ELIGIBILITY REQUIREMENTS DISPUTE RESOLUTION POLICY
Jagex Limited v Calior Black
Claim Number: FA0810001227395
Complainant is Jagex Limited, represented by Adam Taylor, of Adlex Solicitors, United Kingdom. Respondent is Calior Black, United Kingdom.
REGISTRAR AND DISPUTED REGISTERED NAME
The Registered Name at issue is <runescape.name>, registered with eNom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on October 2, 2008; the Forum received a hard copy of the Complaint on October 3, 2008.
On October 2, 2008, eNom, Inc. confirmed by e-mail to the Forum that the Registered Name <runescape.name> is registered with eNom, Inc. and that Respondent is the current registrant of the Registered Name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve registered name disputes brought by third parties in accordance with the Eligibility Requirements Dispute Resolution Policy (“ERDRP”).
On October 13, 2008 a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 3, 2008 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with 2(a) of the Rules of Procedure for the Eligibility Requirements Dispute Resolution Policy (the “ERDRP Rules”)
Having received no Response from Respondent the Forum transmitted to the parties a Notification of Respondent Default.
On November 6, 2008, pursuant to ERDRP Rule 6(b), the Forum appointed Sandra J. Franklin as the sole Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibilities under Paragraph 2(a) of the ERDRP Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ERDRP, ERDRP Rules, the Forum’s ERDRP 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 Registered Name be cancelled, and further requests that the Panel issue a Defensive Registration for the Registered Name pursuant to Policy 5(f)(i)(C).
Complainant asserts that Respondent registered <runescape.name> in violation of the Eligibility Requirements for the following reasons:
1. Respondent’s legal name is not “Runescape.”
2. Respondent does not have any trademark or service mark rights in fictional characters named “Runescape.”
3. Respondent as an individual has not been commonly known by the name “Runescape.”
Complainant asserts that the <runescape.name> Registered Name is identical to the textual or word elements of Complainant’s RUNESCAPE mark and therefore has established rights in the <runescape.name> Registered Name under Phase I.
No Response was received.
Complainant instituted this action as Jagex Limited pursuant to Policy ¶ 4(b) of the EDRP. Complainant has carried out the business of designing, developing and operating online computer games since 2001. Complainant’s most popular game is the game “Runescape.” Complainant owns several trademark registrations for the RUNESCAPE mark, including a registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,829,952 issued April 6, 2004).
Respondent registered the <runescape.name> Registered Name on February 14, 2008. Respondent has not presented any evidence to show that its legal name includes any variation of “Runescape” or that it is commonly known by “Runescape.”
Paragraph 15(a) of the ERDRP 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 the Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a), and 15(a) of the ERDRP Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the ERDRP Rules.
Paragraph 4(b) of the ERDRP requires that the Complainant prove each of the following elements in order to establish that the Registered Name was registered in violation of the Eligibility Requirements and obtain an order that a Registered Name should be cancelled:
(1) the name corresponding to the Registered Name is not the legal name of Respondent; and
(2) the name corresponding to the Registered Name is not the name of a fictional character in which the Respondent has trademark or service mark rights; and
(3) the Respondent has not been commonly known by the name corresponding with the Registered Name.
If the above elements are shown, and Complainant requests that the Registered Names be transferred to Complainant, paragraph 5(f)(i)(C) of the ERDRP requires Complainant to establish that it meets the Eligibility Requirements correspondent to the Registered Names.
There is no evidence that Respondent’s legal name is “Runescape.” The evidence in the record reveals that Respondent’s legal name is “Calior Black.” Therefore, Respondent’s registration of the <runescape.name> Registered Name does not meet this Eligibility Requirement, and the ERDRP Policy paragraph 4(b)(i) has been satisfied.
Name of Fictional Character
Respondent has not come forward with any evidence establishing Respondent’s ownership of any trademark or service mark rights for a character by the name of “Runescape.” Therefore, Respondent does not meet the requirements of paragraph 4(b)(ii) of the ERDRP.
Commonly Known As
There is no evidence that Respondent is commonly known by the name “Runescape.” In fact, Respondent’s WHOIS information identifies Respondent as “Calior Black.” Therefore, Respondent’s Registered Name, <runescape.name>, does not meet the requirements of paragraph 4(b)(iii), and the ERDRP Policy has been satisfied.
Complainant’s Eligibility For Defensive Registrations
Complainant requests that the Panel issue a Defensive Registration for the <runescape.name> Registered Name pursuant to ERDRP 5(f)(i)(C). Therefore, Complainant must meet the Common Defensive Registration Requirements.
Phase I Defensive Registration
Paragraph 2(b) of the Rules for the ERDP for Phase I Defensive Registrations of the .NAME Restrictions requires Complainant to prove that the name is identical to the textual or word elements of Complainant’s trademark or service mark. Complainant has provided the Panel with evidence of its registrations of its RUNESCAPE mark with the USPTO, that was issued prior to Respondent’s registration of the Registered Name on February 14, 2008. The RUNESCAPE mark is identical to the <runescape.name> Registered Name and Complainant has thus satisfied the requirements of paragraph 5(f)(i)(C) of the ERDRP for Phase I Defensive Registration.
Phase II Defensive Registration
Complainant also requests that the Panel issue a Phase II Defensive Registration for the <runescape.name> Registered Name under Paragraph 2(c) of the Rules for the ERDRP of the .NAME Restrictions. Pursuant to Paragraph 2(c), Phase II Defensive Registrations may be requested by any entity for any string or combination of strings. See Proposed Unsponsored TLD Agreement: Appendix L (.name), ¶ 2(c) Aug. 8, 2003. The Panel finds that Complainant has met this requirement for a Phase II Defensive Registration and orders that such Phase II Defensive Registration be entered for Complainant.
Complainant has established that the <runescape.name> Registered Name was registered in violation of the Eligibility Requirements. Accordingly, it is hereby Ordered that the Registered Name be CANCELLED. Having established ERDRP Policy Eligibility Requirements for the issuance of a Defensive Registration for the Registered Name, the Panel concludes that the requested relief should be granted.
Accordingly, it is hereby ordered that Phase I and Phase II defensive registrations in the Registered Name be entered for Complainant.
Sandra J. Franklin, Panelist
Dated: November 19, 2008
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