Demonware Ltd. v. Jonathan McClintock
Claim Number: FA2110001967333
Complainant is Demonware Ltd. (“Complainant”), represented by Adam D. Mandell of Millen, White, Zelano & Branigan, P.C., Virginia, USA. Respondent is Jonathan McClintock (“Respondent”), Kentucky, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <labdemon.xyz>, registered with Google LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Charles A. Kuechenmeister, Chair
David Safran, Panelist
Dennis A. Foster, Panelist
Complainant submitted a Complaint to the Forum electronically on October 1, 2021; the Forum received payment on October 1, 2021.
On October 4, 2021, Google LLC confirmed by e-mail to the Forum that the <labdemon.xyz> domain name (the Domain Name) is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 October 11, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of November 1, 2021 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@labdemon.xyz. Also on October 11, 2021, 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 November 9, 2021 pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Charles A. Kuechenmeister, David Safran and Dennis Foster as Panelists.
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 provides technical support for video game developers. It has common law rights in the DEMONWARE mark, based upon its longstanding use of that mark in connection with its business operations. Respondent’s <labdemon.xyz> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the dominant DEMON element of Complainant’s mark, merely adding the word “lab” and the “.xyz” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the Domain Name. Respondent is not commonly known by the Domain Name and Complainant has not authorized or licensed Respondent to use its DEMONWARE mark. Respondent is not using the Domain Name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use, but instead offers for sale software which facilitates cheating in violation of the terms of service of its video game developer customers, and illegal hacking codes.
Respondent registered and is using the Domain Name in bad faith. Respondent is attempting for commercial gain to attract Internet users to its web site by creating confusion as to the source, sponsorship, affiliation or endorsement of its web site by Complainant, and offers for sale at that web site software which facilitates cheating in violation of the terms of service of its video game developer customers, and illegal hacking codes. Respondent’s registration of the Domain Name also prevents Complainant from reflecting its mark in a corresponding domain name and exhibits a pattern of bad faith registration and use. Respondent uses the Domain Name to disrupt Complainant’s business.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 the complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the 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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. 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”), WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), at ¶ 4.3 (“In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent’s default—a complainant has failed to prove its case.”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
Complainant has not registered its DEMONWARE mark with any governmental trademark authority. Nevertheless, a complainant need not show registration of its mark to establish rights in a mark in order to meet the requirements of Policy ¶ 4(a)(i). If proven, common law rights are sufficient to establish rights for the purposes of Policy ¶ 4(a)(i). Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (“A complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out”.), Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Common law rights in a trademark can be established by evidence of secondary meaning, which is proven by showing exclusive use of the mark in commerce for a period of time, evidence of advertising and sales, recognition of the mark by customers, unsolicited media attention, or other evidence showing that the relevant consuming public has come to associate the mark with goods or services provided by a single vendor. Karen Koehler v. Hiroshi Ishiura/ Lifestyle Design Inc., FA 1730673 (Forum June 1, 2017) (holding that Complainant established common law rights in her personal name since “[a] mark can generate a secondary meaning sufficient to establish Complainant’s rights when consistent and continuous use of the mark has created distinctive and significant good will . . . . Complainant has published under the KAREN KOEHLER name extensively, and Complainant’s legal skills have been recognized by various organizations and groups with extensive positive media coverage. Complainant also operates an online blog associated with the KAREN KOEHLER mark.”), Gourmet Depot v. DI S.A., FA 1378760 (Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). The WIPO Overview 3.0” ¶ 1.3 lists a number of factors that support a claim of common law trademark rights, including “(i) the nature and duration of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.”
Complaint Exhibit 5 is a declaration by John Kirk, who is employed by Complainant as its Studio Head. He is familiar with the formation of Complainant, the goods and services offered under the DEMONWARE trademark (the “Demonware Mark”), and media attention garnered by the Demonware Mark. Complainant was formed in Dublin, Ireland in June 2003. The goal of the company was to provide online support for game development studios. Complainant supported its first game launches in 2005, including its first title with Activision. In the following year, Complainant expanded its customer base to include other notable game publishers. Since 2007, Complainant has been the exclusive provider of in-game online services for Activision games including CALL OF DUTY®. All of this activity has been pursued by Complainant under its DEMONWARE mark. Complainant presently has over 250 employees spread across Europe, Asia, and North America.
Complainant provides numerous exhibits (Complaint Exhibits 12-15) showing the DEMONWARE mark’s use in multiple scenarios, including on the covers of products supported by Complainant (Complaint Exhibit 7), in Complainant’s marketing materials, and its mention in articles and conference presentations written about Complainant, as well as sources demonstrating global recognition of the products developed by the company under the DEMONWARE mark. Complainant Exhibit 12, for example, is an article published on the <polygon.com> web site in 2013 which is some ten pages long and describes Complainant’s history dating from 2007 and details the services furnished and methods utilized by Complainant, all under the DEMONWARE mark. On this evidence, the Panel finds that Complainant has common law rights in the DEMONWARE mark sufficient to meet the requirements of Policy ¶ 4(a)(i).
Respondent’s <labdemon.xyz> Domain Name is identical or confusingly similar to the DEMONWARE mark. It incorporates the dominant DEMON element of that mark verbatim, merely adding the generic term “lab” in front, omitting the WARE element of the mark and adding the “.xyz” gTLD. These changes are not sufficient to distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Sainato's Restaurant and Catering Limited v. chen xue ming, FA 1781748 (Forum June 4, 2018) (finding the <sainatos.com> domain name is confusingly similar to the SAINATO’S RESTAURANT mark as it “appends the gTLD “.com” to an abbreviated version of the mark.”), Avnet, Inc. v. AVNet Labs / Ekerete Akpan, FA1339078 (Forum Sept. 27, 2010) (“ . . . many prior UDRP panels have found confusing similarity between disputed domain names and trademarks when the trademark is fully incorporated into the name and combined with a generic term. This is particularly true when the generic term can relate to a complainant’s business, as in this case where “labs” and “hosts” are related commonly to Complainant’s field of computer consulting”). The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within the Domain Name.
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the DEMONWARE mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) Before any notice to the respondent of the dispute, the respondent’s use 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;
(ii) The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) Respondent has not been commonly known by the Domain Name, (ii) Respondent is not an agent or licensee of Complainant and Complainant has not authorized Respondent to use its mark, and (iii) Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use because it is using the name to attract Internet users to a site which sells software which facilitates cheating in violation of the terms of service of its video game developer customers, and illegal hacking codes. These allegations are addressed as follows:
The WHOIS information furnished to the Forum by the registrar lists “Jonathan McClintock” as the registrant of the Domain Name. This name bears no resemblance to the Domain Name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, and in cases where no response has been filed, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. 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), 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). The Panel is satisfied that Respondent has not been commonly known by the Domain Name for the purposes of Policy ¶ 4(c)(ii).
Complainant states that Respondent is not an agent or licensee of Complainant. Implicit in this statement is the fact that Complainant has never authorized or permitted Respondent to use its mark. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
Complaint Exhibit 14 consists of screenshots of pages from the web site resolving from the Domain Name. It purports to offer ESP and Aimbot software under the brand name “DemonWare” and features the catch phrase “Play Different.” Complainant states that the Domain Name resolved to this web site as of September 11, 2021 but as of the filing date resolved to a web site located at <demonware.gg>, screenshots of which are submitted as Complaint Exhibit 15. This web site also features the brand name “DemonWare” and the “Play Different” phrase. It emphasizes its software as being capable of avoiding detection. Complainant states that the ESP and Aimbot products are considered serious cheating offenses, as they give players an unfair competitive advantage in video games. Exhibits 16 and 17 are Terms of Service published by Activision, a video game developer which uses Complainant’s products and appears to be a very important, if not a primary customer of Complainant. Both versions expressly prohibit the use of any unauthorized software to gain an advantage in any game published by Activision, including cheats, bots, hacks, or engaging in any form of cheating (Exhibit 16 ¶ A(8), Exhibit 17 ¶ C(i)). Respondent thus provides precisely the kinds of tools that are prohibited under Activision’s Terms and Conditions, and in effect actively encourages and promotes the violation of these Terms and Conditions by consumers who use Activision products. Using a confusingly similar domain name to promote a cheating violation of the terms and conditions of a video game developer is neither a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use as contemplated by Policy ¶ 4(c)(iii). Nintendo of America Inc. v. Hemery, FA1892061 (Forum May 25, 2020) (ordering transfer where the domain name resolved to a website that marketed n“cheats” for complainant’s games. “The Panel concludes that the purpose of this exercise is to market and promote unauthori[z]ed use of [c]omplainant’s systems. That is, in order to distribute software intended to “hack” [c]omplainant’s games.”).
Complaint Exhibit 18 is a screenshot of pages of a web site located at <demonware,tech>, which Complainant alleges is the subject of another UDRP proceeding against this same Respondent. This web site uses the “DemonWare” brand and displays the same logos as the Exhibits 14 and 15 web sites discussed above. One of the pages states as follows: “Banned from Tarkov? Banned from using cracked LD? Need a transaction that’s automated & instant? Want to make your own account? DemonWare solves all these problems for you. DemonWare offers a brand new EFT Account solution that’s automated, secure, and instant. With only a 4-step installation guide, you’ll be back in the game hacking quicker.” This advertises a means of circumventing security measures imposed by video game providers to prevent persons who have been found to cheat from playing the games. Complainant alleges that this conduct is illegal but furnishes no evidence of or citations to any statutes or other laws which prohibit this conduct. It may in fact be illegal or unlawful, but Complainant has offered nothing in support of that allegation. Nevertheless, this conduct is still dishonest, and facilitates a violation of the terms and conditions of the relevant video game developer. As discussed immediately above, it is neither a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use as contemplated by Policy ¶ 4(c)(iii). Nintendo of America Inc. v. Hemery, Id.
The evidence furnished by Complainant establishes the required prima facie case. On that evidence, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the 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 the respondent’s web site or location or of a product of service on the respondent‘s web site or location.
The evidence of Respondent’s conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use, based upon one or more of the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, Respondent is using a confusingly similar domain name to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web site. Commercial gain derives from the sale of cheating and hacking software as described above. This conduct clearly fits within the circumstances articulated by Policy ¶ 4(b)(iv). Nintendo of America Inc. v. Hemery, Id. (bad faith found where respondent distributed software intended to “hack” Complainant’s games, enabling users to circumvent complainant’s copyright protections), NaturalMotion Limited v. Qurzunta Kaab, FA1780103 (Forum Apr. 26, 2018) (bad faith found where the resolving website offered unauthorized “mod” and “cheat” software).
Complainant alleges that Respondent’s conduct disrupts its business, which implicates the provisions of Policy ¶ 4(b)(iii). There is no question that Respondent’s use of the Domain Name is disruptive of Complainant’s business. It is evident from the emphasis the Complaint places upon Complainant’s relationship with Activision and the extent to which Complainant’s mark appears on products marketed and sold by Activision (photos of the covers of Activision games submitted as Complaint Exhibit 7) that Activision is a major, if not the primary client of Complainant. Respondent is using the Domain Name to attract Internet traffic to a web site which, passing off as Complainant, offers software that enables consumers to cheat at video games produced by Activision, in violation of the Terms and Conditions pursuant to which Activision licenses consumers to use its products. It might be argued that Respondent is not passing off as Complainant because Respondent’s products are antithetical to the interests of Complainant, whose business is to support Activision, not to provide consumers with the means to frustrate its objectives. Nevertheless, Respondent is blatantly using the DEMONWARE mark to identify itself on its web sites, and it offers products that are in the same industry and therefore similar to the types of products or services Complainant does provide. There is at first a temptation to find that, because of the opposing interests, Respondent cannot be impersonating or passing off as Complainant, but on further reflection it is also clear that Respondent, posing as Complainant, promotes the notion that because of its familiarity with Activision’s methods and practices, it is uniquely suited and able to produce a product that can successfully cheat on and avoid detection by Activision. Respondent is thus presenting itself as Complainant, who is known to support Activision but who is also at the same time working to frustrate an important business objective of Activision, i.e., prevent cheating. This is certainly disruptive of Complainant’s business. Even though Respondent’s conduct affects Activision most directly, Complainant also experiences disruption because of the close and sensitive nature of the relationship between it and its customer.
At the same time, however, there is no evidence that Respondent is a competitor of Complainant. A number of UDRP panels have found that using a confusingly similar domain name to disrupt the business of a complainant was bad faith for the purposes of Policy ¶ 4(b)(iii), even when the respondent was not a competitor. Others have essentially by-passed the competition factor, focusing instead on disruption, and have simply found bad faith under ¶ 4(b)(iii), without further discussion or analysis.[i]
Policy ¶ 4(b)(iii) reads as follows: “you [the respondent] have registered the domain name primarily for the purposes of disrupting the business of a competitor” (emphasis supplied). The concept of “competition” in the context of Policy ¶ 4(b)(iii) has been subject to various interpretations by UDRP panels. Some have interpreted that term broadly to mean someone who “acts in opposition to the complainant.” Mission KwaSizabantu v. Benjamin Rost, Case No. 2000-0279 (WIPO June 7, 2000). Others have limited the term to parties who vie commercially with each other in the same industry, offering the same or similar goods or services. Tribeca Film Center Inc. v. Lorenzo Brusasco-Mackenzie, Case No. 2000-1772 (WIPO April 10, 2000). This Panel favors the second view, concurring with the panel in Britannia Building Society v. Britannia Fraud Prevention, Case No. 2001-0505 (WIPO July 8, 2001) that to accept the interpretation first above described would “render so many parties ‘competitors’ as to dilute the Policy’s bad faith requirement beyond recognition.” Clearly, Respondent here is not vying with Complainant for customers in the video game support industry, offering its own wares as alternatives to those offered by Complainant. These parties may operate in the video game industry, but their products are much different and they sell them to completely different markets. Respondent attracts business to its web site by using a confusingly similar domain name but is not competing with Complainant. Further, there is another aspect of the concept of competition that must be considered. In order for a respondent’s conduct to fall within ¶ 4(b)(iii), the competition must exist before the domain name is registered. Otherwise, the language of ¶ 4(b)(iii), paraphrased as “you registered the domain name primarily to disrupt the business of a competitor,” simply does not apply. The competition must exist before the registration. In this case the Complainant and the Respondent were not competitors when the Domain Name was registered. Even if there were presently any actual competition between them, it would have arisen only after Respondent registered and began using the Domain Name as it now is. In the absence of actual commercial competition between Complainant and Respondent, Respondent here cannot be considered a competitor for the purposes of Policy ¶ 4(b)(iii).
Even if Complainant and Respondent were deemed competitors for the purposes of Policy ¶ 4(b)(iii), it does not appear that Respondent registered the Domain Names primarily for the purpose of disrupting Complainant’s business. On the contrary, the evidence is fairly clear that Respondent’s primary purpose in registering the Domain Names was not to disrupt the business of a commercial adversary but instead to attract internet traffic to its web site by creating confusion as to the source, sponsorship, affiliation or endorsement of that site, as discussed above in the context of Policy ¶ 4(b)(iv). Respondent’s conduct does not fall within the circumstances stated in Policy ¶ 4(b)(iii).
That said, using a confusingly similar domain name to attract Internet traffic to a web site which offers products that enable a consumer to evade the Terms of Service applicable to video games which Complainant supports disrupts the business of Complainant and is still bad faith. Policy ¶ 4(b) recognizes that mischief can assume many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005), Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are merely illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and using a confusingly similar domain name to disrupt the business of a complainant by promoting and selling cheating and hacking software as Respondent does here is sufficient evidence of bad faith to meet the requirements of Policy ¶ 4(a)(iii). Respondent’s primary intent in registering and continuing to use the Domain Name is less important than the effect of his conduct. Respondent knew or should have known the disruptive impact its conduct would have upon Complainant’s business. Respondent went forward with its plans in spite of that and this demonstrates bad faith independently of Policy ¶ 4(b)(iii). Red Wing Shoe Company, Inc. v. wei zhang / Magdalena Jennifer / Mu Yan / Carolina Rodrigues / Fundacion Comercio Electronico, FA1911001873163 (Forum Jan. 3, 2020).
Finally, although not specifically alleged by Complainant, it is evident that Respondent had actual knowledge of Complainant and its mark when it registered the Domain Name in February 2021 (the WHOIS report submitted as Complaint Exhibit 1 shows creation date). At that time Complainant had been using its DEMONWARE mark since 2003. Respondent copied the dominant element of that mark into the Domain Name and uses the mark prominently in its web site (screenshot of Respondent’s site submitted as Complaint Exhibit 15). Again, the non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and registering a confusingly similar domain name with actual knowledge of a complainant’s rights in its mark has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
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 <labdemon.xyz> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
David Safran, Panelist
Dennis A. Foster, Panelist
November 16, 2021
[i] PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)), Love City Brewing Company v. Anker Fog / Love City Brewing Company, FA 1753144 (Forum Nov. 27, 2017) (Finding that Respondent disrupts Complainant’s business by pointing Internet users to an expired webpage. This may create the perception that Complainant is closed, never existed, or is not a legitimate business. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iii).).
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