Epic Games, Inc. v. Hillary Putin
Claim Number: FA2206001999351
Complainant is Epic Games, Inc. (“Complainant”), represented by Christopher M. Thomas of Parker Poe Adams & Bernstein LLP, North Carolina, USA. Respondent is Hillary Putin (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <epicgames-okta.com>, registered with NameCheap, Inc..
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 7, 2022; the Forum received payment on June 7, 2022.
On June 7, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <epicgames-okta.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 10, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 30, 2022 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-okta.com. Also on June 10, 2022, 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 July 7, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
The Complainant is a creator, developer, and publisher of video games, game engine, and content-creation software. Complainant has rights in the EPIC GAMES trademark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,527,709, registered on Jan. 8, 2002). Respondent’s <epicgames-okta.com> domain name is identical or confusingly similar to Complainant’s EPIC GAMES trademark as it incorporates the trademark in its entirety while adding a hyphen, the generic word “okta”, and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <epicgames-okta.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its EPIC GAMES trademark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead previously operated a phishing scheme and currently resolves to an inactive webpage.
Respondent registered and uses the <epicgames-okta.com> domain name in bad faith. Respondent disrupts Complainant’s business by operating a phishing scheme. Additionally, Respondent attracts users for commercial gain while causing consumer confusion as to the source of the website. Furthermore, Respondent’s domain name is currently inactive. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the EPIC GAMES trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 2,168,887 EPIC (word), registered June 30, 1998 for goods and services in Intl Classes 9 and 42;
No. 2,527,709 EPIC GAMES (word with disclaimer for the word “GAMES”), registered January 8, 2002 for goods and services in Intl Classes 9 and 42; and
No. 5,712,420 EPIC GAMES (word with disclaimer for the word “GAMES”), registered April 2, 2019 for goods and services in Intl Classes 9, 25, 35, 41 and 45.
The <epicgames-okta.com> domain name was registered on June 3, 2022.
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 Complainant claims rights in the EPIC GAMES trademark through its registration with the USPTO (e.g. Reg. No. 2,527,709, registered on Jan. 8, 2002). Registration with the USPTO is generally sufficient in demonstrating rights in a trademark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). The Panel find that Complainant has rights in the trademark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <epicgames-okta.com> domain name is identical or confusingly similar to Complainant’s EPIC GAMES trademark. Under Policy ¶ 4(a)(i), a domain name is generally considered confusingly similar to the trademark it incorporates where it adds a hyphen and the “.com” gTLD. See ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug, 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”). Additionally, a domain name is considered confusingly similar where it adds a generic term. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). The disputed domain name adds a hyphen, the generic word “okta”, which is the name of Complainant’s employee platform, along with the “.com” gTLD. The Panel notes that the word “okta” is a meteorology word, meaning a unit of measurement used to describe the amount of cloud cover at any given location. However, the Complainant operates a password-protected website for its employees through its cloud-computing vendor Okta, meaning that the word “okta” in the disputed domain name rather further relates to – in identify – the Complainant’s trademark EPIC GAMES. Therefore, the Panel agrees with the Complainant’s conclusion, and find that Respondent’s domain name is at least confusingly similar to Complainant’s trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See 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.”).
Complainant argues that Respondent is not commonly known by the <epicgames-okta.com> domain name, nor has Complainant authorized or licensed Respondent to use its EPIC GAMES trademark in the disputed domain name. Under Policy ¶ 4(c)(ii), WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name. 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). Here, the WHOIS information identifies Respondent as “Hillary Putin” and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its trademark in the disputed domain name. The Panel therefore find that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant contends that Respondent is not using the <epicgames-okta.com> domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to engage in a phishing scheme does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Google Inc. v. Pritam Singh / Pandaje Technical Services Pvt Ltd., FA 1660771 (Forum Mar. 17, 2016) (agreeing that respondent has not shown any bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii) as the respondent used the complainant’s mark and logo on a resolving website containing offers for technical support and password recovery services, and soliciting Internet users’ personal information). Complainant provides a screenshot of the disputed domain name’s previous resolving website, which displays an employee login which mimicked Complainant’s own employee login. Additionally, Complainant provides a screenshot of a text sent to one of Complainant’s employees, saying “WARNING!! Your Epicgames Okta Access is being deactivated, to keep active, please head to Epicgames-okta.com”, which Complainant asserts was an attempt to obtain access to Complainant’s employee’s login username and passwords. Thus, the Panel agrees, and may find that Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Furthermore, Complainant argues that Respondent is not using the <epicgames-okta.com> domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use by failing to make active use of the domain name. Under Policy ¶¶ 4(c)(i) and (iii), failure to make active use of a domain name does not constitute a bona fide offering of goods or services or any legitimate noncommercial or fair use. See CrossFirst Bankshares, Inc. v. Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”). Complainant provides a screenshot of the disputed domain name’s current resolving website, which remains inactive. The Panel therefore find that Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent registered and uses the <epicgames-okta.com> domain name in bad faith. Under Policy ¶ 4(b)(iii), using a disputed domain name to disrupt Complainant’s business by mimicking Complainant’s employee login page to facilitate a phishing scheme may be evidence of bad faith registration and use. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)). As noted above, Complainant has provided screenshots of the disputed domain name’s previous resolving website, which mimicked Complainant’s employee login page and which Respondent used to facilitate a phishing scheme to obtain access to Complainant’s employees’ personal login information. The Panel therefore clearly find that Respondent’s disruption of Complainant’s business contributes to a finding of bad faith registration and use under Policy ¶ 4(b)(iii).
Additionally, Complainant contends that Respondent registered and uses the <epicgames-okta.com> domain name in bad faith by gaining attraction for commercial gain. Under Policy ¶ 4(b)(iv), using a disputed domain name to attract internet users for commercial gain is evidence of bad faith registration and use. See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Again, as noted above, the Respondent has previously connected the disputed domain name to a website which mimicked Complainant’s employee login and sought to gain access to employee’s personal login information. Therefore, the Panel find that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Next, Complainant argues that Respondent registered and uses the <epicgames-okta.com> domain name in bad faith by creating consumer confusion as to the source and affiliation with Complainant. Under Policy ¶ 4(b)(iv), creating confusion among internet users regarding the source or affiliation of the website may be evidence of bad faith. See Am. Univ. v. Cook, FA 208629 (Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”). Based on the similarity between Complainant’s employee login page and Respondent’s previously resolving webpage, the Panel find that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant also contends that Respondent’s current failure to make active use of the <epicgames-okta.com> domain name contributes to a finding of bad faith. Under Policy ¶ 4(a)(iii), failure to make active use of a webpage is evidence of bad faith registration and use. See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”). Referring to Complainant’s screenshot of the domain name’s resolving website, which features no active content, the Panel agrees with Complainant, and find that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent registered the <epicgames-okta.com> domain name with bad faith actual knowledge of Complainant’s rights in the EPIC GAMES trademark. Under Policy ¶ 4(a)(iii), actual knowledge may be demonstrated by incorporation of a well-known mark into a disputed domain name, in addition to Respondent mimicking Complainant’s employee login page and fraudulently messaging its employees. See WordPress Foundation v. mich delorme / mich d dots tlds, FA1410001584295 (Forum Nov. 25, 2014) (“Because Respondent here relies on the WORDPRESS mark in the disputed domain name and also makes use of Complainant’s services at the resolving page, the Panel finds that Respondent had actual knowledge of Complainant’s mark, and that such knowledge evidences Policy ¶ 4(a)(iii) bad faith.”). As the Respondent it this case indeed has made several actions in order to give users the wrong impression that they have come to the Complainant’s web site, the Panel agrees, and find that Respondent had actual knowledge of Complainant’s rights in the EPIC GAMES trademark under 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-okta.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: July 18, 2022
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