There is a robust market for tips, hacks, cheats, links and end-arounds of all sorts for popular online games all over the Internet. There are hundreds of Facebook pages and youtube videos devoted to users who like to participate and follow-up on the latest ways to hack a game. The website at www.backyardmonsterscheats.com has been one of these sites and is devoted to providing information about the game Backyard Monsters to allow a user to gain free access to new features or game levels that would otherwise be inaccessible without payment.
The owner of the BACKYARD MONSTERS game/mark brought a UDRP action to recover the www.backyardmonsterscheats.com domain. The panelist, Sandra J. Franklin, correctly found that the domain name should be transferred to the trademark owner, but rendered an interesting (if not confusing) decision in the process.
Specifically, the decision discusses how the Respondent has attempted to make money by confusing the public that it is associated with the BACKYARD MONSTERS game/mark. However, after taking a quick look at the site this is not what the Respondent has done. In fact, the site can’t be “confused” with the actual BACKYARD MONSTERS game because its content is devoted entirely to information related to rigging the game. This information is of course harmful to the Complainant’s business (and the entire online game industry) because it means that users who might otherwise pay for game access and features don’t have to, thereby costing it money – but there is no real “confusion” over what the site is doing or what a user can get from it.
That is not to say that there is no “similarity” or “likelihood of confusion” in terms of the way the Respondent uses the BACKYARD MONSTERS mark in the domain name – the mark is used in its entirety and is the dominant feature of the domain name.
Further, there is a strong (and winning) argument under UDRP law that the type of un-affiliated third party sites (at issue in this case) are rife with malware, spyware, false information, and harmful links that become associated with the game as a result of the Respondent’s use of the mark as part of the domain name – similar to the way a watch company like Breitling or Rolex are harmed by “fake” websites that use their respective marks to attract users and then sell counterfeit goods. Panels have consistently found that using domain names to facilitate the sale of counterfeit goods is strong evidence of bad faith. See, e.g., Prada S.A. v. Domains For Life, WIPO Case No. D2004‑1019. The same is true in the case of a game or software where the Respondent is peddling software and “memory editors” that are not part of Complainant’s game, but is using the mark to attract users to its site – in fact the site at www.backyardmonsterscheats.com has a FAQ section at the bottom of the page which states:
“Q: How do these cheats, hacks and trainers work?
A: It depends. Some are simple memory editors while others sniff and send encrypted packets that will trick the server into thinking you have more resources than you actually own.”
“Q: Can you make a trainer with my specifications?
A: To put it bluntly: no. Each of these were made to exploit a vulnerability that existed within the game, without these loopholes these hacks would not be possible. I make programs around these exploits, not the other way around.”
In sum, the Panel came to the correct conclusion in this case, but could have made it clearer under its line of reasoning...