Bethesda Softworks LLC v. BEN ROSS
Claim Number: FA1510001640488
Complainant is Bethesda Softworks LLC (“Complainant”), represented by David M. Kramer of DLA Piper LLP, District of Columbia, USA. Respondent is BEN ROSS (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fallout4beta.com>, registered with eNom, 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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 1, 2015; the Forum received payment on October 1, 2015.
On October 2, 2015, eNom, Inc. confirmed by e-mail to the Forum that the <fallout4beta.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 October 2, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 22, 2015 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@fallout4beta.com. Also on October 2, 2015, 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 October 30, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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.
Complainant
Complainant uses the FALLOUT mark in connection with its well-known video game series bearing the mark. Complainant has rights in the FALLOUT mark through registration of the mark with trademark agencies throughout the world, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,181,084, registered August 11, 1998). Respondent’s disputed domain <fallout4beta.com> domain name is confusingly similar to Complainant’s FALLOUT mark. The disputed domain only adds the number “4,” the generic term “beta,” and the generic top-level domain “.com,” which is not sufficient to differentiate the domain from Complainant’s mark.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been licensed or otherwise permitted to use the FALLOUT mark. Additionally, Respondent uses the disputed domain to phish for personal information from users who are interested in participating in a beta test of Complainant’s game. This use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent registered and is using the disputed domain name in bad faith. Respondent is presumably commercially benefitting from users who incorrectly believe Respondent’s <fallout4beta.com> domain is associated with Complainant. Further, Respondent had knowledge of Complainant’s FALLOUT mark based on the fame of the mark and the use of the disputed domain. Finally, Respondent opportunistically registered the disputed domain name on the same day as Complainant announced its forthcoming FALLOUT 4 game.
Respondent
Respondent did not submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <fallout4beta.com> domain name.
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant, Bethesda Softworks LLC, is a premier developer and publisher of video games. One of Complainant’s most popular video game series, FALLOUT, has been offered in various iterations since 1997. Complainant states that it has rights in the FALLOUT marks based on registration of the mark with multiple trademark agencies throughout the world including the USPTO (e.g., Reg. No. 2,181,084, registered August 11, 1998). Panels consistently find that a complainant’s registration of a mark with the USPTO demonstrates rights in the registered mark. See Enter. Rent-a-Car Co. v. BGSvetionik, FA 925273 (Nat. Arb. Forum Apr. 11, 2007) (finding that the complainant’s timely registration with the USPTO and “subsequent use of the ENTERPRISE mark for over 20 years sufficiently establishes its rights in the mark pursuant to Policy ¶ 4(a)(i).”). The Panel accordingly finds that Complainant has rights in the FALLOUT mark.
Complainant argues that Respondent’s domain <fallout4beta.com> is confusingly similar to the FALLOUT mark. The disputed domain incorporates the entire FALLOUT mark and adds the number “4,” the generic term “beta,” and the generic top-level domain “.com.” Past panels have found that the presence of a gTLD such as “.com” is not relevant when analyzing confusing similarity. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Similarly, generic terms and numbers added to a mark do not sufficiently distinguish a domain name from a registered mark. See Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that the respondent’s domain name <go2AOL.com> was confusingly similar to the complainant’s AOL mark). Therefore, the Panel holds that Respondent’s <fallout4beta.com> is confusingly similar to Complainant’s FALLOUT mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed 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 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. 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 claims that Respondent has no rights or legitimate interests in the disputed domain name. Complainant asserts that Respondent has not been licensed or otherwise permitted to use the FALLOUT mark. The WHOIS information identifies the registrant of record as “BEN ROSS.” Past panels have found that a respondent is not commonly known by a disputed domain name based on a lack of evidence to the contrary, including available WHOIS information or authorization from a complainant. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Pursuant to Policy ¶ 4(c)(ii) the Panel finds that Respondent is not commonly known by the disputed domain name.
Complainant argues that Respondent’s use of the disputed domain, to phish for personal information from users who are interested in participating in a beta test of Complainant’s game, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s website displays the text, “Get Your Fallout 4 Beta Keys Now… We now have 100 of these Fallout 4 Beta keys to giveaway to you guys… To Claim your free Fallout 4 Beta Key, just click on your desired platform below.” Presumably, users seeking beta keys will click on one of the links on Respondent’s domain and be required to enter personal information. Panels have found that using a domain that is confusingly similar to a complainant’s mark to phish for personal information is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”) The Panel therefore finds that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Complainant has proved this element.
Complainant claims that Respondent registered and is using the disputed domain name in bad faith. Complainant argues that Respondent is presumably commercially benefitting from users who incorrectly believe Respondent’s <fallout4beta.com> domain is associated with Complainant. As stated above, Respondent claims to have beta keys for Complainant’s highly anticipated upcoming game and encourages users to click on links provided in order to receive a key. The domain also makes extensive use of the stylized FALLOUT mark on the domain. Panels have found bad faith where the respondent used a complainant’s mark to attract internet users to its own website for commercial gain. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”). The Panel finds that Respondent is taking economic advantage of the similarity between the domain and the FALLOUT mark, and therefore finds that Respondent has acted in bad faith under Policy ¶ 4(b)(iv).
Complainant also contends that in light of the fame and notoriety of Complainant's FALLOUT mark and extensive use of the mark on the disputed domain name, it is inconceivable that Respondent could have registered the <fallout4beta.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. 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).
Complainant claims that Respondent has demonstrated opportunistic bad faith by registering the disputed domain name on the same day that Complainant announced its upcoming FALLOUT 4 game. Respondent registered the disputed domain name on June 3, 2015, which Complainant states is the same day that it announced FALLOUT 4. Respondent’s domain states, “On the 3rd of June 2015, Bethesda Softworks released the greatly anticipated Fallout 4 Trailer.” Panels have found bad faith where a respondent registered a confusingly similar domain within 24 hours of a public announcement. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (“If there had been any doubt as to bad faith, the fact that registration was on the same day the news leaked about the merger, which was put in evidence, is a compelling indication of bad faith that [the] respondent has to refute and which he has failed to do. The panel finds a negative inference from this.”); Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”). The Panel finds that Respondent’s registration was related to Complainant’s announcement and therefore finds that Respondent registered and is using the domain in bad faith.
Complainant has proved this element.
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 <fallout4beta.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: November 6, 2015
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