Epic Games, Inc. v. Oliver Wagner
Claim Number: FA2003001887270
Complainant is Epic Games, Inc. (“Complainant”), represented by Christopher M. Thomas of Parker Poe Adams & Bernstein LLP, United States. Respondent is Oliver Wagner (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fortnite-accounts.online>, registered with united-domains AG.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 6, 2020; the Forum received payment on March 6, 2020.
On March 10, 2020, united-domains AG confirmed by e-mail to the Forum that the <fortnite-accounts.online> domain name is registered with united-domains AG and that Respondent is the current registrant of the name. united-domains AG has verified that Respondent is bound by the united-domains AG 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 March 12, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 1, 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@fortnite-accounts.online. Also on March 12, 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 April 3, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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
Complainant is a creator, developer, and publisher of computer games and content-creation software. Complainant has rights in the trademark FORTNITE mark through its registration with the United States Patent and Trademark Office (“USPTO”) dating back to 2014. Respondent’s <fortnite-accounts.online> domain name, registered on July 20, 2019, is confusingly similar to Complainant’s FORTNITE mark. Respondent incorporates the FORTNITE mark in its entirety and adds the word “accounts” along with the “.online” generic top-level domain (gTLD).
Respondent has no rights or legitimate interests in the <fortnite-accounts.online> domain name as Respondent is not commonly known by the disputed domain name nor did Complainant authorize Respondent to use the FORTNITE mark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent attempts to sell unauthorized accounts associated with Complainant’s FORTNITE mark.
Respondent registered and used the <fortnite-accounts.online> domain name in bad faith as Respondent seeks to create a likelihood of confusion with Complainant’s FORTNITE mark and give the impression that Respondent is affiliated with Complainant in some way. Respondent uses the disputed domain name to sell unauthorized accounts associated with the FORTNITE mark in violation of the terms of service for Complainant’s gaming service. Respondent had actual knowledge of Complainant’s rights in the FORTNITE mark prior to the registration of the disputed domain name due to the notoriety and fame of the FORTNITE mark and the manner in which the mark is used on Respondent’s website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent 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 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”).
Preliminary Issue: Language of the Proceedings
The disputed domain name was registered under a registrar agreement in the German language. However, Complainant has requested that this administrative proceeding be conducted in the English language pursuant to UDRP Rule 11(a). It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: a respondent’s use of a website containing text in the requested language, correspondence from a respondent in the requested language, the prevalence of the requested language in the location where a respondent resides, and any other evidence (or lack thereof) exhibiting Respondent’s understanding of the language requested by a complainant. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has a command of the language). Further, the Panel may weigh the relative time and expense in enforcing the language of the registration agreement, which would result in prejudice toward either party. See AB Electrolux v. Privacy protection service - whoisproxy.ru / Zoom ltd., D2018-1823 (WIPO Oct. 3, 2018) (“account should be taken of the risk that a strict and unbending application of paragraph 11 of the Rules may result in delay, and considerable and unnecessary expenses of translating documents.”)
Here, Complainant notes that the <fortnite-accounts.online> domain name is composed of words in the English language, its resolving website appears entirely in the English language, all of the items for sale on the site are in English, and English is widely spoken in Germany. The Respondent has not filed a Response or made any other submission in this case to contest this issue. Therefore, pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to support the conclusion that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceedings should be in English.
Complainant claims to have rights in the FORTNITE mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant has provided the Panel with USPTO website printouts pertaining to its registrations of the FORTNITE mark. Therefore, the Panel finds that Complainant has rights in the FORTNITE mark per Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <fortnite-accounts.online> domain name is confusingly similar to Complainant’s FORTNITE mark. Registration of a domain name that contains a mark in its entirety and adds a generic world and gTLD does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). 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)). Here, Complainant argues that Respondent incorporates the FORTNITE mark in its entirety and adds the word “accounts” along with the “.online” gTLD. Therefore, the Panel finds that these additions do not distinguish the disputed domain name from Complainant’s mark and so Respondent’s domain name is confusingly similar to Complainant’s FORTNITE mark per Policy ¶ 4(a)(i).
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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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 lacks rights or legitimate interest in the <fortnite-accounts.online> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the FORTNITE mark or to register domain names using Complainant’s mark. In considering this issue, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Oliver Wagner” and there is no other evidence to suggest that Respondent is known otherwise or that it is authorized to use the FORTNITE mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Instead, Respondent attempts to sell unauthorized accounts associated with Complainant’s FORTNITE mark. Use of a disputed domain name to offer unauthorized products associated with a mark is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Russell & Bromley Limited v. Li Wei Wei, FA 1752021 (Forum Nov. 17, 2017) (“The respondent’s use of the disputed domain name to pass itself off as the complainant to advertise and sell unauthorized products of the complainant 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).”). Here, Complainant has provided screenshots of Respondent’s <fortnite-accounts.online> domain name that shows offers to buy unauthorized accounts and skins (i.e., character wardrobes) associated with its FORTNITE game while also prominently displaying the mark. It is also asserted that Respondent’s activities violate Complainant’s End User License Agreement. This further supports the conclusion that Respondent’s use of the disputed domain names is not bona fide. See Supercell Oy v. Reza Zarif, D2019-1710 (WIPO May 11, 2018) (“Complainant alleges that Respondent’s use of the disputed domain name to facilitate the sale of CLASH OF CLANS game accounts violates the Terms of Service under which the accounts are created. Such use of the disputed domain name is not bona fide.”)
As Complainant has presented a prima facie case and Respondent has not filed a Response or made any other submission in these proceedings, the Panel finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii) and thus does not have any rights or legitimate interests in the <fortnite-accounts.online> domain name under Policy ¶ 4(a)(ii).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the FORTNITE mark prior to the registration of the disputed domain name due to the notoriety and fame of the FORTNITE mark and its use in Respondent’s website content. Panels have routinely found that actual knowledge of a complainant’s rights in its asserted mark prior to registering a disputed domain name is an adequate foundation upon which to build a case of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“the Panel here finds actual knowledge through the name used for the domain and the use made of it.”) See also Snap Inc. v. Deepika Priyadarshinie / entsl, FA 1788600 (Forum June 21, 2018) (finding the respondent had actual knowledge of the complainant and its rights in the claimed mark due to the fame of the mark, established by the complainant’s submission of numerous articles regarding the success of the complainant’s product). Here, Complainant has provided a number of articles in widely read media outlets of which the FORTNITE mark is the featured subject. Therefore, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark at the time it registered the disputed domain name.
Complainant argues that Respondent registered and used the <fortnite-accounts.online> domain name in bad faith as Respondent seeks to create a likelihood of confusion with Complainant’s FORTNITE mark and an impression that Respondent is affiliated with Complainant in some way by offering unauthorized accounts and other products associated with the FORTNITE mark. Use of a disputed domain name to create a likelihood of confusion by offering unauthorized products may be evidence of bad faith per Policy ¶ 4(b)(iii). See Guess? IP Holding L.P. and Guess?, Inc. v. Linan / linanbangongshi and hu sugor / sugorguoguo, FA1410001587466 (Forum Dec. 13, 2014) (“The Panel finds that Respondent’s use of the disputed domain names to compete with Complainant by offering counterfeit products and thereby misdirecting Internet users constitutes disruption to Complainant’s business which demonstrates bad faith registration and use under Policy ¶ 4(b)(iii).”)
With specific regard to the sale of gaming accounts and skins, Complainant’s End User License Agreement states that “You may not transfer, sell, gift, exchange, trade, lease, sublicense, or rent Game Currency or Content except within the Software and as expressly permitted by Epic.” In WhatsApp Inc. v. Domain Data Guard / Hendro Wardoyo, Whatsapp Extra, D2019-1710 (WIPO Sep. 17, 2019), software offered at the Respondent’s disputed website allowed users of Complainant’s application to “send unsolicited electronic communications (spam), for phishing, or for other unauthorized activities.” Id. The Panel in that case held that “[g]iven that the Respondent is using the disputed domain name in a manner inconsistent with the Complainant’s Terms of Service, it is evident that the Respondent is using the disputed domain name in bad faith.” Id. citing Supercell Oy v. Reza Zarif, supra (“Complainant’s unrebutted allegation that Respondent’s use of the disputed domain name [is] to facilitate the violation of Complainant’s Terms of Service supports a finding of bad faith.”) Here, Complainant has provided screenshots of Respondent’s <fortnite-accounts.online> website that shows various offers to buy unauthorized accounts and related products associated with its FORTNITE mark while also prominently displaying the FORTNITE mark. It has also submitted a copy of its End User License Agreement. In light of the evidence presented, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fortnite-accounts.online> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: April 6, 2020
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