DECISION

 

Epic Games, Inc. v. Tommy Bahama

Claim Number: FA2206002001215

 

PARTIES

Complainant is Epic Games, Inc. ("Complainant"), represented by Christopher M. Thomas of Parker Poe Adams & Bernstein LLP, North Carolina, USA. Respondent is Tommy Bahama ("Respondent"), Texas, USA.

                                              

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <epicgames-vpn.com>, registered with NameCheap, Inc.

 

PANEL

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.

 

David E. Sorkin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on June 21, 2022; the Forum received payment on June 21, 2022.

 

On June 21, 2022, NameCheap, Inc. confirmed by email to the Forum that the <epicgames-vpn.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 June 22, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 12, 2022 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@epicgames-vpn.com. Also on June 22, 2022, the Written Notice of the Complaint, notifying Respondent of the email 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 July 13, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is a creator, developer, and publisher of video games, a game engine, and content-creation software. Complainant was founded in 1991; it is the creator of the video game Fortnite, which has over 400 million registered accounts. Complainant has used EPIC GAMES and related marks in connection with this business since at least as early as 1999.

 

The disputed domain name <epicgames-vpn.com> was registered in June 2022. The domain name is registered in the name of a privacy registration service on behalf of Respondent. (The Panel notes that the underlying registration data provided by Respondent appear to be at least partly fictitious.) The domain name does not currently resolve, although it formerly resolved to a website that mimicked the login page for the virtual private network (VPN) intended for use by Complainant's employees. The website displayed Complainant's registered trademarks and copyrighted material, and attempted to phish for usernames and passwords from Complainant's employees. Complainant states that its employees received text messages directing them to the website for updates to their work schedules. Complainant states further that Respondent is not commonly known by the domain name, has no connection with Complainant, and is not authorized to use Complainant's marks.

 

Complainant contends on the above grounds that the disputed domain name <epicgames-vpn.com> is confusingly similar to its EPIC GAMES and related marks; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

 

DISCUSSION

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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").

 

Identical and/or Confusingly Similar

The disputed domain name <epicgames-vpn.com> incorporates Complainant's registered EPIC GAMES trademark, omitting the space and adding a hyphen, the generic term "VPN," and the ".com" top-level domain. These alterations do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Epic Games, Inc. v. Careers Team / Epic Games, Inc., FA 1972099 (Forum Dec. 2, 2021) (finding <epicgamesmail.com> confusingly similar to EPIC GAMES); Clorox Co. v. WhoIsGuard Protected, WhoisGuard, Inc. / Cody Nudo, Clorox, D2020-2950 (WIPO Jan. 5, 2021) (finding <cloroxvpn.com> confusingly similar to CLOROX). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.

 

Rights or Legitimate Interests

Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).

 

The disputed domain name incorporates Complainant's registered mark without authorization, and its sole apparent use has been in connection with a phishing scheme aimed at Complainant's employees. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Hobby Lobby Stores, Inc. v. MD Nasir Bin, FA 1977384 (Forum Jan. 17, 2022) (finding lack of rights or interests in similar circumstances); Southwest Airlines Co. v. Herbert Mastro, FA 1974504 (Forum Dec. 28, 2021) (same).

 

Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.

 

Registration and Use in Bad Faith

Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site 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 [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."

 

Respondent used a privacy registration service and apparently fictitious underlying registration data to register a domain name incorporating Complainant's registered mark, and has used it in connection with a fraudulent phishing scheme targeting Complainant's employees. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Hobby Lobby Stores, Inc. v. MD Nasir Bin, supra (finding bad faith in similar circumstances); Southwest Airlines Co. v. Herbert Mastro, supra (same). The Panel so finds.

 

DECISION

Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <epicgames-vpn.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

David E. Sorkin, Panelist

Dated: July 14, 2022

 

 

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