Netflix Studios, LLC v Bilal Khan, Squid Game

WIPO Case No. D2024-2927

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Netflix Studios, LLC v. Bilal Khan, Squid Game

Case No. D2024-2927

1. The Parties

The Complainant is Netflix Studios, LLC, United States of America (“United States”), represented by Coates

IP, United States.

The Respondent is Bilal Khan, Squid Game, Pakistan.

2. The Domain Name and Registrar

The disputed domain name <squidgamemaker.com> is registered with FastDomain, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2024. On July 18, 2024, the Center transmitted by email to the Registrar a request for registrar verif ication in connection with the disputed domain name. On July 18, 2024, the Registrar transmitted by email to the Center its verif ication response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verif ied that the Complaint satisf ied 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 notif ied the Respondent of the Complaint, and the proceedings commenced on July 29, 2024. In accordance with the Rules, paragraph 5, the due date for Response was August 18, 2024. The Respondent did not submit any response.

Accordingly, the Center notif ied the Respondent’s default on August 20, 2024.

The Center appointed Rodrigo Azevedo as the sole panelist in this matter on August 23, 2024. The Panel f inds 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.

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4. Factual Background

The Complainant is Netflix Studios, LLC, an American company that provides the famous video on-demand streaming service and is currently a leading Internet entertainment service.

In 2021, the Complainant released a South Korean television series named “Squid Game”, which quickly became the Complainant’s most-watched series.

The Complainant owns registered trademark and common law trademark rights for SQUID GAME for numerous goods and services, including the Australia Trademark Registration number 2217495, registered on October 8, 2021, and Singaporean Trademark Registration number 40202124241S, registered on March 24, 2024.

The disputed domain name was registered on May 19, 2022.

The Panel accessed the disputed domain name on September 1, 2024, which resolved to a webstore named “SQUID GAME MAKER”, containing reproductions of the SQUID GAME logo and trademark, and where SQUID GAME costume items were offered for sale. The “About us” section of the webstore states that “The world loves squid games! The viral Netf lix show captivated millions of viewers globally with its thrilling storyline, mesmerizing characters, finest direction, acting, and enchanting wardrobe! Since the series launch, people globally have been looking forward to getting their hands on squid game merchandize. Keeping in view the massive demand for authentic and high-quality squid game merchandize and the dread of many online stores, we decided to take matters into our own hands. Squidgamemaker is one of the largest online stores of fering exclusive merchandize for the series.”

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

- The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant has registered and common law rights in the SQUID GAME mark around the world long prior to Respondent’s registration of the disputed domain name. The Complainant adopted the SQUID GAME mark in 2021 and began use at least as early as 2021. The disputed domain name is identical to the Complainant’s SQUID GAME mark and logo. The inclusion of “maker” does little to distinguish the disputed domain name from the Complainant’s mark and branding, especially as the term refers to “making” yourself into a character f rom the Complainant’s SQUID GAME show. There is therefore no question that the

disputed domain name is confusingly similar in appearance, pronunciation, meaning and overall commercial impression to the SQUID GAME mark. The Complainant has a copyright registration for the Squid Game Season 1 Style Guide, which depicts the SQUID GAME logo, copyrighted images of the characters within the show, along with their costumes and other associated trade dress elements associated with the Squid Game show.

- The Respondent has no rights or legitimate interests in respect of the disputed domain name. license to sell merchandise under the Complainant’s SQUID GAME mark. The disputed domain name resolves to a website that clearly sells items under the Complainant’s SQUID GAME mark and other intellectual property related to its SQUID GAME show. As such, the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name. The Respondent is not commonly known by the disputed domain name, and has acquired no trademark or service mark rights in the SQUID GAME mark. Even if the Respondent was a reseller of authentic SQUID GAME merchandise (which it is not), the Oki Data test would require it to accurately and prominently disclose the registrant’s relationship with the trademark holder.

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- The disputed domain name was registered and is being used in bad faith. The disputed domain name resolves to a website that solely offers merchandise related to the Complainant’s SQUID GAME show and depicts the NETFLIX and SQUID GAME trademarks. This clearly evidences the Respondent’s bad faith attempt to ride on the well-known status and fame of the name “Squid Game.” The website makes clear reference to the Complainant on the home page. The disputed domain name also holds itself out as offering original merchandise, when in fact the merchandise is counterfeit. The disputed domain name was

registered to prevent the Complainant f rom registering it.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:

(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.

A. Identical or Confusingly Similar

It is well accepted that the f irst element functions primarily as a standing requirement. The standing
(or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison
between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel
Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

Annex 7 to the Complaint shows registrations for the SQUID GAME trademark obtained by the Complainant as early as in 2021. Based on the available record, the Panel f inds the Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.

The trademark SQUID GAME is wholly encompassed within the disputed domain name, together with the suf f ix “maker”, as well as with the generic Top Level-Domain (“gTLD”) extension “.com”.

Although the addition of other terms (here, “maker”) may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a f inding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

It is also well established that the addition of a gTLD, such as “.com”, is typically disregarded when determining whether a domain name is confusingly similar to a complainant’s trademark as such is viewed as a standard registration requirement. WIPO Overview 3.0, section 1.11.1.

Based on the available record, the Panel f inds the f irst element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is of ten primarily within the knowledge or control of the

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respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisf ied the second element. WIPO Overview 3.0,

section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The Complainant has not licensed nor authorized the use of its well-known trademark to the Respondent, and the Panel f inds no indication that the Respondent is commonly known by the disputed domain name.

Furthermore, the Complainant has shown that the disputed domain name is linked to a website of fering for sale SQUID GAME costumes, reproducing the Complainant’s trademark and logo. However, according to the Complainant, the Respondent is not an authorized reseller, nor has obtained any permission for such reproductions of trademarks and logos.

Additionally, although encompassing the Complainant’s trademark SQUID GAME at the disputed domain name and entitling the respective website “Squid Game Maker”, the website does not accurately and prominently disclose the registrant’s relationship with the trademark holder. On the contrary, the website purports to be the official merch store of the Complainant’s costumes, expressly claiming to of fer “authentic” and “exclusive” clothing, which is denied by the Complainant. Therefore, the Respondent does not pass the “Oki Data test” to characterize a legitimate interest with regards to the disputed domain name (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903).

The Panel has no doubt that “Squid Game” is a term directly connected with the Complainant’s series and related clothing items.

Based on the available record, the Panel f inds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

The Panel concludes that it is not feasible that the Respondent was not aware of the Complainant’s trademark and that the registration of the disputed domain name was a mere coincidence.

When the disputed domain name was registered (in 2022), the SQUID GAME trademark was already connected with the Complainant’s famous streaming series.

The disputed domain name includes the distinctive trademark SQUID GAME in its entirety, just adding the suf fix “maker”. According to the WIPO Overview 3.0, section 3.1.4, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely known trademark by an unaf f iliated entity can by itself create a presumption of bad faith.

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Actually, the content at the website linked to the disputed domain name - including reproductions of the Complainant’s trademark and logo, as well as the description of the respective movie series, characters and clothing – and the false claims that the costumes offered for sale are “authentic” and “exclusive” make it clear that the Respondent intentionally attempted to attract the Complainant’s customers, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, af f iliation, or endorsement of the website.

Finally, the absence of a formal reply f rom the Respondent to the Complainant’s contentions and of any justif ication of the use of the trademark further support a f inding of bad faith in the present case.

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 <squidgamemaker.com> be transferred to the Complainant.

/Rodrigo Azevedo/
Rodrigo Azevedo
Sole Panelist
Date: September 6, 2024