Elodie Games, Inc. v. Wood Gavin
Claim Number: FA2202001986021
Complainant is Elodie Games, Inc. (“Complainant”), represented by Reece Trevor of Cooley LLP, California, USA. Respondent is Wood Gavin (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <elodie.game>, registered with NameSilo, 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, Panelist and Chair
Gerald M. Levine, Panelist
Dawn Osborne, Panelist.
Complainant submitted a Complaint to the Forum electronically on February 25, 2022; the Forum received payment on February 25, 2022.
On February 28, 2022, NameSilo, LLC confirmed by e-mail to the Forum that the <elodie.game> domain name (the Domain Name) is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 March 3, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of March 23, 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@elodie.game. Also on March 3, 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 March 30, 2022, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Charles A. Kuechenmeister, Gerald M. Levine, and Dawn Osborne 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, Elodie Games, Inc., develops cross-platform multiplayer online video games. It has common-law rights in the ELODIE mark based upon its extensive use of that mark in connection with its video game design and development business since February 2020. Respondent’s <elodie.game> Domain Name is identical or confusingly similar to Complainant’s ELODIE mark as it incorporates that mark in its entirety, merely adding the “.game” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the Domain Name. It is not associated or affiliated with Complainant and Complainant has not authorized it to use its ELODIE mark. Additionally, Respondent is not using the Domain Name in connection with a bona fide offer of goods or services, or for a legitimate noncommercial or fair use. Instead, the Domain Name resolves to a website which copies and mimics Complainant’s own website, and purports to sell cryptocurrency tokens.
Respondent registered and uses the Domain Name in bad faith. By causing the Domain Name to resolve to a website which is nearly identical to Complainant’s website, Respondent is attempting for commercial gain to attract Internet users to its web site by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of its web site by Complainant, and it registered the Domain Name with actual knowledge of Complainant and its mark.
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 a 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 ELODIE mark with the United States Patent and Trademark Office, but Policy ¶ 4(a)(i) does not require a complainant to own a registered mark if it can demonstrate common law rights in the mark. Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant must prove that the mark has acquired a 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….”), 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 Annex 2 is a Declaration of David Banks, the CEO and a co-founder of Complainant. This Declaration states that Mr. Banks and Christina Norman launched Complainant’s business with a blog post on the web site Medium in February 2020 and that the business has expanded significantly since then, raising large investments and hiring new staff members. The company now has over 30 employees and raised $32.5 million in an investing round completed in September 2021. It further states that in the process of hiring new staff and discussing the company with potential investors in 2020 and 2021, Complainant has made frequent use of its ELODIE mark. As the company’s name, the mark appears in ELODIE’s materials distributed to potential investors, on its website, and in job postings on LinkedIn and other websites. In each of these contexts, the ELODIE mark was inextricably linked to Complainant and to its distinctive brand and identity. Complaint Annex 3 is a copy of the announcement of the formation of the company posted by Christina Norman on the Medium web site. Complaint Annexes 7-10 are copies of news stories highlighting the company’s objectives and its success in attracting employees, investors, and consumer interest throughout the video gaming and venture technology investing communities. In all of these articles, commentators refer to ELODIE by its name in describing the company and its characteristics. On the foregoing evidence the Panel has no trouble finding that Complainant has demonstrated its rights in the ELODIE mark for the purposes of Policy ¶ 4(a)(i).
Respondent’s <elodie.game> Domain Name is confusingly similar to Complainant’s ELODIE mark because it incorporates Complainant’s mark in its entirety, merely adding the “.game” generic top-level domain. This change does not distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Reese v. Morgan, FA 917029 (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). 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 textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the change 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 ELODIE 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 is not associated or affiliated with Complainant and Complainant has not authorized it to use its mark, (ii) Respondent has not been commonly known by the Domain Name, 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 the Domain Name resolves to Respondent’s web site which is almost identical to Complainant’s web site. These allegations are addressed as follows:
Complainant states that Respondent has no association with Complainant and that it has never authorized or permitted Respondent to use its mark. (Declaration of David Banks submitted as Complaint Annex 2). 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.”).
The WHOIS information furnished to the Forum by the registrar lists “Wood Gavin” 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).
Complaint Annex 12 is a screenshot of the web site resolving from the Domain Name. It appears to be virtually identical to Complaint’s web site located at <elodie.games> as shown on Complaint Annex 4. It features the same style and font of textual material, the same pictures, the same news updates about the company, and the same photos of Mr. Banks and Ms. Norman as appear in Complainant’s web site. It even duplicates the map showing the location of Complainant’s facilities in Venice, California. The only material difference appears on a later page of the site, where Respondent’s site offers cryptocurrency tokens for sale, which Complainant’s site does not. The pages appearing in Complaint Annex 12 strongly suggest that Respondent’s site offers or purports to offer Complainant’s games for sale. It is clear that Respondent’s web site is designed and intended to convey the impression that it is either sponsored by Complainant or is that of Complainant itself. Passing off and without authorization claiming to sell a complainant’s goods 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). Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business), Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was 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)).
Finally, although Complainant does not assert the argument, by registering the Domain Name with a subtle misspelling of the top-level domain, changing “.games” in Complainant’s URL to “.game,” Respondent is guilty of typosquatting, which is the intentional misspelling of a protected trademark to take advantage of typing errors made by Internet users seeking the web sites of the owners of the mark. Although the misspelling does not occur in Complainant’s mark, Respondent intentionally registered the Domain Name to take the advantage of typographical errors and may under the circumstances in this case fairly be characterized as typosquatting. Registering a typosquatted domain name has been held to evidence a lack of rights and legitimate interests in the domain name for the purposes of Policy ¶ 4(a)(ii). Chegg Inc. v. yang qijin, FA1503001610050 (Forum Apr. 23, 2015) (“Users might mistakenly reach Respondent’s resolving website by misspelling Complainant’s mark. Taking advantage of Internet users’ typographical errors, known as typosquatting, demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii).”).
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, by using the Domain Name to pass off as Complainant and offering without authorization to sell products advertised as those of Complainant, Respondent is using the Domain Name to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of its web site by Complainant. The evidence does not establish whether Respondent is actually selling Complainant’s products (or a counterfeit) or fraudulently representing that it does, collecting money from the customer and then not delivering the products. Under either scenario, however, Respondent’s conduct fits squarely within the circumstances described in Policy ¶ 4(b)(iv) and is manifest evidence of bad faith registration and use. Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
As discussed above, Respondent is using the Domain Name to pass off as Complainant or as an authorized dealer of Complainant’s products, which it is not. Policy ¶ 4(b) recognizes that mischief can manifest in 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). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and passing off as a complainant, in and of itself, is evidence of bad faith. Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant or is otherwise affiliated or associated with Complainant.”).
Next, as discussed above, Respondent is guilty of typosquatting. Given the non-exclusive nature of Policy ¶ 4(b), typosquatting has, in and of itself, been held to be evidence of bad faith registration and use. Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (finding the respondent engaged in typosquatting—and thus registered and used the at-issue domain names in bad faith—where the names consisted of the complainant’s mark with small typographical errors introduced therein).
Finally, it is evident that Respondent had actual knowledge of Complainant and its mark when it registered the Domain Name in December 2021 (Complaint Annex 11 WHOIS report shows creation date). Complainant’s ELODIE mark had been used by it in commerce for almost two years by that time. More important, Respondent copied that mark exactly into the Domain Name and copied the content on Complainant’s web site into its own web site with no material changes. In light of the non-exclusive nature of Policy ¶ 4(b), registering a confusingly similar domain name with actual knowledge of a complainant’s rights in a mark is 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 <elodie.game> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
Gerald M. Levine, Panelist
Dawn Osborne, Panelist
April 6, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page