Epic Games, Inc. v. Edward Schmidt
Claim Number: FA1711001758667
Complainant is Epic Games, Inc. (“Complainant”), represented by William S. Fultz of Parker, Poe, Adams & Bernstein LLP, North Carolina, USA. Respondent is Edward Schmidt (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <epicgamesfortnite.com>, 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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 15, 2017; the Forum received payment on November 15, 2017.
On November 15, 2017, NameCheap, Inc. confirmed by e-mail to the Forum that the <epicgamesfortnite.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 16, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 6, 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@epicgamesfortnite.com. Also on November 16, 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 8, 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, Epic Games, Inc., is a developer and publisher of computer games and content creation software. Complainant has rights in the EPIC GAMES and FORTNITE marks based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. EPIC GAMES—Reg. No. 2,527,709, registered on Jan. 8, 2002; FORTNITE—Reg. No. 4,481,629, registered on Feb. 11, 2014). Respondent’s <epicgamesfortnite.com> is identical or confusingly similar as it combines Complainant’s EPIC GAMES and FORTNITE marks in their entirety, merely adding the “.com” generic top-level-domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <epicgamesfortnite.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not granted respondent permission or license to use the EPIC GAMES and FORTNITE marks for any purpose. Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent is using the <epicgamesfortnite.com> domain name to redirect internet users to a website to perpetrate a fraudulent scheme intended to trick Internet users into providing their personal information. Further, Respondent is attempting to pass itself off as Complainant.
Respondent has registered and used the <epicgamesfortnite.com> domain name in bad faith. Respondent is attempting to attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location of a product or service on Respondent’s website or location. Respondent has employed a privacy service to hide its identity. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the EPIC GAMES and FORTNITE marks.
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 <epicgamesfortnite.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 EPIC GAMES and FORTNITE marks based upon its registration with the USPTO (e.g. EPIC GAMES—Reg. No. 2,527,709, registered on Jan. 8, 2002; FORTNITE—Reg. No. 4,481,629, registered on Feb. 11, 2014).. Registration of a mark with the USPTO is sufficient to establish rights pursuant to 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)). Therefore, the Panel finds Complainant has rights in the EPIC GAMES and FORTNITE marks per Policy ¶ 4(a)(i).
Next, Complainant asserts that <epicgamesfortnite.com> is confusingly similar to Complainant’s EPIC GAMES and FORTNITE marks as it combines the marks in their entirety---less the space---and adds the “.com” gTLD. Panels have consistently found that a domain name that combines complainant’s registered marks do not distinguish the domain name from the mark incorporated therein. See Hewlett-Packard Development Company, L.P. v. Yangxiaoyi / Qingyuan Tianheng Trading Company Ltd., FA 1625637 (Forum June 23, 2015) (“The combination of a complainant’s mark does not allow a respondent to avoid a finding of confusing similarity under Policy ¶4(a)(i).”). Similarly, the addition of a gTLD is irrelevant in determining whether the disputed domain name is confusingly similar. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel agrees with Complainant and finds that <epicgamesfortnite.com> does not contain changes that would sufficiently distinguish it from the EPIC GAMES and FORTNITE marks.
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 <epicgamesfortnite.com> domain name because Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the EPIC GAMES or FORTNITE marks in any way. Where a response is lacking, WHOS information can support a finding that respondent is not commonly known by the disputed domain name. 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.) The WHOIS information of record identifies Respondent as “Edward Schmidt.” Additionally, lack of evidence in the record to indicate that the respondent had 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 finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the disputed domain name.
Complainant further argues that Respondent’s lack of rights or legitimate interests in the disputed domain names is evinced by its failure to make a bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent uses the disputed domain names to divert Internet users to Respondent’s website to perpetrate a phishing scheme. Diversion or misdirection of Internet users to perpetrate a phishing scheme is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent lacked rights and legitimate interests in a domain name with which it conducted a phishing scheme to procure “Internet users’ personal information”). Complainant provides screenshot evidence of the resolving website in which Respondent attempts to trick Complainant’s existing and potential customers into providing their personal information by falsely leading them to believe that they will receive a free download of Complainant’s product in exchange for doing so. The Panel agrees with Complainant that this use does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Additionally, Complainant contends Respondent attempts to pass itself off as Complainant. Passing off behavior does not evince rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). Complainant asserts Respondent’s website further mimics the appearance of Complainant’s website in that it includes Complainant’s FORTNITE mark in its header, provides many of the same hyperlinks in its header as those provided on Complainant’s website and prominently features copies of artwork from Complainant’s product. The Panel agrees that Respondent’s use of <epicgamesfortnite.com> is evidence of its lack of rights or legitimate interests in the disputed domain name and failure to make a bona fide offering of goods or services or a legitimate non-commercial or fair use.
Complainant has proved this element.
Complainant argues that Respondent registered and uses the <epicgamesfortnite.com> domain name in bad faith because Respondent is intentionally attempting to attract—for commercial gain—Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s EPIC GAMES and FORTNITE marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Using a confusingly similar domain name to mislead users can evince bad faith registration and use per Policy ¶ 4(b)(iv). See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Complainant asserts Respondent attempts to cause consumer confusion and to profit from such confusion as the impression given by the Disputed Domain Name and its resolving website would cause consumers to believe Respondent is somehow associated with Complainant when, in fact, it is not. Complainant claims Respondent is thus using the fame of Complainant’s trademarks to improperly increase traffic to the domain name in order to conduct an fraudulent phishing scheme. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant Policy ¶ 4(b)(iv).
Finally, Complainant argues Respondent must have had actual knowledge of Complainant’s EPIC GAMES and FORTNITE marks and business because Respondent registered the disputed domain name combining Complainant’s marks, which are famous and familiar to countless consumers. Actual knowledge may be proven through an analysis of the totality of circumstances. See 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 and in competition with Complainant.”). Complainant provides evidence of Respondent’s use to pass itself off as Complainant, and alleges the domain name includes Complainant’s marks in their entirety within the disputed domain name. The Panel agrees that actual knowledge exists and finds Respondent acted in bad faith when it registered and used the <epicgamesfortnite.com> domain name in bad faith per Policy ¶ 4(a)(iii).
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 <epicgamesfortnite.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: December 15, 2017
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