Jagex Limited v. THS ROBOT
Claim Number: FA0802001152990
Complainant is Jagex Limited (“Complainant”), represented by Adam
Taylor, of Adlex Solicitors,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gp4runescape.com>, registered with Hichina Web Solutions (Hong Kong) Limited.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 21, 2008; the National Arbitration Forum received a hard copy of the Complaint on February 25, 2008. The Complaint was submitted in both Chinese and English.
On February 21, 2008, Hichina Web Solutions (Hong Kong) Limited confirmed by e-mail to the National Arbitration Forum that the <gp4runescape.com> domain name is registered with Hichina Web Solutions (Hong Kong) Limited and that Respondent is the current registrant of the name. Hichina Web Solutions (Hong Kong) Limited has verified that Respondent is bound by the Hichina Web Solutions (Hong Kong) Limited registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On March 12, 2008, a Chinese language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 1, 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 4, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <gp4runescape.com> domain name is confusingly similar to Complainant’s RUNESCAPE mark.
2. Respondent does not have any rights or legitimate interests in the <gp4runescape.com> domain name.
3. Respondent registered and used the <gp4runescape.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 products is RUNESCAPE, a “massively multiplayer online role-playing game,” in which players interact with each other in themed, evolving virtual worlds. Complainant registered the RUNESCAPE mark with the United Kingdom Intellectual Property Office (“UKIPO”) on June 7, 2002 (Reg. No. 2,302,308); with the United States Patent and Trademark Office (“USPTO”) on November 26, 2002 (Reg. No. 2,829,952); with the Canadian Intellectual Property Office (“CIPO”) on August 8, 2003 (Reg. No. TMA635091); and with the Australian Trademark Authority (“IP Australia”) on February 9, 2003 (Reg. No. 944,344). Complainant also owns the <runescape.com> domain name.
Respondent registered the <gp4runescape.com> domain name on October 8, 2006. Respondent uses the disputed domain name to offer services related to Complainant’s game, and previously displayed Complainant’s trademark on its website. As of September 11, 2007, the website that resolves from the disputed domain name no longer displays Complainant’s images or logo.
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.
Complainant has registered the RUNESCAPE mark with the UKIPO, the USPTO, the CIPO, and IP Australia. Previous panels have found that registration of a mark with a trademark authority establishes a complainant’s right to a mark under Policy ¶ 4(a)(i). Thus, the Panel finds that Respondent has established rights to the RUNESCAPE mark pursuant to 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 Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).
Complainant contends that the disputed domain name is confusingly similar to the RUNESCAPE mark because it incorporates the entire mark and differs only by the addition of the generic term “gp4.” Complainant alleges that the generic term in fact describes its game because “gp” is an abbreviation of “gold pieces” and “4” is meant to be read as “for.” These terms describe an aspect of Complainant’s game involving the trading of virtual gold pieces. In Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000), the panel found confusing similarity where the respondent’s domain name combined the complainant’s mark with a generic term that had an obvious relationship to the complainant’s business. Here, the Panel also concludes that the use of terms describing Complainant’s game does not distinguish the disputed domain name from Complainant’s mark. Furthermore, Respondent’s addition of the generic top-level domain (“gTLD”) “.com” is irrelevant when determining confusing similarity because all registered domain names are required to have a top-level domain. Therefore, the Panel concludes that the <gp4runescape.com> domain name is confusingly similar to Complainant’s RUNESCAPE mark under Policy ¶ 4(a)(i). See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . .").
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Once Complainant makes a prima facie case asserting that Respondent lacks all rights and legitimate interests in the disputed domain name, the burden shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name. Here, the Panel finds that Complainant has made a prima facie case pursuant to Policy ¶ 4(a)(ii). Therefore, the burden shifts to Respondent. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Because Respondent has failed to respond to the Complaint, the Panel may presume that Respondent has neither rights nor legitimate interests in the disputed domain name. The panel in American Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) held that “based on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.” The Panel, however, will consider all evidence in the record to determine if Respondent has any rights or legitimate interests in the <gp4runescape.com> domain name 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 it has never authorized or licensed Respondent to use its RUNESCAPE mark. Moreover, the WHOIS information does not suggest that Respondent is commonly known by the disputed domain name. As a result, the Panel holds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
Respondent uses the disputed domain name to offer services related to Complainant’s game and previously displayed images and logos from Complainant’s game. Although Respondent has removed Complainant’s images and logos from the website, Respondent’s continued use of the <gp4runescape.com> domain name to offer services related to Complainant’s game demonstrates Respondent’s lack of rights and legitimate interests. The Panel concludes that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use); see also 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is benefiting from the
goodwill associated with Complainant’s RUNESCAPE mark to confuse, attract and
profit from Internet users searching for Complainant’s game. Respondent’s use is capable of creating
confusion as to Complainant’s source, sponsorship, affiliation or endorsement
of the website that resolves from the <gp4runescape.com>
domain name. Respondent previously displayed
Complainant’s images and logos on its website and offers services related to
Complainant’s game. The Panel finds that
Respondent’s use of the disputed domain name evidences registration and use in
bad faith under Policy ¶ 4(b)(iv). See State
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 <gp4runescape.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: April 17, 2008
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