WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Gameloft S.E. v. Contact Privacy Inc. Customer 1245616154 / Terri cogburn

Case No. D2020-0397

1. The Parties

The Complainant is Gameloft S.E., France, internally represented.

The Respondent is Contact Privacy Inc. Customer 1245616154, Canada / Terri Cogburn, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <asphalt9legends.net> is registered with Google LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2020. On February 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 20, 2020, 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 February 20, 2020 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 February 24, 2020.

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 February 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 18, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 20, 2020.

The Center appointed Theda König Horowicz as the sole panelist in this matter on March 31, 2020. 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.

4. Factual Background

The Complainant is a French company, based in Paris and founded in 1999, which publishes and develops digitally distributed video games. The Complainant is known as a leader in the mobile gaming industry and recognized for its famous ASPHALT racing game franchise which latest version is “Asphalt 9: Legends”.

The Complainant owns several trademark registrations comprising the marks ASPHALT, ASPHALT 9 and ASPHALT 9 LEGENDS in the European Union, the United States of America and in some other countries, in particular:

- European Union Trademark ASPHALT, Registration No. 008695603, registered on May 3, 2010, in classes 9, 28, 38, and 41;

- European Union Trademark ASPHALT 9, Registration No. 017649484, registered on April 27, 2018 in classes 9, 28, 38, 41, and 42; and,

- European Union Trademark ASPHALT 9 LEGENDS, Registration No. 017866940, registered on June 29, 2018 in classes 9, 28, 38, 41, and 42.

The Complainant also registered several domain names such as <asphalt9.com> on August 8, 2016, <asphaltlegends.com> on February 21, 2018, and <asphalt9legends.com> on February 27, 2018. These domain names are linked to the official webpages of the Complainant where it promotes its games, specifically its Asphalt 9 Legends game.

The disputed domain name was registered on October 8, 2019 through a privacy service provider. It resolves to a website offering coloring pages about various random subjects.

The website contains different sections referring to “Asphalt 9 Legends”, in particular a Terms and Conditions section where it is indicated that

“Trademarks

The Site name and logo are our trademarks, and may not be copied, imitated or used, in whole or in part, without our prior written permission. In addition, all page headers, custom graphics, button icons, and scripts are service marks, trademarks and/or trade dress of the Site, and may not be copied, imitated or used, in whole or in part, without our prior written permission”.

Furthermore, the Privacy Policy section of the website refers to the business name “Asphalt9legends”.

Finally, the Cookie Policy section of the said website further mentions:

“This Cookie Policy explains when and why cookies are used by Asphalt9legends, LLC, and its parent, subsidiaries and affiliates (collectively, “Asphalt9legends”, “we”, “us” or “our”).

5. Parties’ Contentions

A. Complainant

The Complainant indicates that it is the owner of several registrations in the European Union, the United States of America and in several other countries for the trademarks ASPHALT 9 LEGENDS, ASPHALT 9, and ASPHALT. It also owns domain names such <asphalt9.com> and <asphalt9legends.com>. The disputed domain name is identical and/or confusingly similar to these trademarks and domain names.

The Complainant alleges that the Respondent is not sponsored or related in any way with the Complainant. The Complainant never allowed the Respondent to use the name “Asphalt 9 legends” or to register the disputed domain name. The disputed domain name resolves to a website offering coloring pages, none being related to the famous game developed by the Complainant. The website further contains several untrue statements in the Terms and Conditions, the Privacy Policy, and the Cookie Policy tending to demonstrate that the Respondent would be the owner of the trademark ASPHALT 9 LEGENDS and of a corporate name “Asphalt 9 legends” or “Asphalt 9 legends, LLC” although these entities do not exist. The Respondent hence intends to take advantage of the Complainant’s game name and trademarks reputation to generate traffic by misleading visitors and search engines. Consequently, the Respondent is not making a legitimate or fair use of the disputed domain name in connection with a bona fide offering of goods or services.

The Complainant considers that the Respondent could not ignore the existence of the game “Asphalt 9: Legends” when registering the disputed domain name, notably considering the popularity of the said game and its renown in the mobile gaming market. Furthermore, the disputed domain name is linked to a website which unduly contains references to the name “Asphalt 9 legends”, more particularly by wrongly claiming that it is a corporate name and a trademark owned by the Respondent. The disputed domain name is therefore used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under the Policy, in order to prevail, a complainant must prove the following three elements for obtaining the transfer of a domain name:

(i) that the disputed domain name 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 the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant showed that it has trademark rights in ASPHALT, ASPHALT 9, and ASPHALT 9 LEGENDS through several registrations covering notably the European Union and the United States of America.

According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) under section 1.7, the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test 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 disputed domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.

The disputed domain name comprises the Complainant’s trademark ASPHALT 9 LEGENDS in its entirety.

The Panel thus arrives to the conclusion that the disputed domain name is identical to the Complainant’s trademark.

Under these circumstances, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s mark.

B. Rights or Legitimate Interests

Paragraph 4 (c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:

(i) the use of the domain name in connection with a bona fide offering of goods and services;

(ii) being commonly known by the domain name; or

(iii) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.

Once the Complainant establishes a prima facie case against the Respondent under this ground, the burden of production shifts to the Respondent to rebut it.

The Complainant indicates that it has no relationships of any kind with the Respondent and that it never allowed the Respondent to use the trademark ASPHALT 9 LEGENDS or to register the disputed domain name.

The Complainant also points out to the fact that the website linked to the disputed domain name contains wrong and incorrect information on the ownership of the trademark ASPHALT 9 LEGEND, a name on which the Complainant has exclusive rights. As a matter of fact, the Respondent’s website falsely claims to have rights over the said name and wrongfully refers to an Asphalt9legends company, but which does not appear to exist.

Based on the above, the Panel considers that the Complainant made a prima facie case and the burden of production shifted to the Respondent.

The Respondent chose not to reply to the case against him.

No evidence is contained in the case file which would demonstrate that the Respondent has rights or legitimate interests in the disputed domain name, in particular that the Respondent would be known by the disputed domain name or would be making a fair use of the disputed domain name.

Consequently, the Panels finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant has shown that its ASPHALT 9 LEGENDS trademark is registered and is widely used by the Complainant in relation to a racing game which is very popular and well-known among the relevant public for this type of product.

Consequently, the Panel agrees with the Complainant over the fact that the Respondent knew or should have known of the Complainant’s trademark and deliberately registered the identical disputed domain name (see WIPO Overview 3.0, section 3.2.2.).

With regard to the bad faith use condition, the disputed domain name is linked to a website which reproduces coloring pages for adults and for children. The website contains several false statements whereby the impression is given that the Respondent would be the owner of the trademark ASPHALT 9 LEGENDS and that a corporation bearing the very same name “Asphalt9legends, LLC” exists, although it is not the case.

The use by the Respondent of “Asphalt 9 legends”, a name which is registered as a trademark, widely promoted and commercialized by the Complainant in relation with a racing game, cannot be coincidental. The goal of such use is obviously to unduly profit from the Complainant’s reputation and to create a confusion in the public’s mind over the source of the disputed domain name and connected website.

The Panel further notes that the Respondent chose to remain silent within these proceedings.

In addition, the Respondent registered the disputed domain name through a privacy service, which is not evidence of bad faith per se, but the use of a privacy service linked with the fact that the Respondent has used false or incomplete contact details to register the disputed domain name, in the context of this case, is a clear indication that he wanted to hide his identity and use the disputed domain name in bad faith (see WIPO Overview 3.0, section 3.6.).

The Panel consequently finds that the Complainant has established its case under paragraph 4(a)(iii) of the Policy.

7. Decision

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 <asphalt9legends.net> be transferred to the Complainant.

Theda König Horowicz
Sole Panelist
Date: April 14, 2020