Epic Games, Inc. v. Bharat Mahajan
Claim Number: FA2005001896099
Complainant is Epic Games, Inc. (“Complainant”), represented by Christopher M. Thomas of Parker Poe Adams & Bernstein LLP, USA. Respondent is Bharat Mahajan (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <epic-games.net>, registered with Porkbun LLC.
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 13, 2020; the Forum received payment on May 13, 2020.
On May 14, 2020, Porkbun LLC confirmed by e-mail to the Forum that the <epic-games.net> domain name is registered with Porkbun LLC and that Respondent is the current registrant of the name. Porkbun LLC has verified that Respondent is bound by the Porkbun LLC 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 May 18, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 8, 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@epic-games.net. Also on May 18, 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 June 10, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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 creator, developer, and publisher of video games, a game engine, and content-creation software. Complainant has rights in the EPIC GAMES mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”). Respondent’s <epic-games.net> domain name is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s EPIC GAMES mark, adding only a hyphen and the “.net” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <epic-games.net> domain name. Respondent is not licensed or authorized to use Complainant’s EPIC GAMES mark and is not commonly known by the domain name. Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to resolve to a site which offers services which compete with those of Complainant.
Respondent registered and uses the <epic-games.net> domain name in bad faith. Respondent registered the disputed domain name with knowledge of Complainant’s rights in the EPIC GAMES mark and attempts to attract, for commercial gain, Internet users to Respondent’s website, which offers services which compete with those of Complainant, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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”).
Complainant has shown that it has rights in the EPIC GAMES mark based upon its registration of the mark with the USPTO, including Reg. No. 2,527,709, registered January 8, 2002 for, inter alia, computer game software for personal computers, home video game consoles and arcade based video game consoles, in Class 9. The Panel finds Respondent’s <epic-games.net> domain name to be confusingly similar to Complainant’s EPIC GAMES mark because it wholly incorporates that mark, adding only a hyphen and the inconsequential “.net” generic top-level domain (“gTLD”), which may be ignored.
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <epic-games.net> domain name was registered on January 26, 2020. It resolves to a website displaying the words EPIC GAMES and offering a large range of online games which compete with those offered by Complainant via its website at <epicgames.com>.
Complainant’s assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the Domain Name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show that it does have rights or legitimate interests in the Domain Name. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). The Respondent has made no attempt to do so.
In the circumstances of this case, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Paragraph 4(a)(iii) of the Policy sets out the conjunctive requirement that the Complainant establish both that Respondent has registered the domain name in bad faith and that Respondent is using the domain name in bad faith. Sub-paragraph 4(b)(iv) of the Policy sets out the following illustrative circumstances, which, though not exclusive, shall be evidence of both bad faith registration and bad faith use for purposes of paragraph 4(a)(iii):
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The Panel finds that, when registering the domain name, Respondent must have been aware of Complainant’s EPIC GAMES mark and that, by using the domain name to resolve to a website displaying, at the top of the home page, the words EPIC GAMES and offering online games which compete with those offered by Complainant, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
Complainant has established that the domain name was registered and is being used in bad faith.
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 <epic-games.net> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: June 18, 2020
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