Epic Games, Inc. v. Eric Mitchell / ExceCommerce Inc.
Claim Number: FA2003001887071
Complainant is Epic Games, Inc. (“Complainant”), represented by Christopher M. Thomas of Parker Poe Adams & Bernstein LLP, United States. Respondent is Eric Mitchell / ExceCommerce Inc. (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <buyfortniteaccount.com> and <buyafortniteaccount.com> (‘the Domain Names’), registered with Namecheap, Inc., Namecheap Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 5, 2020; the Forum received payment on March 5, 2020.
On March 6, 2020, Namecheap, Inc., Namecheap Inc confirmed by e-mail to the Forum that the <buyfortniteaccount.com> and <buyafortniteaccount.com> domain names are registered with Namecheap, Inc., Namecheap Inc and that Respondent is the current registrant of the names. Namecheap, Inc., Namecheap Inc has verified that Respondent is bound by the Namecheap, Inc., 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 March 9, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 30, 2020 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@buyfortniteaccount.com, postmaster@buyafortniteaccount.com. Also on March 9, 2020, 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 April 2, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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 Names be transferred from Respondent to Complainant.
A. Complainant
The Complainant’s contentions can be summarised as follows:
The Complainant is the owner of the mark FORTNITE, registered in the USA for, inter alia, computer video game software with first use recorded as 2013.
<buyfortniteaccount.com> registered in 2018 and <buyafortniteaccount.com> registered in 2019 are both confusingly similar to the Complainant’s FORTNITE trade mark including it in its entirety and adding only the generic terms “buy”, “a” and/or “account” and the gTLD “.com” which do not prevent said confusing similarity.
The Respondent does not have rights or a legitimate interest in the Domain Names, is not commonly known by them and is not authorised by the Complainant.
The Domain Names have been used to offer unauthorised software that competes with the Complainant in breach of the Complainant’s terms of service. This is not a bona fide offering of goods or services or a legitimate noncommercial fair use. It is registration and use in bad faith confusing Internet users for commercial gain. The Respondent’s reference to the Complainant and its game shows actual knowledge of the Complainant, its business, rights and services and shows the Domain Names were registered to disrupt the Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the mark FORTNITE, registered, inter alia, in the USA for computer games software with first use recorded as 2013.
<buyfortniteaccount.com> registered in 2018 and <buyafortniteaccount.com> registered in 2019 have been used to offer unauthorised competing software and services to that of the Complainant.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Identical and/or Confusingly Similar
The Domain Names consist of the Complainant’s FORTNITE mark (registered in the USA for, inter alia, computer video game software related goods and services with first use recorded as 2013), the generic terms “buy” “a” and/or “account” and the gTLD “.com”.
The addition of the generic words “buy” “a” and/or “account” to the Complainant’s mark does not prevent confusing similarity between the Domain Names and the Complainant’s mark. See Abbott Laboratories v Miles White, FA 1646590 (Forum Dec 10, 2015) (holding that the addition of generic terms do not adequately distinguish a disputed domain name from complainant’s mark under Policy 4(a)(i)).
The gTLD “.com” does not serve to distinguish the Domain Names from the FORTNITE mark. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Names are confusingly similar for the purpose to a mark in which the Complainant has rights.
Rights or Legitimate Interests
The Complainant has not authorised the use of its mark. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 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 Respondent has used the site attached to the Domain Names for competing services and to offer computer software not connected with the Complainant. It does not make it clear that there is no commercial connection with the Complainant. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. See Am. Intl Group Inc v Benjamin FA 944242 (Forum May 11, 2007) (finding that the Respondent's use of a confusingly similar domain name to advertise real estate services which competed with the Complainant's business did not constitute a bona fide use of goods and services).
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The Respondent has not answered this Complaint or explained why it should be allowed to register domain names containing the Complainant’s mark.
In the opinion of the panelist the use made of the Domain Names in relation to the site they are attached to is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site or goods or services offered on it likely to disrupt the business of the Complainant. See Asbury Auto Group Inc v Tex. Int'l Prop Assocs FA 958542 (Forum May 29, 2007) (finding that the respondent's use of the disputed domain name to point to competing dealerships not connected with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of those third party businesses and was therefore evidence of bad faith and use). Reference to the Complainant’s computer game on the Respondent’s web site shows that the Respondent is aware of the Complainant and its business, rights, goods and services.
As such, the Panel holds that the Complainant has made out its case that the Domain Names were registered and used in bad faith under Policy ¶¶ 4(b)(iii) and (iv) and has satisfied the third limb 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 <buyfortniteaccount.com>, <buyafortniteaccount.com> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: April 2, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page