Epic Games, Inc. v. Super Privacy Service LTD c/o Dynadot
Claim Number: FA2001001880942
Complainant is Epic Games, Inc. (“Complainant”), represented by Christopher M. Thomas of Parker Poe Adams & Bernstein LLP, US. Respondent is Super Privacy Service LTD c/o Dynadot (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <epicgames.store>, registered with Dynadot, LLC.
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 January 28, 2020; the Forum received payment on January 28, 2020.
On January 29, 2020, Dynadot, LLC confirmed by e-mail to the Forum that the <epicgames.store> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the names. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 January 31, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 20, 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@epicgames.store. Also on January 31, 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 February 25, 2020, 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 <epicgames.store> domain name is confusingly similar to Complainant’s EPIC GAMES STORE mark.
2. Respondent does not have any rights or legitimate interests in the <epicgames.store> domain name.
3. Respondent registered and uses the <epicgames.store> domain name in bad faith.
B. Respondent failed to file a Response in this proceeding.
Complainant, Epic Games, Inc., is a creator, developer, and publisher of video games and content-creation software. Complainant holds a registration for the EPIC GAMES STORE mark with the World Intellectual Property Organization (“WIPO”) (Reg. No. 1,487,600, registered Jul. 3, 2019.)
Respondent registered the <epicgames.store> domain name on September 22, 2019, and offers it for sale.
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 rights in the EPIC GAMES STORE mark under Policy ¶ 4(a)(i) based upon its registration with the WIPO. ECCO SKO A/S v. Oleg Shilo, FA 1727024 (Forum June 13, 2017) (“Complainant has rights in the mark through its registration with the World Intellectual Property Organization (“WIPO”)”).
Respondent’s <epicgames.store> domain name uses the EPIC GAMES STORE mark and simply inserts a period, which is irrelevant in determining whether the domain name is confusingly similar to the mark under Policy ¶ 4(a)(i). See TechSmith Corporation v. Cao Xiaoxia, FA 1732972 (Forum June 26, 2017) (“The addition of a period to a mark does not remove the result from the realm of confusing similarity.”). The Panel finds that Respondent’s <epicgames.store> domain name is confusingly similar to Complainant’s EPIC GAMES STORE mark.
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 argues that Respondent has no rights or legitimate interests in the <epicgames.store> domain name. Specifically, Complainant argues Respondent is not licensed or authorized to use the EPIC GAMES STORE mark and is not commonly known by the disputed domain name. The WHOIS information of record identifies Respondent as “Super Privacy Service LTD c/o Dynadot.” The Panel therefore finds that Respondent is not commonly known by the disputed domain name, and thus has no rights under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 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.) see also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
Complainant also argues that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant provides screenshots of the website resolving from Respondent’s disputed domain name, which shows Respondent put the disputed domain name up for sale immediately after registering it. The Panel finds that this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent lacks rights under Policy ¶¶ 4(c)(i) and (iii). See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant further argues that Respondent registered the <epicgames.store> domain name with actual knowledge of Complainant’s rights in the EPIC GAMES STORE mark. Registering a domain name with knowledge of another’s rights therein may indicate of bad faith under Policy ¶4(a)(iii). See Norgren GmbH v. Domain Admin / Private Registrations Aktien Gesellschaft, FA1501001599884 (Forum Feb. 25, 2014) (holding that the respondent had actual knowledge of the complainant and its rights in the mark, thus demonstrating bad faith registration under Policy ¶ 4(a)(iii), where the respondent was using the disputed domain name to purposely host links related to the complainant’s field of operation); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration). Complainant argues that, given the publicity that Complainant’s mark received immediately preceding Respondent’s registration of the disputed domain name, it is inconceivable that Respondent registered the <epicgames.store> domain name without knowledge of Complainant and its EPIC GAMES STORE mark. The Panel agrees and finds that Respondent registered the <epicgames.store> domain name with actual knowledge of Complainant’s rights in the EPIC GAMES STORE mark, demonstrating bad faith under Policy ¶4(a)(iii).
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 <epicgames.store> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: February 25, 2020
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