or otherwise authorize Respondent to use the BIG FISH GAMES mark. In the event a respondent fails to submit a response, panels have referred to WHOIS information to determine whether Respondent is commonly known by the disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Here, the WHOIS information identifies the registrant for the disputed domain name as “dicky karina yuliansyah.” There is no evidence in the record to suggest Respondent is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Respondent does not use the disputed domain name to make a bona fide offering of goods or services or legitimate noncommercial or fair use, as the resolving web site offers services unrelated to those offered by Complainant. Complainant provides screenshots of the resolving web site, which appears to be connected with the offering of adult-oriented material and the offering of “magic sex pills.” Using a confusingly similar domain to promote unrelated good or services can evince a lack of a bona fide offering of goods or services or legitimate noncommercial or fair use. See Vanderbilt Univ. v. U Inc., FA 893000 (Forum Feb. 19, 2007) (holding that Respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting Respondent’s books unrelated to Complainant). Accordingly, the Panel finds that Respondent uses the resolving web site to promote goods and services unrelated to Complainant, thus failing to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii).
Further, using a confusingly similar domain name in connection with adult oriented material does not constitute a bona fide offer of goods or services or a legitimate noncommercial or fair use. See Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA1732665 (Forum July 7, 2017) (holding that “[u]se of a domain name to display adult-oriented images is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.”). As such, the Panel finds that Respondent’s use of the disputed domain name in connection with adult oriented material fails to convey any rights or legitimate interests in the domain name. The Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent uses the disputed domain name to intentionally disrupt Complainants business and divert its users for commercial gain. Again, the resolving website appears to mimic the use of Complainant’s marks, fake text purportedly from Complainant, and fake legal notices identifying Complainant as the owner of the site content. Generally, bad faith is found when a respondent creates user confusion as to whether Respondent is affiliated with a complainant and Respondent is presumed to profit from this confusion. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”). Therefore, the Panel finds that Respondent uses the disputed domain name to attempt to attract users for commercial gain and to confuse users as to source, sponsorship, affiliation or endorsement of Respondent’s site and content, which constitutes bad faith use under Policy ¶ 4(b)(iv).
Further, the resolving web site contains evidence of bad faith registration and use not under Policy ¶ 4(b) arguments. The presence of the blatant intellectual property infringement, pornography, commercial promotion of a “magic sex pill,” and redirections to third party sites that contain malicious software are clear and convincing evidence of bad faith registration and use. Policy ¶ 4(a) arguments are not simply limited to Policy ¶ 4(b) arguments, but may include other indications of bad faith registration and use, such as the promotion of adult-oriented material and downloading malicious software onto users’ computers. See Molson Canada 2005 v. JEAN LUCAS / DOMCHARME GROUP, FA1412001596702 (Forum Feb. 10, 2015) (“Further, Respondent’s diversion of the domain names to adult-oriented sites is registration and use of the disputed domain names in bad faith under Policy ¶ 4(a)(iii).”); see also eNom, Incorporated v. Muhammad Enoms General delivery / Enoms.com, FA1505001621663 (Forum July 2, 2015) (“In addition, Respondent has used the disputed domain name to install malware on Internet users’ devices. The Panel finds that this is bad faith under Policy ¶ 4(a)(iii).”). Therefore, the Panel finds that the resolving web site contains evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). The Panel finds that Respondent registered and is using the disputed domain name in bad faith in the sense of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bigfishgameonline.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: December 4, 2017
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