Epic Games, Inc. v. Host Master / 1337 Services LLC
Claim Number: FA1906001846617
Complainant is Epic Games, Inc. (“Complainant”), represented by Christopher M. Thomas of Parker Poe Adams & Bernstein LLP, North Carolina, USA. Respondent is Host Master / 1337 Services LLC (“Respondent”), Saint Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <fortnite.events> and <fortnite.cards>, registered with Tucows Domains 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 5, 2019; the Forum received payment on June 5, 2019.
On June 6, 2019, Tucows Domains Inc. confirmed by e-mail to the Forum that the <fortnite.events> and <fortnite.cards> domain names are registered with Tucows Domains Inc. and that Respondent is the current registrant of the names. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 1, 2019 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.events, postmaster@fortnite.cards. Also on June 10, 2019, 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 5, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, 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 names be transferred from Respondent to Complainant.
A. Complainant
i) Complainant is a creator, developer, and publisher of computer games and content-creation software. Complainant has rights in the FORTNITE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,481,629, registered Feb. 11, 2014). See Compl. Ex. B. Respondent’s <fortnite.events> and <fortnite.cards> domain names are identical to Complainant’s FORTNITE mark and merely add the generic top-level domains “.events” and “.cards.”
ii) Respondent has no rights or legitimate interests in the disputed domain names as Respondent is not commonly known by the disputed domain names nor did Complainant authorize or license Respondent to use Complainant’s FORTNITE mark. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial fair use. Instead, Respondent tries to pass off as Complainant and engages in a phishing scheme by offering points in exchange for account information.
iii) Respondent registered and is using the disputed domain names in bad faith by attempting to attract, for commercial gain, internet users to Respondent’s disputed domain names by creating a likelihood of confusion with Complainant. Respondent had knowledge of Complainant’s rights in a mark by creating a virtually identical website that prominently shows Complainant’s marks.
B. Respondent
Respondent did not submit a response in this proceeding.
1. Respondent registered the <fortnite.events> domain name on May 8, 2019 and the <fortnite.cards> domain name on May 11, 2019.
2. Complainant has established rights in the FORTNITE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,481,629, registered Feb. 11, 2014).
3. Respondent created a virtually identical website that prominently features Complainant’s marks.
4. The disputed domain names’ resolving website shows Respondent’s offering points in exchange for v-bucks (virtual in game currency) where internet users provided their account information so the v-bucks can be transferred.
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”).
Complainant claims to have rights in the FORTNITE mark through its registrations with the USPTO. Registration of a mark with the USPTO is sufficient to demonstrate rights in a mark per policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Here, Complainant has provided this Panel with copies of USPTO registrations for the FORTNITE mark (e.g. Reg. No. 4,481,629 registered Feb. 11, 2014). See Compl. Ex. B. Therefore, the Panel finds Complainant has rights in the FORTNITE mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <fortnite.events> and <fortnite.cards> domain names are identical to Complainant’s FORTNITE mark and merely add the gTLD “.events” and “.cards” to the mark. Addition of a gTLD is insignificant in analyzing whether a domain name is confusingly similar or identical to a mark per Policy ¶ 4(a)(i). See Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”). Therefore, the Panel concludes that the disputed domain names are identical 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), then the burden shifts to Respondent to show 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 has no rights or legitimate interests in the disputed domain names as Respondent is not commonly known by the disputed domain names nor did Complainant license or authorize Respondent to use the FORTNITE mark. A respondent lacks rights or legitimate interests in a domain name if complainant does not license or authorize respondent to use the mark or respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). There is nothing in the record to suggest that Complainant has authorized or licensed Respondent to use Complainant’s FORTNITE mark. Additionally, the WHOIS information identifies “Host Master / Transure Enterprise Ltd” as Respondent. Therefore, the Panel agrees and finds that Respondent has no rights or legitimate interests in the <fortnite.events> and <fortnite.cards> domain names per Policy ¶ 4(c)(ii).
Complainant further argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial fair use. Instead, Respondent tries to pass off as Complainant by engaging in a phishing scheme by offering points in exchange for account information. Use of a domain name to engage in a phishing scheme while passing off as a complainant is not a bona fide offering of goods or services or legitimate noncommercial fair use per Policy ¶¶ 4(c)(i) or (iii). See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”); see also Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (finding the respondent lacked rights and legitimate interests in the domain name because it used the name to resolve to a website virtually identical to the complainant’s to prompt users to enter their login information so that the respondent may gain access to that customer’s cryptocurrency account). Here, Complainant has provided the Panel with a screenshot of Respondent’s resolving domain names that show Respondent offering points in exchange for v-bucks (virtual in game currency) where internet users provided their account information so the v-bucks can be transferred. See Compl. Ex. G and H. Therefore, the Panel finds that Respondent’s deployment of a phishing scheme is not a bona fide offering of goods or services or legitimate noncommercial fair use.
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant argues that Respondent has registered and is using the disputed domain names in bad faith by attempting to attract, for commercial gain, internet users by creating a likelihood of confusion with Complainant in that some sort of affiliation exists. Use of a domain name to attract internet users for commercial gain maybe evidence of bad faith per Policy ¶ 4(b)(iv). See BBY Solutions, Inc. v. Grant Ritzwoller, FA 1703389 (Forum Dec. 21, 2016) (finding bad faith because the <bestbuyus.com> domain name was obviously connected with the complainant’s well-known BEST BUY mark, thus creating a likelihood of confusion strictly for commercial gain); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) 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.”). Here, Complainant has provided the Panel with screenshots of Respondent’s resolving domain names that show Complainant’s marks prominently being displayed in hopes of confusing internet users that an affiliation exists between Respondent and Complainant. See Compl. Ex. G and H. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Lastly, Complainant contends that Respondent had knowledge of Complainant’s rights in the FORTNITE mark as Respondent created a virtually identical website that prominently features Complainant’s marks. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, actual knowledge of Complainant’s mark prior to registering is adequate to find bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name")." Complainant has provided screenshots of Respondent’s resolving domain names that prominently show Complainant’s marks. See Compl. Ex. G and H. Therefore, the Panel infers that Respondent had actual knowledge of Complainant’s rights in the FORTNITE mark – bad faith per 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 <fortnite.events> and <fortnite.cards> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: July 10, 2019
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