The Complainant is Scottgames, LLC of Union, New Jersey, United States of America (“United States”), represented by Nissenbaum Law Group, LLC, United States.
The Respondent is Whois Agent, Domain Protect Services, Inc. of Denver, Colorado, United States / Ton Thi Viet Ha of Vinh, Viet Nam.
The disputed domain name <fnaf6.com> is registered with <Name.com>, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 1, 2017. On December 4, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 4, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 5, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 8, 2017.
The Center verified that the Complaint together with the amended 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 December 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 31, 2017. The Respondent submitted informal email communications on December 12 and 22, 2017 but did not submit any formal response. Accordingly, the Center notified the Parties on January 3, 2018 that it would proceed to panel appointment.
The Center appointed Luca Barbero as the sole panelist in this matter on January 10, 2018. 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 was founded and is fully owned by Mr. Scott Cawthon, who is the creator, author and intellectual property owner of the computer games/mobile applications entitled “Five Nights at Freddy’s”, “Five Nights at Freddy’s 2”, “Five Nights at Freddy’s 3”, “Five Nights at Freddy’s 4”, “FNAF World”, and “Five Nights at Freddy’s: Sister Location” (hereinafter, collectively referred to as “the Five Nights Games”).
The Five Nights Games are available for purchase and download for personal computers on Valve Corporation’s Steam digital distribution platform as well as on Apple Inc.’s App Store, Google Inc.’s Google Play Store, and Amazon.com, Inc.’s App store.
Mr. Cawthon is the owner of the “FNAF World” game title and the “Five Nights at Freddy’s” abbreviation “FNAF”, as well as of the United States Trademark Registration No. 4755325 for FIVE NIGHTS AT FREDDY’S, registered on June 16, 2015 in International class 9; 4855473 for FIVE NIGHTS AT FREDDY’S, registered on November 17, 2015 in International class 9; and 5228022 for SISTER LOCATION, registered on June 20, 2017, in International class 9 (collectively, the “Five Nights Marks”).
The Complainant is the contracting entity through which Mr. Cawthon’s intellectual property is licensed to third parties. Mr. Cawthon is the sole member of the Complainant and has granted a license to the Complainant for the copyright and trademark rights related to its trademarks, including the rights to take any action to prevent any and all illegal use or misuse of the trademarks and to enter into license agreements with third parties to exploit the aforementioned intellectual property.
Several Panels have previously recognized the Complainant’s rights in the Five Nights Marks, including the acronym FNAF.See Scottgames, LLC v. Ong Dai Vu Hao, Tran Tich Quan, Delvin Dragon and Tran Dai WIPO Case No. D2016-1367, Scottgames, LLC v. Domain Administrator, PrivacyGuardian.org / Kris Miranda, DTDAFF / Dang Ngo / Thuan Tran / Wiley Prince, DTD / Duong Ngo Huynh, DTD SOFTWARE CO., LTD / Fidel Vance, Spiritual WIPOCase No. D2016-2372 and Scottgames, LLC v. Tien Kieu, Tien Doan / Domain Administrator, see PrivacyGuardian.org; Dung Danh Minh / Contact Privacy Inc. Customer 0146905890 WIPO Case No. D2017-0764.
The disputed domain name <fnaf6.com> was registered on March 4, 2016 and is currently not pointed to an active website. According to the screenshots submitted by the Complainant, and not contested by the Respondent, the disputed domain name was previously redirected to a website featuring the Complainant’s trademarks and enabling users to play and download online games.
The Complainant contends that the disputed domain name is confusingly similar to its trademark FNAF, since the addition of the generic numeral “6” is not sufficient to distinguish the disputed domain name from the Complainant’s trademark. It also states that the addition of the numeral may actually increase the likelihood of confusion, since certain of the Five Nights Games are titled using numerals.
The Complainant also states that the Respondent has no rights or legitimate interest with respect to the disputed domain name since:
(i) Neither the Complainant nor Mr. Cawthon nor their agents have granted the Respondent any license or other authorization to use the Five Nights Marks;
(ii) There is no evidence that the Respondent used, or demonstrably prepared to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services prior to the Complainant’s use of the Five Nights Marks. To the contrary, the Respondent’s only use of the disputed domain name is in connection with the infringement of Complaint’s intellectual property;
(iii) Registration with the USPTO gave the Respondent constructive notice of the Complainant’s rights in its trademarks. In addition, nearly all of the Five Nights Games were released prior to the Respondent’s registration of the disputed domain name;
(iv) The WhoIs database records for the disputed domain name reveal no evidence to suggest that the Respondent is commonly known or could be commonly known by the disputed domain name. Moreover, there is no other evidence in the record to suggest that the Respondent has been commonly known by the disputed domain name or any other name similar to the disputed domain name;
(v) The Respondent cannot demonstrate rights or legitimate interests in the disputed domain name under paragraph 4(c)(iii) of the Policy since the Respondent has specifically chosen to incorporate the Five Nights Marks into the disputed domain name to attract Internet traffic to the corresponding website, which provides unauthorized and/or pirated, playable and/or downloadable versions of the Five Nights Games along with unauthorized derivative works of the Five Nights Games. Furthermore, the Respondent presumably profits by generating advertising revenue from the use of the Five Nights Marks in the disputed domain name and is competing with the Complainant by promoting and offering for sale the unauthorized and/or pirated, free, playable and/or downloadable versions of the Five Nights Games.
The Complainant submits that the Respondent has registered and currently uses the disputed domain name in bad faith because:
(i) The incorporation of the famous FNAF mark into the disputed domain name is evidence of bad faith;
(ii) The Respondent’s use of the disputed domain name to promote, inter alia, unauthorized and/or pirated versions of the Five Nights Games and unauthorized, substandard derivative works is further evidence of bad faith, as it enables the Respondent to attract Internet users to the associated website and generate advertising revenue. In addition, the fact that there were five total Five Nights Games at the time the disputed domain name was registered illustrates the Respondent’s bad faith, as the registration of the disputed domain name <fnaf6.com> indicates an attempt to attract Internet users by making reference to a future sixth Five Nights Game.
The Respondent did not submit a formal Response but sent informal email communications to the Center, after the notification of the Complaint and also following the Panel appointment, in which it indicated its availability to transfer the disputed domain name to the Complainant.
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
However, as a threshold matter, the Panel must decide whether to address the above-referenced substantive requirements or to proceed immediately to make an order for transfer of the disputed domain name to the Complainant.
According to section 4.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “Where parties to a UDRP proceeding have not been able to settle their dispute prior to the issuance of a panel decision using the ‘standard settlement process’ described above, but where the respondent has nevertheless given its consent on the record to the transfer (or cancellation) remedy sought by the complainant, many panels will order the requested remedy solely on the basis of such consent. In such cases, the panel gives effect to an understood party agreement as to the disposition of their case (whether by virtue of deemed admission, or on a no-fault basis)”.
In the case at hand, upon receipt of the notification of the Complaint, the Respondent sent an informal email communication to the Center, in copy to the Complainant, in which it consented to the transfer of the disputed domain name to the Complainant. The Complainant replied to such communication indicating that it would have preferred to continue to handle the matter in this proceeding and that, if the Respondent had confirmed its consent to the transfer, the Panel may have decided to “proceed immediately to make an order for transfer pursuant to paragraph 10 of the Rules” as found in Roll‐N‐Lock Corporation v. L. Van Mier, VanMierMedia, WIPO Case No. D2012-2379 (citing The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132).
Moreover, the Respondent’s consent to transfer the disputed domain name to the Complainant was confirmed also in a subsequent email communication sent by the Respondent to the Center after the Panel appointment.
In view of the circumstances of the case, the Panel finds that the Respondent undoubtedly consented to the transfer, and that the fact that no separate settlement agreement was executed between the parties does not affect the Respondent’s consent to the transfer. See Pierre Balmain S.A. v. Domains By Proxy, LLC / Daniel Phillips, WIPO Case No. D2015-0189. Moreover, the Panel also finds that the Complainant would be satisfied by the issuance of an order for transfer without assessing the merits of the case.
Therefore, the Panel finds that it is procedurally efficient to immediately order the transfer of the disputed domain name to the Complainant. Incidentally, although the Panel has decided not to address each of the three conditions for transfer required by paragraph 4(a) of the Policy, the Panel notes that the Complainant has anyway proved all of them.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <fnaf6.com> be transferred to the Complainant.
Luca Barbero
Sole Panelist
Date: January 15, 2018