First Games Publisher
Network, Inc. v. Afonin Oleg
Claim Number: FA0911001296326
PARTIES
Complainant is First Games Publisher Network, Inc. (“Complainant”), represented by Lawrence
D. Mandel, of Mandel & Peslak, LLC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ragnesis.com>, registered with Onlinenic,
Inc.
PANEL
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.
Flip Petillion as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 25, 2009; the
National Arbitration Forum received a hard copy of the Complaint on December 2, 2009.
On November 30, 2009, Onlinenic, Inc. confirmed by e-mail to the
National Arbitration Forum that the <ragnesis.com> domain name is
registered with Onlinenic, Inc. and that
the Respondent is the current registrant of the name. Onlinenic,
Inc. has verified that Respondent is bound by the Onlinenic, Inc. 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 December 3, 2009, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 23, 2009 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 postmaster@ragnesis.com by e-mail.
A timely Response was received and determined to be complete on December 22, 2009.
On December 29, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Flip Petillion as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant considers the disputed domain name to be identical or confusingly similar to the trademarks and service marks in which it claims to have rights. Complainant further claims that Respondent has no rights or legitimate interest in respect of the disputed domain name. According to Complainant, Respondent has not been commonly known by the domain name. Moreover, Respondent considers that the Respondent does not use the domain name in connection with a bona fide offering of goods or services.
Finally, Complainant considers that the domain name was registered and being used in bad faith.
B. Respondent
Respondent does not refute Complainant’s allegation that the disputed domain name is identical or confusingly similar to Complainant’s trademark. Respondent also does not refute Complainant’s allegation that Respondent has no rights or legitimate interests in the disputed domain name. Furthermore, Respondent does not refute Complainant’s allegation that Respondent has registered and used the disputed domain name in bad faith. However, Respondent considers the disputed domain name to be his private property and is prepared to pass the domain name registration to Complainant.
FINDINGS
Complainant
is primarily in the business of developing and publishing Massive Multiplayer
Online Games (“MMOG”). An MMOG allows
players to play an interactive game online against and with other players
worldwide. This consists of two
components, a “client” component which is game software and multimedia “assets”
that are purchased, either as a “jewel cased” DVD or a “boxed set” DVD or
downloaded via an electronic distribution system (online purchase). Once installed on the consumer’s PC the game
connects via the internet with the Complainant’s servers, currently located in
the
Complainant
shows to be the holder of the following RAGNESIS and RAGNESIS ONLINE trademarks:
-
Ragnesis,
registered in the
-
Ragnesis online,
registered in the
It
is stated in the WHOIS records that Oleg Afonin, Respondent in the instant
case, is the current holder of the disputed Domain Name <ragnesis.com>, which he registered on September 22, 2005
with OnlineNIC, Inc. At the time the domain name was registered by Respondent, the
latter was employed by Complainant. Respondent registered the domain name in
his personal name for a project of Complainant he was working on, and that was
likely to be merchandised under the name RAGNESIS. Respondent was without any
doubt aware of this fact, as he claims that he suggested the name RAGNESIS
himself for the project.
From a sworn statement of Complainant’s President, it appears that the website linked to the disputed Domain Name <ragnesis.com> first showed Respondent site and was rerouted afterwards. This has not been refuted by Respondent.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
The Panel finds that Complainant has established rights
in the RAGNESIS mark under Policy ¶ 4(a)(i) through its registrations of the
mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,462,943 issued July 8,
2008). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007)
(finding that a trademark registration adequately demonstrates a complainant’s
rights in a mark under Policy ¶ 4(a)(i)); see also Renaissance
Hotel Holdings, Inc. v. Renaissance
Complainant asserts that the <ragnesis.com> domain name is identical to the
RAGNESIS mark. The disputed domain name
contains Complainant’s entire mark and adds the generic top-level domain
(“gTLD”) “.com.” This is not contested
by Respondent. Therefore, the Panel concludes that the <ragnesis.com> domain name is identical to
Complainant’s RAGNESIS mark under Policy ¶ 4(a)(i). See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat.
Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s
<abt.com> domain name is
identical to Complainant’s ABT mark since addition of a generic top-level
domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Reese v. Morgan, FA 917029
(Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic
top-level domain “.com” is insufficient to differentiate a disputed domain name
from a mark).
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that respondent has no rights or legitimate interests in respect of the domain names.
It is established case law that it is sufficient for the Complainant to make a prima facie showing that Respondent has no right or legitimate interest in the Domain Name in order to shift the burden of proof to the Respondent. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent is not commonly known by the <ragnesis.com> domain name. The WHOIS information for the disputed domain name lists “Afonin Oleg” as the registrant. Complainant’s assertions are not refuted by Respondent. As a result, Complainant showed that Respondent is not commonly known by the <ragnesis.com> 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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant asserts that Respondent
is a former employee of Complainant, who was responsible for registering the <ragnesis.com> domain name on behalf of
Complainant, and registered the disputed domain name in Respondent’s name. Complainant further asserts that the disputed
domain name redirects Internet users to Complainant’s website by first passing
users through Respondent’s website. Apart from a sworn statement by
Complainant’s President Craig Rose, Complainant provides no evidence of the
content of the website that is linked to the disputed domain name. As this
sworn statement is not refuted by Respondent with regard to the content of the
website and since Respondent recognizes that he has been employed by the
Complainant, Respondent does not show it was making a bona fide offering of goods or services at
the disputed domain name or had a legitimate interest in the disputed domain
name. Therefore, the Panel finds that it
is established that Respondent does not have any rights or legitimate interests
in the disputed domain under Policy ¶ 4(a)(ii).
See Savino Del Bene Inc. v. Gennari,
D2000-1133 (WIPO Dec. 12, 2000) (finding that a former employee does not
acquire rights or legitimate interests in a domain name identical to the former
employer's trademark); see also Vinidex Pty
Ltd. v. Auinger, AF-0402 (eResolution Oct. 18, 2000) (finding that the
respondent lacked rights and legitimate interests in the domain name because it
did not resolve to a developed website and the respondent, a former employee of
the complainant, had constructive knowledge of the complainant’s rights in the
mark).
The Panel finds that a finding of bad faith registration and use under Policy ¶ 4(a)(iii) is not limited to those instance enumerated in Policy ¶ 4(b). See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).
Complainant contends that Respondent
is a former employee of Complainant, who was responsible for registering the <ragnesis.com> domain name on behalf of
Complainant, and registered the disputed domain name in Respondent’s name. Complainant further contends that the
disputed domain name redirects Internet users to Complainant’s website by first
passing users through Respondent’s website. According to the Panel, such
actions would constitute bad vaith registration and use under Policy ¶
4(a)(iii). See Arab Bank for Inv. & Foreign Trade v.
Akkou, D2000-1399 (WIPO Dec. 19, 2000) (finding bad faith registration and
use where the respondent was formerly employed by the complainant, was fully
aware of the name of her employer, and made no use of the infringing domain
name).
However, Respondent contends that he registered the disputed domain name on his own initiative and afterwards proposed Ragnesis Online as a name for a Massive Multiplayer Online Games project Respondent was working on for Complainant. Respondent provides no evidence for this statement. In any event, even if this would be true, this would mean that Respondent had a future trademark of Complainant in mind at the time of the registration that he suggested himself to Complainant during the Massive Multiplayer Online Games project in question. Such registration combined with the refusal from Respondent to transfer the disputed domain name at the termination of his employment agreement, constitutes a clear indication that the domain name was registered in order to deprive Complainant to be the holder of a domain name that is identical to its mark. Therefore the Panel finds that Respondent’s actions constitute bad faith registration and use under Policy ¶ 4(a)(iii). See William Hill Org. Ltd. v. Fulfillment Mgmt. Servs. Ltd., D2000-0826 (WIPO Sept. 17, 2000) (finding bad faith registration and use where “[R]espondent’s employee must have had the Complainant’s trade marks in mind when choosing the disputed domain name and that the respondent‘s interest was to deprive the complainant of the opportunity to reflect its mark in that name until the registration expires”). The fact that Respondent now claims to be ready to pass the domain name registrations to the Complainant does not rule out bad faith registration and use in the past.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ragnesis.com> domain name be TRANSFERRED
from Respondent to Complainant.
Flip Petillion, Panelist
Dated: January 12, 2010
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