NaturalMotion Limited v. Bimal Pun
Claim Number: FA1903001835466
Complainant is NaturalMotion Limited (“Complainant”), represented by Peter Kidd of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Bimal Pun (“Respondent”), Belgium.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <csr2.top>, registered with 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 22, 2019; the Forum received payment on March 22, 2019.
On March 24, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <csr2.top> 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 March 27, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 16, 2019 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@csr2.top. Also on March 27, 2019, 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 18, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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
1. Respondent’s <csr2.top> domain name is confusingly similar to Complainant’s CSR and CSR RACING 2 marks.
2. Respondent does not have any rights or legitimate interests in the <csr2.top> domain name.
3. Respondent registered and uses the <csr2.top> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a leading games and technology company based in Oxford, London, Brighton, and San Francisco. Complainant has rights in various marks incorporating the CSR brand, and holds a registration for the CSR mark (Reg. No. 12715652, registered Aug. 1, 2014) with the Office for Harmonization in the Internal Market (“OHIM”), and for the CSR RACING 2 mark (Reg. No. 20841496, registered Sep. 28, 2017) with the China’s State Administration for Industry and Commerce (“SAIC”).
Respondent registered the <csr2.top> domain name on July 1, 2016, and uses it to conduct a phishing scheme.
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”).
The Panel finds that Complainant has established rights in the CSR and CSR RACING 2 marks for the purposes of Policy ¶ 4(a)(i) through registration with the OHIM and the SAIC. See Teleflex Incorporated v. Leisa Idalski, FA 1794131 (Forum July 31, 2018) (“Registration of a mark with governmental trademark agencies is sufficient to establish rights in that mark for the purposes of Policy ¶ 4(a)(i).”).
Complainant also claims to hold rights in the CSR2 mark, however does not currently hold a trademark registration for the mark. Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). Complainant argues that the CSR2 mark is commonly interchanged with the CSR RACING 2 mark, and provides evidence in support of that contention. Therefore, the Panel finds that Complainant also has rights in the CSR2 mark for the purposes of Policy ¶ 4(a)(i).
Respondent’s <csr2.top> domain name incorporates the dominant portion of Complainant’s marks, and simply adds the “.top” gTLD. The addition of a gTLD is considered irrelevant for the purposes of Policy ¶ 4(a)(i). See Bittrex, Inc. v. Privacy protection service - whoisproxy.ru, FA 1759828 (Forum Jan. 12, 2018) (“The Panel here finds that the <bittrex.market> domain name is identical to the BITTREX mark under Policy ¶4(a)(i).”). The addition of a number to a mark likewise does not distinguish a domain name under the Policy. See Pandora Media, Inc. v. MASATAMI KITA, FA 1622614 (Forum July 20, 2015) (holding the <pandora1.com> domain name confusingly similar to the PANDORA trademark because the only difference between the two was the addition of the numeral “1”). The omission of the word RACING in Complainant’s CSR RACING 2 mark also does not distinguish the <csr2.top>, particularly when CSR2 is commonly interchanged with Complainant’s mark. See VNY Model Management, Inc. v. Lisa Katz / Domain Protection LLC, FA 1625115 (Forum Aug. 17, 2015) (finding that Respondent’s <vnymodels.com> domain name is confusingly similar to the VNY MODEL MANAGEMENT mark under Policy ¶ 4(a)(i).). The Panel therefore finds that the <csr2.top> domain name is confusingly similar to Complainant’s 2 registered marks, CSR and CSR RACING 2.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent has no rights or legitimate interests in the <csr2.top> domain name, as Respondent is not commonly known by the disputed domain name. Complainant has not authorized, licensed, or otherwise permitted Respondent to use the mark. The WHOIS identifies “Bimal Pun” as the registrant of the disputed domain name. The Panel thus finds that Respondent is not commonly known by the <csr2.top> domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same); see also Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”).
Complainant argues that Respondent is using the disputed domain name to access and manipulate data on Complainant’s servers, to benefit from click-through referral revenue, and to phish for user data. Using a confusingly similar domain name to compete with a complainant, to offer third-party links, or to phish for information is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy. See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”); see also Barclays PLC v. Antwan Barnes, FA 1806411 (Forum Oct. 20, 2018) (“Using a domain name to offer links to services in direct competition with a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).”); see also Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) (“On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”). Complainant provides a screenshot of the resolving webpage, which shows that Respondent displays Complainant’s CSR2 mark and logo on the webpage and uses the domain name in connection with a hacking tool, and offers a survey for users to complete to allegedly win gift cards. The Panel finds that Respondent’s use of the disputed domain name provides evidence that Respondent lacks rights and legitimate interests under Policy ¶¶ 4(c)(i) and/or (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent uses the domain name to divert Complainant’s customers to its own website for commercial gain, which disrupts Complainant’s business. The Panel agrees and finds that Respondent disrupts Complainant’s business and attempts to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv). See Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”); see also Colin LeMahieu v. NANO DARK, FA 1786065 (Forum June 9, 2018) (Finding bad faith under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv) where the respondent used the domain name to offer competing cryptocurrency products).
Complainant has shown that Respondent uses the <csr2.top> domain name to phish for consumer information, and argues bad faith. The Panel agrees and finds that Respondent’s attempt to phish for Internet users’ personal information constitutes bad faith under Policy ¶ 4(a)(iii). See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”).
Complainant also claims that Respondent registered the <csr2.top> domain name within two days of Complainant releasing the CSR RACING 2 game. Under the Policy, this argument is known as opportunistic bad faith, which can support a finding of bad faith under Policy ¶ 4(a)(iii). See Arizona Board of Regents, for and on behalf of Arizona State University v. Weiping Zheng, FA1504001613780 (Forum May 28, 2015) (finding that the respondent had acted in opportunistic bad faith according to Policy ¶ 4(a)(iii), when it registered the disputed domain name just one week after the complainant filed applications to register the SUB DEVIL LIFE mark, and just days after those applications became public through the USPTO’s website). Complainant provides a press release from June 20, 2016, announcing the release of the game. The Panel notes that Respondent registered the <csr2.top> domain name on July 1, 2016. The Panel finds that Respondent opportunistically registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant contends that Respondent’s knowledge of its rights in the CSR marks can be inferred from the timing of registration of the disputed domain name, along with the fame and notoriety of the marks and Respondent’s direct references to Complainant’s products, services, trademarks and copyrighted material. The Panel agrees and finds that Respondent had actual knowledge of Complainant’s CSR marks, demonstrating bad faith registration under Policy ¶ 4(a)(iii).See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <csr2.top> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 19, 2019
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