Stillfront Group AB, Candywriter, LLC v limin thoi, delvin elvin

WIPO Case No. DIO2024-0039

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Stillfront Group AB, Candywriter, LLC v. limin thoi, delvin elvin

Case No. DIO2024-0039

1. The Parties

The Complainants are Stillfront Group AB, Sweden, and Candywriter, LLC, United States of America

(“United States” or “US”), represented by DLA Piper LLP (US), United States.

The Respondent is limin thoi, delvin elvin, Viet Nam.1

2. The Domain Name and Registrar

The disputed domain names <bitlifegame.io> and <bitlifeonline.io> are registered with Name.com, Inc. and

NameCheap, Inc., respectively (the “Registrars”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21,
2024. On November 22, 2024, the Center transmitted by email to the Registrars respectively a request for
registrar verification in connection with the disputed domain names. On November 22, 2024, the Registrars
transmitted by email to the Center respectively its verification response disclosing registrant and contact
information for the disputed domain names which differed from the named Respondent and contact
information in the Complaint. The Center sent an email communication to the Complainants on November
25, 2024 providing the registrant and contact information disclosed by the Registrar, and inviting the
Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on

November 26, 2024.

The Center verified that the Complaint together with the amended Complaint satisfied the formal
requirements of the .IO Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .IO Domain
Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IO Domain Name

Dispute Resolution Policy (the “Supplemental Rules”).

1According to the Registrars verifications, “limin thoi” is the registrant’s name at the disputed domain name <bitlifeonline.io> WhoIs

record; and “delvin elvin” is the registrant’s name at the WhoIs record of the disputed domain name <bitlifegame.io>. In this decision,
unless reference is made to any of them separately, both are collectively named as the “Respondent”.

page 2

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 2, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 22, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 23, 2024.

The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on January 2, 2025.
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 Candywriter, LLC is a wholly owned subsidiary of the Complainant Stillfront Group AB, and both operate in the mobile videogames field. The Complainants have developed various videogames for iOS and Android platforms available for download on both the Apple Store and Google Play. Their most popular

mobile offering is BITLIFE, a life simulator videogame launched in 2018 that allows the player to make
various choices that influence their characters life path.

The Complainant Candywriter, LLC owns various trademark registrations for the BITLIFE mark, including Class 9 (hereinafter the “BITLIFE mark”). It further owns various associated trademark registrations for design marks, including United Sates Trademark Registrations No. 5966199 and 5967635, both registered on January 21, 2020, in Class 9, with the following graphic representations:

(US TM Reg. No. 5966199) (US TM Reg. No. 5967635)

The Complainant Candywriter, LLC together with the company Little White Bear Studios, LLC further own a
United States Copyright Registration for the computer software of the videogame BITLIFE, namely United

States Copyright Registration No. TX0008665944 published on September 29, 2018.

The disputed domain name <bitlifegame.io> (“Frist Disputed Domain Name”) was registered on November

25, 2022, and <bitlifeonline.io> (“Second Disputed Domain Name”) was registered on October 2, 2023.

Both disputed domain names resolve to active websites, in English language, that offer access to versions of shown upon entering these sites.

BITLIFE videogames for people, and various animals, as well as other videogames apparently unrelated to

The website linked to the First Disputed Domain Name uses a logo identical to US Trademark Reg. 5967635 as its favicon, as well as within its heading together with the BITLIFE mark. The owner of this site identifies itself as “BitLife LLC”, simply “BitLife” or “bitlifegame.io LLC” within the various sections of the site (“About Us”, “Copyright”, “Privacy Policy”, and “Term Of Use”), and offers as sole contact information a contact form.

The website2 linked to the Second Disputed Domain name uses a favicon consisting of a white figure over a red square, and includes the text “BITLIFE ONLINE” at its heading. At the bottom of this site, there is a disclaimer indicating, “Disclaimer: Bitlife Mod is an independent website and is not affiliated with any organization.” The owner of this site identifies itself as “Bitlife Online | Play Life Simulator Mod Version”

2 The Second Disputed Domain Name redirects to a website at “

page 3

within the “privacy policy” of the site, which is included in a section at the bottom of the site with a hardly
visible black icon over blue background. The bottom of this site also includes various icons in white color of

social media pages, which redirect to the top of the site.

None of these websites includes any information about the owner of these sites or that of the disputed
domain names, nor do they include any reference to their lack of relationship with the Complainants and their

BITLIFE mark.

5. Parties’ Contentions

A. Complainant

Key contentions of the Complainants may be summarized as follows:

The disputed domain names are under common control, and the different registrant’s names in the WhoIs records of the disputed domain names are either the same entity or related entities.

The disputed domain names wholly incorporate the BITLIFE mark. This mark is recognizable in the disputed
domain names, which are therefore confusingly similar to the mark. The additional words (“game” and
“online”) do not avoid but enhance the confusing similarity, as they are descriptive for online gaming.

The Respondent has no rights or legitimate interests in respect of the disputed domain names. There is no relationship between the Parties, the Respondent has no authorization to use the BITLIFE mark, and it is using the disputed domain names in connection to an illegal activity. The Respondent has copied Complainants’ copyrighted videogame software, and it offers this software with o authorization at its websites.

The disputed domain names were registered or are being used in bad faith. The disputed domain names were registered after the launch of the Complainants’ videogame (in 2018), when it has already acquired international notoriety. The use of the disputed domain names to host the Complainants’ videogames with

no authorization, including the BITLIFE mark both in the content of the Respondent’s websites and in the
disputed domain names corroborates the targeting. One of the registrants’ names, “limin thoi”, was used for
the registration of other domain names including the BITLIFE mark that were transferred to the Complainants
in a prior case under the Policy.3 The Respondent has a pattern of bad faith, engaging in unauthorized
registration of domain names featuring the BITLIFE mark to use them in connection with websites that offer
unlicensed versions of the Complainants’ videogame software.

The Complainants have cited previous decisions under the UDRP that they consider supportive of their position, and requests the transfer of the disputed domain names.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

The Complainants have made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel

3Stillfront Group AB and Candywriter, LLC v. Limin Thoi / Tran Dai, FA2408002111013, Nat. Arb. Forum September 12, 2024.

page 4

articulated, inter alia, in paragraph 10 of the Rules. Noting the substantive similarities between the Policy
and the UDRP, the Panel will refer to prior UDRP cases and doctrine where appropriate, as well as various
sections of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition

(“WIPO Overview 3.0”).

A. Preliminary issue: Consolidation against Multiple Registrants

The amended Complaint was filed in relation to nominally different domain name registrants. The Complainants allege the domain name registrants are the same entity or related entities and the disputed domain names are under common control, and they request the consolidation of the Complaint against the multiple disputed domain name registrants.

The disputed domain name registrants did not comment on the Complainants’ request.

In addressing the Complainants’ request, the Panel will consider whether (i) the disputed domain names or corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable to all Parties. WIPO Overview 3.0, section 4.11.2.

As regards common control, the Panel notes that the circumstances of this case show a similar pattern in the disputed domain names that leads to consider that they are under a common control. Particularly, the Panel notes (i) the disputed domain names share a similar composition and structure, as both incorporate the

BITLIFE mark followed by an additional term related to the videogames field; (ii) the disputed domain names are similarly used to host websites that offer unlicensed versions of the Complainants’ videogame together with other apparently unrelated videogames; and (iii) the domain names’ registrants used privacy services and provided the same country (Viet Nam) in the registration of the disputed domain names, both using nameservers with “cloudflare”.

As regards fairness and equity, the Panel sees no reason why consolidation of the disputed domain names in a single proceeding would be unfair or inequitable to any Party.

Accordingly, the Panel decides to consolidate the dispute regarding the nominally different disputed domain name registrants (collectively referred to as “the Respondent”) in a single proceeding.

B. Identical or Confusingly Similar

The Complainants indisputably have rights in the BITLIFE mark, both by virtue of their trademark registration and as a result of the continuous use of this brand since 2018.

The first element of the Policy functions primarily as a standing (or threshold) requirement. In cases where a domain name incorporates the entirety of a trademark, it will normally be considered identical or confusingly similar to that mark for purposes of the Policy; and the applicable generic Top Level Domain (“gTLD”) or

country code Top Level Domain (“ccTLD”) in a domain name is considered a standard technical registration
requirement and, as such, is generally disregarded under the first element confusing similarity test. This
practice of disregarding the TLD in determining identity or confusing similarity is applied irrespective of the
particular TLD (including with regard to “new gTLDs”); the ordinary meaning ascribed to a particular TLD
may be relevant in the assessment of the second and third elements. WIPO Overview 3.0., sections 1.7,
and 1.11.

The disputed domain names incorporate the BITLIFE mark in its entirety, and the ccTLD “.io” is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity.

Although the addition of other terms here, the terms “game” or “online”, may bear on assessment of the
second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing
similarity between the disputed domain names and the mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.8.

page 5

Accordingly, the Panel finds that the disputed domain names are confusingly similar to the Complainants’ trademark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.

C. Rights or Legitimate Interests

Although the Complainants bear the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, prior decisions under the Policy (as well as under the UDRP) have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the Respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the respondent the burden of production to come forward with relevant evidence of rights or legitimate interests in the disputed domain name, once the complainant has made a prima facie case the respondent lacks rights or legitimate interests.

The Complainants’ prima facie assertions and evidence effectively shift the burden to the Respondent of producing evidence of rights or legitimate interests in the disputed domain names in order to rebut the Complainants’ prima facie case. However, the Respondent has not rebutted the Complainants’ prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise.

The Panel finds nothing in the record indicating the Respondent may have any rights or legitimate interests in the disputed domain names.

The Panel notes the term “bitlife” does not share any similarities with the registrants’ names reveled by the
Registrars’ verifications.

The Panel has further corroborated through various searches over the Global Brands Database using the registrant’s names, that the Respondent does not own any registered trademark consisting of or including the terms “bitlife”, “bitlife game” or “bitlife online”.4

The Panel further notes the disputed domain names are not used in connection to a bona fide offering of goods or services, but in connection to websites that impersonate the Complainants and/or generate confusion or affiliation with the Complainants and the BITLIFE mark. In this respect, the Panel notes the Respondent’s websites include the BITLIFE mark, as well as other figurative Complainants’ registered trademarks within its content or as a favicon. Additionally, these websites do not include information about their owner or that of the disputed domain names, nor do they include any information about their lack of relationship with the Complainants and their trademark. While the website to which the Second Disputed Domain Name redirects includes some sort of a disclaimer, the Panel finds that it does not alter the Panel’s finding.

The Panel further notes the Respondent’s websites offer unlicensed versions of the Complainants’ videogame together with other apparently unrelated videogames that may compete with the Complainants and their business.

The nominative fair use of a trademark in a domain name by retailers, distributors or services providers is acceptable under certain circumstances outlined in the “Oki Data test” (in reference to Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). WIPO Overview 3.0, section 2.8. However, the Panel finds

the Respondent clearly fails this test as its websites (i) do not accurately or prominently disclose the Respondent’s lack of relationship with the Complainants; (ii) its sites do not exclusively refer to the Complainants’ BITLIFE videogame; and, apparently, (iii) they do not offer an authentic version of the

4Noting in particular the general powers of a panel, it has been accepted that a panel may undertake limited factual research into

matters of public record if it would consider such information useful to assessing the case merits and reaching a decision.
WIPO Overview 3.0, section 4.8.

page 6

Complainants’ videogame but unlicensed or illegal versions of the same. The Respondent’s websites deliberately generate confusion or affiliation with the Complainants and their trademark, to increase the traffic to these sites, to explode the Complainants’ videogame notoriety, and to offer illegal or unauthorized of this videogame and other competing videogames, for a commercial gain.

The Panel further notes both Respondent’s websites include an access or welcome form requesting the consent of the user for using his/her personal data and for transferring this data to third companies in order to access the sites.

The Panel finds the use of the disputed domain names indicates an intention to impersonate the Complainants or one of their affiliated companies, which alongside with the offer of illegal or unauthorized software and the potential collection of users’ personal sensible information constitutes an illegal or illegitimate activity that can never confer rights or legitimate interests on a respondent. Panels have held that the use of a domain name for illegal or illegitimate activity, here claimed distribution of illegal software, phishing, impersonation/passing off, or other types of fraud, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

Accordingly, the Panel finds the second element of the Policy has been established.

D. Registered or 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.

In the present case, the Panel notes the notoriety and global use of the BITLIFE mark since its launch in 2018 (four/five years before the registration of the disputed domain names), as well as its extensive presence over the Internet. The Panel has corroborated through various searches over the Internet for the terms “bitlife”, “bitlife game” or “bitlife online”, that these searches prominently reveal the Complainants’ videogame identified by the BITLIFE mark.

The Panel further notes the disputed domain names contain the BITLIFE mark followed by terms related to videogames (“game” and “online”), which, as such, are closely related to the Complainants’ business field. The use of terms that closely correspond to the Complainants’ field of activity increases the risk of confusion

or affiliation by Internet users, and, together with all other circumstances of this case, leads the Panel to
consider the Respondent likely knew of the Complainants and the BITLIFE mark and deliberately registered
the disputed domain names in bad faith.

The Panel further finds the use of the disputed domain names reveals the intention to generate confusion or affiliation with the Complainants and their trademark for a commercial gain and possibly to obtain personal sensible information from Internet users. The Respondent’s websites content leads to this conclusion, as these websites include the BITLIFE mark as well as other figurative Complainants’ registered marks, do not identify their owner, and include no prominent indication of the lack of relationship between the Parties.

Furthermore, the use of the disputed domain names to offer illegal or unauthorized software and potentially to collect users’ personal sensible information constitutes an illegal or illegitimate activity that constitutes bad faith. Panels have held that the use of a domain name for illegal or illegitimate activity constitutes bad faith. WIPO Overview 3.0, section 3.4.

Under these circumstances, the Panel finds the use of a proxy shield and the use of different registrant’s names by the Respondent to shield its identity may properly be considered relevant as a further factor affirming a finding of bad faith.

page 7

The Panel further finds, according to the evidence provided by the Complainants of prior cases decided under the Policy, the Respondent is engaged in a pattern of bad faith registration and use of multiple domain names targeting the Complainants’ BITLIFE mark, as it has registered and used in bad faith various domain names that incorporate this trademark.

Additionally, the Panel is also entitled to draw an adverse inference from the failure of the Respondent to respond to the Complaint and to the factual allegations made by the Complainants.

Therefore, the Panel finds that the Complainants have established the third element 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 names, <bitlifegame.io> and <bitlifeonline.io> be transferred to the

Complainants.

/Reyes Campello Estebaranz/
Reyes Campello Estebaranz
Sole Panelist
Date: January 16, 2025