The Complainant is Supercell Oy of Helsinki, Finland, represented by Roschier Brands, Attorneys Ltd., Finland.
The Respondent is Davood Ahmadzadeh of Ahwaz, Khozestan, Islamic Republic of Iran.
The disputed domain name <iranclash.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2017. On February 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 22, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 19, 2017. The Response was filed with the Center on March 18, 2017.
The Center appointed Alistair Payne as the sole panelist in this matter on March 29, 2017. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant based in Finland is the creator of the “Clash Of Clans” online mobile game and owns trade mark registrations in various jurisdictions for CLASH OF CLANS and for its CLASH OF CLANS combined logo and word mark and in particular in Europe under registration numbers 011158086, 012224465, 013640974 and 013641345, and in the United States of America under registration numbers 1197671 and 4327980 and the earliest of these trade marks was registered in December 2012. The Complainant operates a website at “www.clashofclans.com” for its online mobile game.
The Respondent based in Iran registered the disputed domain name on June 19, 2014, and operates a website with information related to online games from the disputed domain name.
The Complainant submits that it owns registered trade mark rights for its CLASH OF CLANS word and logo marks as set out above and that both marks are well-known marks as a consequence of their level of recognition amongst consumers. It notes in particular the very high rankings that the game receives in mobile game rankings and that in 2016 the Complainant expanded the game’s franchise with a new offering entitled “Clash Royale”.
The Complainant says that the disputed domain name is confusingly similar to its CLASH OF CLANS marks because it includes the dominant and distinctive element “clash”. Secondly, it submits that the other element of the disputed domain name the country name “Iran” is descriptive and non-distinctive in the context of its Iranian target market. In addition says the Complainant, the Respondent’s offer on its website to sell user accounts to the Complainant’s game are against its terms of service and the website at the disputed domain name uses several of the Complainant’s trade marks without authority, including the CLASH OF CLANS mark and the artwork of game characters. The Complainant also notes that the Respondent appears to provide other types of hacks/cheats (for example forbidden “bot” software) to the CLASH OF CLANS game on the “www.iranclash.com” website but notes that as the website is in Persian the Respondent’s offerings are not clear. All of this and the fact that the trade mark CLASH OF CLANS is often abbreviated to “CLASH” by the Complainant and its customers as well as the game industry press, only increases the likelihood of confusion according to the Complainant.
On information and belief the Complainant submits that the Respondent does not have rights or legitimate interests to the disputed domain name and has not registered it as a trade mark, service mark or company name anywhere in the world at the time of applying for registration of the disputed domain name. The Complainant says that it has not licensed its trade mark or otherwise permitted the Respondent to register the disputed domain name and that there is no relationship between the Complainant and the Respondent and the contested website is used for illegitimate and commercial bad faith purposes.
The Complainant says that the main purpose of the Respondent in registering the disputed domain name <iranclash.com> has been to disrupt the business of the Complainant in relation to the CLASH OF CLANS game. The Complainant says that the Respondent is facilitating the violation of the Complainant’s Terms of Service causing bans, termination of licenses and other negative consequences to the users of the Respondent’s game at the disputed domain name. Accordingly, says the Complainant, the Respondent has therefore registered and used the disputed domain name in bad faith under paragraph 4(b)(iii) of the Policy.
According to the Complainant the Respondent’s website at the disputed domain name and the distribution or sale of CLASH OF CLANS user accounts from its website, causes commercial harm to the Complainant and at the very least potential commercial gain to the Respondent. The Respondent is aware of the Complainant’s public Terms of Service and that the Respondent is in violation of those terms. The Complainant says that it is not aware of all of the ways in which the Respondent commercially gains from use of the website at the disputed domain name but the potential commercial gains are obvious. It says further that the Respondent also appears to provide other types hacks /cheats (for example forbidden “bot” software) to the CLASH OF CLANS game on the website at the disputed domain name however as the website is in Persian, all the Respondent’s offerings are not clear to the Complainant. All of this says the Complainant amounts to conduct that is evidence of registration and use in bad faith under paragraph 4(b)(iv) of the Policy.
The Respondent says that its website at the disputed domain name was established in 2014 for Iranian players. It says that the name “Iranclash” is a combination of “Iran” and “clash” and means the Battle of Iran and that the target group for the site is Iranian players with a focus on strategic battle games.
The Respondent notes that the word “clash” has not been monopolized by “Clash of Clans” and many companies other than the Complainant have already used the word “clash” as a name for online mobile games. In particular he notes the games “Clash of King”, “Clash of Lords”, “Clash of Zombie”, “Castle Clash”, “Clash of Queens” and sets out an additional list of examples in evidence. The Respondent says that in Persian (the language used on the Respondent’s site) the word “Clash” means battle and war. He notes that around 90% of online strategic games are about battles and that the word “Clash” is not directly used in the game but because the theme is about battle there are some perceived similarities with the Complainant’s site. However he says that it is only the “Clash of Clans” name that is known to online players and if he had used “Iran Clash of Clans” he notes that the Complainant might have had something to complain about.
The Respondent refutes the Complainant’s suggestion that its website enables players to buy and sell “Clash of Clans” accounts. He says that the Complainant’s translation from Persian is incorrect and that in fact his website features an evaluation system based on a user-centric concept with no money changing hands and no accounts being exchanged between users. He notes that this system is similar to that on an information sharing site like “SitePrice.org” and that the system is not only in place for Clash of Clans but also for other games offered by providers other than the Complainant. The Respondent submits that virtual pricing in this way is not legally forbidden and there is no harm to the Complainant’s business but on the contrary it assists in encouraging players to continue playing the game. In summary he says that no sales have ever been performed through the website at the disputed domain name and notes that the allegation concerning putting a “bot” on the site is strongly rejected and arises from a meaningless translation. The Respondent insists that its news site is a place for sharing the information and news about the games and not a place for buying and selling games and notes that the only “bot” involved on its website is a “bot” for Telegram app, which is very popular in Iran because of the limited access to social media and which automatically sends news from the Respondent’s website to its members.
The Respondent insists that the disputed domain name was created in good faith for the purpose of using it for an online strategic game with a battle theme, without any intention of trading off the Complainant’s business. It notes that on its site it offers more than 2,300 articles about online games and that by providing free training for the Complainant’s game and campaigning against the blocking of “Clash of Clans” in Iran in December 2016 the Respondent has in fact helped the Complainant’s business.
The Complainant has demonstrated that it has registered trade mark rights in its CLASH OF CLANS mark in at least two jurisdictions as noted above (dating from prior to the registration of the disputed domain name). It also asserts that this mark is well-known and provides some evidence that at least in the gamer community it has developed a substantial reputation as one of the best known online games. The issue for the Panel is whether the substantive elements of the disputed domain name, namely “Iranclash”, are confusingly similar to the Complainant’s CLASH OF CLANS mark.
Considering both marks on a side by side analysis it is immediately apparent that the common element is the word “clash” and that the disputed domain name uses this word in a secondary textual position after the country name “Iran”. That said, it stands to reason that with a country in first position, the core static element in the disputed domain name is “clash”. This is however a common English word which the Respondent notes is used by many game developers in the online gaming community to indicate the nature of the game as being a conflict or battle and importantly the Respondent has provided by way of evidence a relatively impressive list of examples in this regard. Although, as the Complainant asserts, it may be the case that gamers refer to its game colloquially as “Clash” (in relation to which the Panel makes no finding), there is insufficient evidence such as would support a finding of secondary meaning attaching to that word in relation to the Complainant’s game. While evidence of such secondary meaning would certainly assist the Complainant here, the Panel also notes that very often the leading term in a mark is the one which triggers an association in the minds of consumers. Still, on the evidence before it the Panel finds that the word “clash” is used by a number of providers in the online game industry.
The analysis under this head is in any event an objective comparison which sometimes also looks at the overall impression afforded by the disputed domain name and the Complainant’s mark. There are visual and aural differences. The disputed domain name begins with “Iran” whereas the Complainant’s mark begins with “Clash”. The leading part of a mark is the portion which users may focus on, e.g., Coca-Cola brings to mind the famous Coke mark. The Complainant’s mark includes the words “of clans” which are not included in the disputed domain name.
Overall the Panel finds that while ultimately the marks may be differentiated by Internet consumers, as a consequence of the leading element “clash” in the Complainant’s trade mark and of the primary position in the marketplace of the Complainant’s game, there remains some risk of confusion. The Panel notes that this element of the Policy is generally treated by panels as a “gatekeeper” for the main analysis under the second and third elements and therefore a “standing” threshold is generally adopted which is not necessarily equivalent to the threshold adopted in a classical trade mark infringement analysis. In the particular circumstances here the Panel is prepared to adopt such a threshold in this case and to make a finding of confusing similarity.
As a result the Complaint succeeds under the first element of the Policy.
The disputed domain name does not incorporate the whole of the Complainant’s CLASH OF CLANS trade mark but only the word “clash”. The fact that the word “clash” is in common usage by a number of game developers and that there is little evidence on the present record of secondary meaning concerning the use of “clash” in relation to the Complainant’s game, does not adequately support the Complainant’s case under the second element of the Policy that the Respondent has no rights or legitimate interests in the disputed domain name. In addition and significantly the Panel is not persuaded by the evidence on the record that the Complainant has met its burden. For these reasons and for reasons based on lack of supporting evidence of bad faith, as set out under Part C below, the Panel finds that the Complaint does not succeed under the second element of the Policy.
The Panel is not persuaded by the Complainant’s arguments concerning registration and use in bad faith in relation to the third element of the Policy. Its case appears to be quite vague and undeveloped, focused as it is on the alleged distribution or sale of CLASH OF CLANS user accounts by the Respondent, the possible interference with customer contractual relations, the use of hacking “bots” and some examples of intellectual property rights infringement. In addition the Complainant admits in the Complaint that because the website is in Persian it is unclear in various respects as to the extent of the Respondent’s offerings or activities. The Respondent asserts that it is offering a bona fide game which appears to have a significant following in Iran and has largely explained what it is doing on its website (which is in Persian) concerning its virtual pricing and news site activities. This is not consistent with or sufficiently supportive of the Complainant’s allegations of bad faith conduct in the specific terms of paragraphs 4(b)(iii) or 4(b)(iv) of the Policy and the Panel remains unpersuaded on the record before it that the Respondent has either registered or used the disputed domain name in bad faith.
Overall, it seems to the Panel that the Complainant is looking to the wrong forum and might well have sought professional Persian translations of the Respondent’s website in order to provide examples of illegitimate conduct that might support a finding of bad faith if it had been seriously looking for a remedy under the Policy. Intellectual property rights infringements, the wrongful sale of user accounts, interference with contractual relations and the improper use of hacking software are all complex matters that are beyond the scope of the Policy and are more appropriate to be dealt with by the courts.
Accordingly the Complaint also fails under this element of the Policy.
For the foregoing reasons, the Complaint is denied.
Alistair Payne
Sole Panelist
Date: April, 12 2017