Epic Games, Inc. v. WhoisGuard Protected / WhoisGuard, Inc.
Claim Number: FA1808001804257
Complainant is Epic Games, Inc. (“Complainant”), represented by Christopher M. Thomas of Parker Poe Adams & Bernstein LLP, North Carolina, USA. Respondent is WhoisGuard Protected / WhoisGuard, Inc. (“Respondent”), P.O. Box 0823-03411, Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <epicgames.com.se>, registered with CentralNic.
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.
Darryl C. Wilson, as Panelist.
Complainant participated in the mandatory CentralNic Mediation, and the mediation process was terminated on July 19, 2018.
Complainant submitted a Complaint to the Forum electronically on August 30, 2018; the Forum received payment on August 31, 2018.
On September 4, 2018, CentralNic confirmed by e-mail to the Forum that the <epicgames.com.se> domain name is registered with CentralNic and that Respondent is the current registrant of the name. CentralNic has verified that Respondent is bound by the CentralNic registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the CentralNic Dispute Resolution Policy (the “CDRP Policy”).
On September 12, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 2, 2018 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@epicgames.com.se. Also on September 12, 2018, 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 October 4, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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 CDRP Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the CDRP Policy, CDRP Rules, the National Arbitration 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, Epic Games, Inc., is a developer and publisher of computer games and content creation software. Complainant has rights in the EPIC GAMES mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,527,709, registered on Jan. 8, 2002). Respondent’s <epicgames.com.se> is identical or confusingly similar to Complainant’s mark as Respondent merely removes the space in the EPIC GAMES mark and adds the “.com” generic top-level domain (“gTLD”) along with the “.se” country code top-level domain (“ccTLD”) to the mark.
Respondent does not have any rights or legitimate interests in the <epicgames.com.se> domain name. Respondent is not permitted or licensed to use Complainant’s EPIC GAMES mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent uses the <epicgames.com.se> domain name to redirect users to Complainant’s own website. In addition, Respondent fails to make an active use of the disputed domain name.
Respondent registered or uses the <epicgames.com.se> domain name in bad faith. Respondent created a likelihood of confusion with Complainant, presumably for Respondent’s own commercial gain by redirecting users to Complainant’s own website. Additionally, Respondent used a privacy service to conceal its identity. Finally, Respondent had actual knowledge or constructive notice of Complainant’s EPIC GAMES mark prior to registering the <epicgames.com.se> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Epic Games, Inc. of Cary, North Carolina, USA. Complaint is the owner of domestic and international registrations for the mark EPIC GAMES, and related marks constituting the EPIC marks family. Since at least as early as 1999, Complainant has continuously used the mark in connection with its creation, development, and publication of computer games and content creation software. Further, in conjunction with the promotion of Complainant’s goods and services Complainant operates a website at <epicgames.com>.
Respondent is WhoisGuard Protected / WhoisGuard, Inc. of Panama. Respondent’s registrar’s address is unknown. The Panel notes that Respondent registered the disputed domain name on or about April 1, 2018.
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.
The CDRP also requires that Complainant have participated in a CentralNic Mediation, and that said mediation must have been terminated prior to the consideration of the Complaint.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the CDRP 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 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 asserts rights in the EPIC GAMES mark based upon registration with the USPTO (e.g., Reg. No. 2,527,709, registered on Jan. 8, 2002). Registration with USPTO sufficiently establishes rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). The Panel here finds that Complainant has rights in the EPIC GAMES mark per Policy ¶ 4(a)(i).
Complainant next claims that Respondent’s <epicgames.com.se> domain name is identical or confusingly similar to Complainant’s EPIC GAMES mark as Respondent merely removes the space and adds a gTLD and a ccTLD to the mark. Removing a space within a mark and adding a gTLD and a ccTLD to a complainant’s mark does not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Morgan Stanley v. Da Wei, FA 1712311(Forum Jan. 27, 2017) (holding that “eliminating spacing between words of marks” does not sufficiently distinguish a domain name from a Complainant’s mark); see also Dansko, LLC v. zhang wu, FA 1757745 (Forum Dec. 12, 2017) (finding the <danskoshoes.us.com> domain name to be confusingly similar to the DANSKO mark under Policy ¶ 4(a)(i), despite the addition of the “.us” ccTLD and the “.com” gTLD). Complainant argues Respondent merely removes the space within the EPIC GAMES mark and adds a “.com” gTLD and a “.se” ccTLD to Complainant’s EPIC GAMES mark. The Panel here finds that the <epicgames.com.se> does not contain changes that sufficiently distinguish it from the EPIC GAMES mark per Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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), 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). The Complainant here has set forth the requisite prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in <epicgames.com.se> as Respondent is not authorized to use Complainant’s EPIC GAMES mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged, under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). 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 the disputed 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 notes that a privacy service was used by Respondent, resulting in an indication that the WHOIS information of record identifies registrant as “WhoisGuard Protected / WhoisGuard, Inc.” Based on that information, and the Respondent’s failure to respond to Complainant’s assertions, the Panel here finds that Respondent has not been commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent is not using the <epicgames.com.se> domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the disputed domain name to host a hyperlink that redirects users to Complainant’s own website. Redirecting users to a complainant’s own website does constitute as a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) & (iii). See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii)). Here, Complainant argues that Respondent is using the disputed domain name to redirect users to Complainant’s own website in order to divert future users to competitive websites after having built up mistaken confidence in the source of the content. The Panel here finds that Respondent’s use does not amount to a bona fide offering or good or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii).
Further, Respondent fails to make an active use of the disputed domain name. Failure to make active use of a domain name does constitute as a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) & (iii). Guess? IP Holder L.P. and Guess?, Inc. v. xi long chen, FA 1786533 (Forum June 15, 2018) (“The disputed domain name resolves to a parked page with the message, “website coming soon!” The Panel finds that this use does not amount to a bona fide offering or good or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii) and Respondent does not have rights or legitimate interests with respect of the domain name.”). Here, Complainant provides a screenshot of the disputed domain name, which resolves to an inactive webpage. The Panel here finds that Respondent’s use does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Complainant argues that Respondent registered or uses the <epicgames.com.se> in bad faith. Specifically, Complainant claims Respondent attempts to attract, for commercial gain, users to the disputed domain name, which redirects users to Complainant’s own website. A respondent’s use of the disputed domain name to link to a complainant’s website can support bad faith registration or use per Policy ¶ 4(b)(iv). See Altavista Co. v. Brunosousa, D2002-0109 (WIPO Apr. 3, 2002) (finding, when a domain name is used to redirect to the complainant’s website, that “such redirection will allow the Respondent to divert future users to competing web sites after having built up mistaken confidence in the source of the content,” which constitutes bad faith registration and use); see also Ameriquest Mortgage Co. v. Banks, D2003-0293 (WIPO June 6, 2003) (concluding that respondent acted in bad faith by using the disputed domain name to redirect Internet traffic to Complainant’s own website because it “interferes with Complainant’s ability to control the use of its own trademarks on the Internet” . . . [and] creates a risk that Respondent could collect and use data about Internet users intending to access Complainant’s website”). Here, Complainant contends that Respondent’s confusingly similar domain name is intended to mislead Internet users and divert Internet traffic away from Complainant’s site to Respondent’s website. Complainant then claims Respondent hosts links to Complainant’s own websites presumably to divert future users to competing web sites after having built up mistaken confidence in the source of the content. Complainant provides a screenshot of Respondent’s use of the domain name’s resolving webpage to support its allegations. The Panel here finds that Respondent registered or uses the disputed domain name in bad faith pursuant Policy ¶ 4(b)(iv).
Finally, Complainant argues Respondent must have had actual and constructive knowledge of Complainant’s EPIC GAMES mark. The Panel is reminded that while constructive notice of a complainant’s mark is insufficient for a finding of bad faith, actual knowledge is sufficient and may be proven through a totality of circumstances per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.). Complainant claims that Respondent’s disabling of the disputed domain name, upon notification of mediation in this matter, and subsequent resumption of activity damaging to Complainant indicates Respondent had actual knowledge of Complainant’s EPIC GAMES mark. The Panel here finds that Respondent had actual knowledge of Complainant’s EPIC GAMES mark, and thus registered and used the domain name in bad faith under Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
DECISION
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <epicgames.com.se> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: Oct. 18, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page