Epic Games, Inc. v. Itmer Pure
Claim Number: FA1905001844737
Complainant is Epic Games, Inc. (“Complainant”), represented by Christopher M. Thomas of Parker Poe Adams & Bernstein LLP, North Carolina, USA. Respondent is Itmer Pure (“Respondent”), Estonia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <epicgmes.com> (“Domain Name”), registered with GoDaddy.com, 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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 23, 2019; the Forum received payment on May 23, 2019.
On May 24, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <epicgmes.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 28, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 17, 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@epicgmes.com. Also on May 28, 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 formal response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 20, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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 is a worldwide recognized creator of various video game series, game engines, and content creation tools. Complainant has rights in the EPIC GAMES mark (e.g. Reg. No. 2,527,709, registered Jan. 8, 2002) and the EPIC mark (e.g. Reg. No. 2,168,887, registered Jun. 30, 1998) based on registration with the United States Patent and Trademark Office (“USPTO”). Respondent’s <epicgmes.com> domain name is confusingly similar to Complainant’s EPIC GAMES mark, as it fully incorporates the mark while misspelling the word “games” and adding the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <epicgmes.com> domain name. Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the EPIC GAMES mark in any manner. Respondent’s use of the Domain Name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the Domain Name takes users to a third party website where users can pay to play games with adult content.
Respondent registered and is using the <epicgmes.com> domain name in bad faith. Respondent intentionally seeks to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Further, Respondent has engaged in typosquatting. Lastly, Respondent had actual or constructive knowledge of Complainant’s rights in Complainant’s EPIC GAMES mark.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. On May 29, 2019 the Forum received an e-mail, purportedly sent by Respondent, in which Respondent noted that it had purchased the Domain Name from an online marketplace, that it was bought to get backlinks for SEO purposes and that Respondent was prepared to sell or move it to Complainant.
Complainant holds trademark rights for the EPIC GAMES mark. The Domain Name is confusingly similar to Complainant’s EPIC GAMES mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the Domain Name in bad faith.
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 formal 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 rights in the EPIC GAMES mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (e.g. Reg. No. 2,527,709, registered Jan. 8, 2002). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
The Panel finds that the <epicgmes.com> Domain Name is confusingly similar to the EPIC GAMES mark as it fully incorporates the EPIC GAMES mark other than the letter “a” and then adding only the “.com” gTLD. The creation of a domain name that uses (in the opinion of the Panel) a common misspelling of a domain name does not distinguish the domain name from the mark. See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank’); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the 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) and 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.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the EPIC GAMES mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Itmer Pure” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name is presently inactive but prior to the commencement of the proceeding resolved to a third party website where users pay to play games with adult content. Given Complainant’s reputation as a provider of video game series and related gaming content it is apparent that the purpose of this Domain Name was to capture people looking for Complainant’s gaming content and divert them to Respondent’s gaming content. Using a domain name to divert internet users to third party websites is not indicative of a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) and (iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Name, December 16, 2017 (or at the date Respondent asserts that it acquired the Domain Name, October 22, 2018) Respondent had actual knowledge of Complainant’s EPIC GAMES mark. There is no plausible explanation (and Respondent does not provide one) for a party engaged in the gaming business to register as a domain name a misspelling of Complainant’s Mark other than in awareness of Complainant’s EPIC GAMES mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Name in bad faith to create confusion with Complainant’s EPIC GAMES Mark for commercial gain by using the confusingly similar Domain Name to resolve to a website containing a gaming product that users had to pay to play. Use of a confusingly similar domain name to redirect Internet users to a website containing competing services for commercial gain is indicative of bad faith registration and use per Policy ¶ 4(b)(iv). See Zoetis Inc. and Zoetis Services LLC v. Paul Adams / zoetismail, FA 1729095 (Forum June 5, 2017) (holding that the respondent registered and used the <zoetismail.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).
The Panel finds 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 <epicgmes.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: June 22, 2019
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