Big Fish Games, Inc. v. Stepan Bandera
Claim Number: FA1809001804649
Complainant is Big Fish Games, Inc. (“Complainant”), represented by Jeffrey A. Nelson of Cairncross & Hempelmann PS, Washington, USA. Respondent is Stepan Bandera (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bigfishgames.club>, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 4, 2018; the Forum received payment on September 4, 2018.
On September 5, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <bigfishgames.club> 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 September 6, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 26, 2018 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@bigfishgames.club. Also on September 6, 2018, 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 1, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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. Complainant, Big Fish Games, Inc.,. is a leading developer and world-class publisher of a diverse collection of casual game franchises for computers and mobile devices. Complainant asserts rights in the (1) BIG FISH and (2) BIG FISH GAMES marks based upon its registration of the marks with the United States Patent and Trademark Office (“USPTO”) (e.g., (1) Reg. No. 5,086,840, registered Nov. 22, 2016, (2) Reg. No. 4,004,420, registered Aug. 2, 2011). Respondent’s <bigfishgames.club>[i] domain name is confusingly similar to Complainant’s marks because Respondent incorporates both of the marks in the domain name plus the “.club” generic top-level domain (“gTLD”).
2. Respondent lacks rights and legitimate interests in the <bigfishgames.club> domain name because Respondent is not commonly known by the domain name and is not authorized by Complainant to use the marks in any way.
3. Respondent fails to use the domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent uses the domain name to display adult-related content at the webpage associated with the domain name.
4. Respondent registered and uses the <bigfishgames.club> domain name in bad faith. Specifically, Respondent attempts to attract Internet users to the domain name to capitalize off the goodwill associated with Complainant’s marks. Respondent attracts Internet users in order to display pornographic content.
5. Furthermore, Respondent had actual or constructive knowledge of Complainant’s rights in the marks prior to registration of the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the BIG FISH and BIG FISH GAMES marks. Respondent’s domain name is confusingly similar to Complainant’s BIG FISH and BIG FISH GAMES marks. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <bigfishgames.club> domain name and that Respondent registered and uses 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 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 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 (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 has rights in the BIG FISH and BIG FISH GAMES marks based upon its registration of the marks with the USPTO. Registration of a mark with the USPTO is sufficient to establish complainant’s rights in the mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015). Complainant has provided a copy of its registration of the marks with the USPTO (e.g., BIG FISH Reg. No. 5,086,840, registered Nov. 22, 2016, BIG FISH GAMES Reg. No. 4,004,420, registered Aug. 2, 2011). Therefore, the Panel concludes that Complainant has rights in the marks under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <bigfishgames.club> domain name is confusingly similar to Complainant’s marks because Respondent incorporates both of the marks in the domain name and adds a gTLD. The addition of a gTLD to a mark is not sufficient to distinguish a mark from a domain name per Policy ¶ 4(a)(i). See MTD Products Inc v. Mike Kernea / Skyline, FA 1775278 (Forum Apr. 19, 2018) (“The mere addition of a gTLD is inconsequential and does not avoid a finding of identity.”). Respondent includes both of complainant’s marks in the domain name and appends the “.club” gTLD. Accordingly, under a Policy ¶ 4(a)(i) analysis, Respodnent’s <bigfishgames.club> domain name is identical and/or confusingly similar to Complainant’s marks.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <bigfishgames.club> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent lacks rights and legitimate interests in the <bigfishgames.club> domain name because Respondent is not commonly known by the domain name and is not authorized by Complainant to use its marks in any way. Where a response is lacking, relevant WHOIS information may be used to identify the registrant of a domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). Additionally, lack of authorization from a complainant to use its marks may be evidence that a respondent is not commonly known by a domain name. See 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.”). The WHOIS information identifies the registrant of the <bigfishgames.club> domain name as “Stepan Bandera” and no information in the record indicates that Respondent was authorized to use Complainant’s marks in any fashion. Accordingly, under a Policy ¶ 4(c)(ii) analysis, Respondent is not commonly known by the <bigfishgames.club> domain name.
Next, Complainant contends Respondent fails to use the <bigfishgames.club> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Rather, Complainant the evidence shows that Respondent displays adult-oriented material on the webpages which resolve from the domain name. Use of a domain name to display pornographic material may not be considered a bona fide offering of goods and services or for a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii) where the domain name includes the mark of another. See Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA1732665 (Forum July 7, 2017) (holding that “[u]se of a domain name to display adult-oriented images is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.”). Complainant provides screenshots of the webpages associated with the <bigfishgames.club> domain name which show multiple pornographic images displayed. Therefore, the Panel holds that Respondent does not use the <bigfishgames.club> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent registered and uses the <bigfishgames.club> domain name in bad faith. Specifically, Complainant argues that Respondent attempts to attract Internet users to the domain name to capitalize off the goodwill associated with Complainant’s marks. Use of a domain name to divert internet users away from a complainant’s webpage may be evidence of bad faith under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (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.”). Complainant argues that Respondent uses Complainant’s marks to intentionally attract Internet users in order to display pornographic images. Therefore, under Policy ¶ 4(b)(iv), the Panel agrees.
Next, Complainant has provided evidence that Respondent displays adult-oriented material at the webpage associated with the <bigfishgames.club> domain name. Use of a domain name containing the mark of another to display adult-oriented material may be evidence of bad faith under Policy ¶ 4(a)(iii). See White Oak Entertainment, LLC - DBA The Chateau at White Oak Vineyard v. Al Perkins, FA 1702045 (Forum Dec. 12, 2016) (finding the respondent’s use of the domain name to redirect users to a pornographic website constituted evidence of bad faith).
Finally, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the BIG FISH and BIG FISH GAMES marks prior to registration of the <bigfishgames.club> domain name. The Panel agrees with Complainant that the record supports Complainant’s assertion that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the <bigfishgames.club> domain name and find that actual knowledge does show bad faith under Policy ¶ 4(a)(iii). See 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). Accordingly, under a Policy ¶ 4(a)(iii) analysis, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in the BIG FISH and BIG FISH GAMES marks prior to registration of the <bigfishgames.club> domain name.
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 <bigfishgames.club> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: October 3, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page