WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Faze Clan Inc. v. Contact Privacy Inc. Customer 1246215717 / Vlad Vasdyjk

Case No. D2021-2628

1. The Parties

The Complainant is Faze Clan Inc., United States of America (“United States”), represented by BrandIT GmbH, Switzerland.

The Respondent is Contact Privacy Inc. Customer 1246215717, Canada / Vlad Vasdyjk, Canada.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. Also on the same day, 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 August 16, 2021 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 August 20, 2021.

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 August 24, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 13, 2021. The Respondent did not submit any formal response. The Center notified the Commencement of Panel Appointment Process on September 16, 2021.

The Center appointed John Swinson as the sole panelist in this matter on September 22, 2021. 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 an e-sports and entertainment organization of professional gamers and online content creators. The Complainant was established in 2010. The Complainant’s divisions include nine competitive e-sports teams.

The Chief Financial Officer of the Complainant is Richard Bengston, who is known to the public through his social channels with the stage-name “Faze Banks”.

The Complainant owns United States trademark registration for FAZE, Registration No. 4550118, registered on June 17, 2014. The Complainant owns other trademark registrations including FAZE CLAN in a number of jurisdictions.

The disputed domain name was registered on January 7, 2020.

The Respondent did not file a formal response, so little is known of the Respondent. According to the registry records for the disputed domain name, the Respondent has an address in Toronto, Canada. The email address of the Respondent is “[redacted]@heybigmike.com”.

At the time of filing the Complainant, the disputed domain name redirected to <banksocial.io> which is the website of a United States bank that uses blockchain technology.

At the time of this decision, the disputed domain name redirects to <cryptozoo.co> which launched in September 2021 and is said to be a service “developed as a way to introduce blockchain technology, specifically NFTs, to new market participants by combining the proven success of gamified animal ownership with the anticipatory optimism of collecting trading cards.”

5. Parties’ Contentions

A. Complainant

In summary, the Complainant makes the following submissions:

The Complainant owns numerous trademark registrations for FAZE and FAZE-formative marks in numerous jurisdictions.

The disputed domain name incorporates entirely the Complainant’s registered trademark FAZE.

The second-level portion “banks” is a generic term closely connected to the Complainant’s activity, because the Complainant’s team gamer and COO’s stage-name – used also in all his social media handles – is exactly Faze Banks.

The FAZE marks are clearly recognizable within the disputed domain name. The combination “faze bank” is known by the public for being the stage-name of the Complainant’s CFO and gamer, who counts almost 11 million followers via his social channels.

The disputed domain name was registered by the Respondent on January 7, 2020, many years after the first registration of the Complainant’s trademark FAZE.

The Complainant has not licensed or authorized the Respondent to use the Complainant’s trademark FAZE. The Respondent is not affiliated to the Complainant. The Complainant did not authorize the Respondent to register or use the disputed domain name incorporating the FAZE trademark nor has the Complainant endorsed or sponsored the Respondent or the Respondent’s website.

There is no evidence that the Respondent is commonly known by the disputed domain name. (The Complainant provided evidence of searches conducted to demonstrate this.)

The inclusion of the Complainant’s trademark along with the term “banks” directly refers to Faze Clan’s gamer and reflects the Respondent’s intention to create an association, and a subsequent likelihood of confusion, with the Complainant and its trademarks in the mind of Internet users.

From the Complainant’s perspective, there is no effective and fair commercial use of the disputed domain name, so as to confer a right or legitimate interest in it in accordance with paragraph 4(c)(i) of the Policy, given that the Respondent is clearly exploiting the Complainant’s reputation and popularity.

It is therefore inconceivable that the Respondent was unaware of the existence of the Complainant’s company or trademarks when he registered the disputed domain name. On the contrary, it seems that the Respondent is fully aware of the Complainant’s rights, given that he has recognized in correspondence with the Complainant, the association with Faze Banks, the gamer, whose real name abbreviation is Ricky.

From the Complainant’s perspective, the direct connection with Faze Banks and the fact the disputed domain name incorporates in its entirety the trademark FAZE may mislead potential consumers. This association creates a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation and makes the general public believe that what is displayed on the website at the disputed domain name is actually authorized and associated with the Complainant.

B. Respondent

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

An email was sent to the Center from the email address “[redacted]@heybigmike.com”, in response to an email from the Center, that stated:

“Vlad is the owner. Thx!”

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

The onus of proving these elements is on the Complainant, even where the Respondent does not file a response.

Paragraph 15(a) of the Rules directs the Panel to decide the 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.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

As set out above, the Complainant owns a trademark registration for FAZE.

The Panel considers that the disputed domain name is confusingly similar to the Complainant’s FAZE trademark. The disputed domain name includes the Complainant’s FAZE trademark in its entirety.

The addition of the term “banks” to the disputed domain name does not negate the confusing similarity between the disputed domain name and the Complainant’s trademark under the Policy. Where the relevant trademark is recognizable within the disputed domain name, the addition of a word to the disputed domain name would not prevent a finding of confusing similarity under the first element.

Further, the Complainant’s CFO uses “Faze Banks” as his stage name and handle. A Google search of the term “Faze Banks” yields many search results about the Complainant’s CFO. For example, one prominent Google search result states:

“Richard ‘Ricky’ Bengston … better known online as FaZe Banks (also known as Ricky Banks or simply Banks), is an American YouTuber from Massachusetts, United States. He is one of the founders and owners of e-sports organization of FaZe Clan.”

The inclusion by the Respondent of the term “banks” in combination with the Complainant’s FAZE trademark in the disputed domain name is not a coincidence. This strongly suggests that the Respondent was aware of the Complainant and also supports the conclusion of confusing similarity.

The Complainant succeeds on the first element of the Policy in relation to the disputed domain name.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations 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; or

(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] 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 [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainant.

Previous UDRP Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent.

Accordingly, it is sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden of production will shift to the respondent to rebut that prima facie case.

The Panel concludes that none of the circumstances listed in paragraph 4(c) apply in the present circumstances.

The Complainant has not authorized the Respondent to register or use the disputed domain name or to use the FAZE trademark. The Respondent is not affiliated with the Complainant, and the Complainant has not endorsed the Respondent. The Complainant has rights in the FAZE trademark which clearly predate the Respondent’s registration of the disputed domain name.

The Complainant asserts that the Respondent is not commonly known by the disputed domain name and that the Respondent does not own any registered trademarks that include the disputed domain name.

The Complainant states, and the Panel has confirmed, that when the term “fazebanks” or similar is used as the search term for a Google search, the majority of the search results relate to the Complainant or to the Complainant’s Chief Financial Officer, and not to the Respondent. The Panel saw only one search result that relates to the Respondent. This single search result, which shows the website at the disputed domain name, does not demonstrate that the Respondent is commonly known by the disputed domain name.

In July 2021, the website at the disputed domain name website displayed textual content that created an association with the Complainant. This included use of the name “Ricky” as the supposed creator of that website. The Panel understands this to be a reference to the Complainant’s Chief Financial Officer who is also a famous gamer known as “Faze Banks”, and whose real name (Richard Bengtson) is abbreviated as “Ricky”.

When, in July 2021, the Complainant’s lawyers emailed a person who appears to be the owner of the disputed domain name (and who uses the same email address as the email address of the registrant as shown by the Registrar’s records) about this content, that person responded that he has removed the “offending content” and that:

“Some hacker must’ve got into my account and pointed the domain to your Exhibit A! Oops.. Thanks for letting me know, sorry for bothering you :) If Ricky would like to buy the domain name let me know!”

Regardless of who created the content on the website at the disputed domain name at that time, that content does not fulfil the requirements of the Policy to demonstrate rights or legitimate interests in the disputed domain name. A website that appears to impersonate an employee of the Complainant does not demonstrate rights or legitimate interests in the disputed domain name. In fact, it proves the opposite. See, for example, Regal Funds Management Pty Limited v. WhoisGuard Protected, WhoisGuard, Inc. / John Clerk, WIPO Case No. D2020-2773; Gateway Fiber LLC v. Wix.com Ltd., Wix.com Ltd. / Ali Oudah, Ayadi Group, WIPO Case No. D2021-1736; and L.M. Waterhouse & Co., Inc. v. Scott Myers, Intersearch Global, WIPO Case No. D2021-0962.

Shortly thereafter, the disputed domain name redirected to <banksocial.io>. The Complainant’s lawyer again wrote to the Respondent, and received the email response as follows:

“I do not live in the United States. I also have a legitimate basis for using the domain name. It is in no way affiliated with any trademark, client or company. This domain has been through many owners/buyers, and all have paid their bills. If your client wants my domain name that badly, he can buy it from me like a regular person.”

As can be seen, this email claims a “legitimate basis” but does no more than make this bold assertion.

The use of a domain name to re-direct Internet users to another website (or to the Complainant’s website) does not of itself confer on a respondent any rights or legitimate interests. See, for example, Canva Pty Ltd. v. Domain Administrator, WIPO Case No. D2020-1208; Société des Produits Nestlé S.A. v. Bassem Dhaouadi, WIPO Case No. D2020-1931; Ruby Life Inc. v. Domain Admin / Hulmiho Ukolen, Pavol Icik, WIPO Case No. D2019-1641; and Barrett Steel Limited v. Web Hosting, WIPO Case No. D2021-0055.

As stated above, the disputed domain name currently re-directs to the CryptoZoo website. This likely occurred after the Complainant was filed and does not change the analysis above.

The Complainant has established a prima facie case that the Respondent does not have any rights or legitimate interests in the disputed domain name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the disputed domain name.

The Respondent presented no evidence.

For the reasons set forth above, the Panel concludes the Respondent has no rights or any legitimate interests in the disputed domain name.

The Complainant succeeds on the second element of the Policy in relation to the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain name in bad faith.

The Complainant is well known in online gaming and e-sports. As stated above, it is highly likely that the Complainant was known to the Respondent when the Respondent registered the disputed domain name.

The Panel considers that it is likely that the Respondent registered the disputed domain name with the intention to take advantage of the Complainant’s reputation (and also the reputation of the Complainant’s Chief Financial Officer). The Respondent did not respond to the assertions in the Complaint that the Respondent registered the disputed domain name “in order to take advantage of reputation of the trademark and the Complainant’s goodwill free-riding on the Complainant’s reputation.”

In addition, the statements made by the Respondent in the Respondent’s correspondence with the Complainant’s lawyer (as discussed above) are consistent with the Complainant’s case and do not assist the Respondent.

The Panel finds that the Respondent has intentionally attempted to attract for commercial gain Internet users to his website or some other online location by creating likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website under paragraph 4(b)(iv) of the Policy. Compare Airlinen Ltd v. Deyan Dimitrov, VenturePoint Ltd, Laundryheap, WIPO Case No. D2019-2542.

Thus, for the above reasons, the Panel concludes that the registration and use of the disputed domain name was in bad faith.

The Complainant succeeds on the third element of the Policy in relation to the disputed domain name.

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 <fazebanks.com> be transferred to the Complainant.

John Swinson
Sole Panelist
Date: October 6, 2021