Jagex Limited v. lucky studio HITEEN QUARTER
Claim Number: FA0802001152663
Complainant is Jagex Limited (“Complainant”), represented by Adam
Taylor, of Adlex Solicitors,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <buyrunescapemoney.com>, registered with Xin Net Technology Corporation.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On February 29, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 20, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <buyrunescapemoney.com> domain name is confusingly similar to Complainant’s RUNESCAPE mark.
2. Respondent does not have any rights or legitimate interests in the <buyrunescapemoney.com> domain name.
3. Respondent registered and used the <buyrunescapemoney.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Jagex Limited, designs, develops, and operates
online computer games. One of
Complainant’s well-known products is RUNESCAPE, an online role-playing
game. Complainant registered the
RUNESCAPE mark with the United Kingdom Intellectual Property Office (“UKIPO”)
Respondent registered the <buyrunescapemoney.com>
domain name on
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
By registering the RUNESCAPE mark with the UKIPO, CIPO, and USPTO, Complainant has established rights to the mark under Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
The disputed domain name incorporates the entire RUNESCAPE
mark, and includes the generic words “buy” and “money.” The panel in Christie’s Inc. v. Tiffany’s
Jewelry Auction, Inc., D2001-0075 (WIPO Mar. 6, 2001) found that the domain
name <christiesauction.com> was
confusingly similar to the complainant's mark since it merely added the word
“auction” used in its generic sense.
Here, Respondent adds two generic terms that are similarly used in a
generic sense, and therefore, do not distinguish the <buyrunescapemoney.com> domain name from the RUNESCAPE
mark for the purposes of confusing similarity under Policy ¶ 4(a)(i). Moreover, all registered domain names are
required to have a top-level domain.
Therefore, Respondent’s inclusion of the generic top-level domain
(“gTLD”) “.com” does not sufficiently distinguish the mark. The Panel concludes that the disputed domain
name is confusingly similar to Complainant’s RUNESCAPE mark pursuant to Policy
¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant bears the initial burden of demonstrating that Respondent lacks all rights and legitimate interests in the disputed domain name; and here, Complainant has made that assertion and therefore established a prima facie case pursuant to Policy ¶ 4(a)(ii). The panel in Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) held that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the disputed domain name, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue.” Therefore, the Panel here concludes that Respondent now has the burden of showing that it has rights or legitimate interests in the <buyrunescapemoney.com> domain name. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent failed to respond to the Complaint. In BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), the panel concluded that “[b]y not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name.” The Panel, however, will consider all evidence in the record to determine if Respondent has any rights or legitimate interests under Policy ¶ 4(c). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).
Complainant contends that Respondent has no association with Respondent and has never authorized or licensed Respondent to use the RUNESCAPE mark. The WHOIS information does not indicate that Respondent is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent has been using the disputed domain name to host a website that prominently displays Complainant’s name and mark and advertises competing gaming products, thereby benefiting from the goodwill associated with the RUNESCAPE mark. Thus, the Panel finds that such use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <buyrunescapemoney.com>
domain name to advertise competing products on its commercial website and
prominently display Complainant’s business name and mark. Respondent’s use of the disputed domain name
is capable of creating confusion as to Complainant’s source, sponsorship,
affiliation, or endorsement of the website that resolves from the disputed
domain name. The panel
in State Fair of Texas v. Granbury.com,
FA 95288 (Nat. Arb. Forum
Respondent is using the disputed domain name to advertise competing gaming
products in banner advertisements, the Panel finds that Respondent’s use is
capable of disrupting Complainant’s business.
Therefore, the Panel finds evidence of registration and use in bad faith
under Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <buyrunescapemoney.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: April 7, 2008
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