Bethesda Softworks LLC v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1712001761255
Complainant is Bethesda Softworks LLC (“Complainant”), represented by David M. Kramer of DLA Piper LLP (US), District of Columbia, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <falloutshelterastuce.com>, registered with Internet Domain Service BS Corp.
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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 4, 2017; the Forum received payment on December 4, 2017.
On Dec 6, 2017, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <falloutshelterastuce.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 December 6, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 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@falloutshelterastuce.com. Also on December 6, 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 27, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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, Bethesda Softworks LLC, is a developer and publisher of award-winning video games. In connection with this business, Complainant or its predecessor-in-interest has prominently used the FALLOUT marks in connection with a series of role playing video games since as early as September 1997. On June 14, 2015, Complainant released FALLOUT SHELTER, a free-to-play mobile game based in the FALLOUT universe. Complainant has rights in the FALLOUT SHELTER mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,885,997, registered Jan. 12, 2016). Respondent’s <falloutshelterastuce.com> domain name is confusingly similar to Complainant’s FALLOUT SHELTER mark, as the domain name wholly incorporates the mark—less the space—and adds the term “astuce” and the “.com” generic top-level domain (“gTLD”). This confusing similarity is enhanced by the fact that the term “astuce” is French for “tricks,” which is particularly misleading given the connotation of that term in the context of video games.
Respondent has no rights or legitimate interests in the <falloutshelterastuce.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the FALLOUT SHELTER mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the name to misdirect consumers to a website selling infringing software that circumvents the anti-cheat protections of the FALLOUT SHELTER mobile game.
Respondent registered and is using the <falloutshelterastuce.com> domain name in bad faith. In choosing to register and use a domain name incorporating Complainant’s well-known mark, Respondent is creating confusion in order to attract Internet users for commercial gain and disrupt Complainant’s business. Further, Respondent clearly had actual knowledge of Complainant and its rights in the FALLOUT SHELTER mark at the time it registered and subsequently used the domain name. Finally, Complainant’s mark is so well known that the registration of a domain name incorporating the mark is opportunistic bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <falloutshelterastuce.com> domain name.
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 the 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.”).
Complainant claims rights in the FALLOUT SHELTER mark based upon registration of the mark with the USPTO (e.g. Reg. No. 4,885,997, registered Jan. 12, 2016). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel finds that Complainant’s registration of the FALLOUT SHELTER mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <falloutshelterastuce.com> domain name is confusingly similar to the FALLOUT SHELTER mark, as the domain name wholly incorporates the mark—less the space—and adds the term “astuce” and the “.com” generic top-level domain (“gTLD”). Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum Aug. 10, 2016) (finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Complainant claims this confusing similarity is increased, as the added term “astuce” is French for tricks, and is likely to create additional confusion when connected with a video-game related mark. The Panel finds the <falloutshelterastuce.com> domain name is confusingly similar to the FALLOUT SHELTER mark per Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has no rights or legitimate interests in the <falloutshelterastuce.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the FALLOUT SHELTER mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information of record identifies Respondent as “Domain Admin / .” Additionally, lack of evidence in the record to indicate that the respondent has been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in said domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <falloutshelterastuce.com> domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the <falloutshelterastuce.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends that Respondent is instead using the domain name and resolving website to attempt to disrupt the business of Complainant, a competitor. Use of a domain name to offer software meant to undermine a complainant’s business model is not indicative of rights or legitimate interests in a domain name per Policy ¶¶ 4(c)(i) or (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 unauthorised 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 contends that the domain name resolves to a website which sells software designed to “bypass the security protocol” of the game software, and give the players the ability to “open unlimited lunchboxes.” The Panel agrees that this behavior amounts to an attempt to undermine Complainant’s business and finds that Respondent therefore lacks rights and legitimate interests in the domain name per Policy ¶¶ 4(c)(i) and (iii).
Complainant has proved this element.
Complainant contends that Respondent’s bad faith is indicated by its use of the <falloutshelterastuce.com> domain name to redirect Internet users to a website which disrupts Complainant’s business. Competitive and disruptive use of a domain name can demonstrate a respondent’s bad faith per Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)). Complainant alleges that the domain name redirects to a website which sells software intended to undermine Complainant’s video game software and that this use constitutes competitive behavior intended to disrupt Complainant’s business for commercial gain. The Panel agrees and finds that Respondent has registered and used the domain name in bad faith per Policy ¶¶ 4(b)(iii).
Complainant also argues Complainant uses the domain name to pass itself off as Complainant and attract Internet users for commercial gain. Such use can be evidence of Policy ¶ 4(b)(iv) bad faith. See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness). Complainant contends the domain name incorporates the FALLOUTSHELTER mark and the resolving website makes use of design elements and artwork which infringe on Complainant’s marks in order to sell competitive goods. The Panel finds this is sufficient to demonstrate Policy ¶ 4(b)(iv) bad faith.
Complainant contends the FALLLOUT SHELTER mark is so famous that any use of it would constitute opportunistic bad faith. Where a mark is so famous that any use of it would be infringing, bad faith can be found per Policy ¶ 4(a)(iii). The Panel finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and find that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See 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). Complainant further asserts that Respondent’s use of the domain name to host content obviously related to Complainant indicates it had actual knowledge of Complainant’s rights. The Panel agrees and finds Respondent had actual knowledge of Complainant’s rights in the mark and thus registered the name in bad faith.
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <falloutshelterastuce.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: January 3, 2018
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