Jagex Limited v. xc2 c/o Internet Coordinator
Claim Number: FA0609000795441
Complainant is Jagex Limited (“Complainant”), represented by Adam Taylor, of Adlex Solicitors, 76A Belsize Lane, London NW3 5BJ UK. Respondent is xc2 c/o Internet Coordinator (“Respondent”), P.O. Box No. 71826, KCPO, Central 00000, HK.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <runescapeclassic.com>, registered with Enom, Inc.
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 September 13, 2006; the National Arbitration Forum received a hard copy of the Complaint on September 14, 2006.
On September 13, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <runescapeclassic.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 September 19, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 9, 2006 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@runescapeclassic.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 17, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <runescapeclassic.com> domain name is confusingly similar to Complainant’s RUNESCAPE mark.
2. Respondent does not have any rights or legitimate interests in the <runescapeclassic.com> domain name.
3. Respondent registered and used the <runescapeclassic.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Jagex Limited, is the designer, developer, and
operator of online computer games.
Complainant’s most well known product is a game known as “RuneScape,” of
which it has two versions, known as “RuneScape Classic” and “RuneScape 2.” Complainant holds a registration with the
United Kingdom Patent Office (“UKPO”) for its RUNESCAPE mark (Reg. No.
2,302,308 issued December 27, 2002).
Complainant also operates a website at the <runescape.com> domain
name.
Respondent registered the <runescapeclassic.com> domain name on May 13, 2005. Respondent’s disputed domain name resolves to a website that displays hyperlinks to websites that offer services related to Complainant’s game as well as websites that are in direct competition with Complainant. Additionally, Respondent has been a participant in several other UDRP decisions in which Respondent’s disputed domain names were transferred from Respondent to the respective complainants in those cases.
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.
The Panel finds that Complainant has established rights in the RUNESCAPE mark through its registration with the UKPO. 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).
Respondent’s <runescapeclassic.com> domain name is confusingly similar to Complainant’s RUNESCAPE mark as it combines Complainant’s entire mark with the common term “classic,” which also is associated with one of Complainant’s versions of its popular computer game that uses the RUNESCAPE mark. The Panel finds that such an addition to Complainant’s mark is not enough to negate the confusing similarity between the disputed domain name and Complainant’s mark under Policy ¶ 4(a)(i). See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Brambles Indus. Ltd. v. Geelong Car Co. Pty. Ltd., D2000-1153 (WIPO Oct. 17, 2000) (finding that the domain name <bramblesequipment.com> is confusingly similar because the combination of the two words "brambles" and "equipment" in the domain name implies that there is an association with the complainant’s business).
The Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Complainant initially must establish that Respondent lacks any rights or legitimate interests in the <runescapeclassic.com> domain name. However, once Complainant demonstrates a prima facie case, the burden of proof shifts, and Respondent must prove that it has rights or legitimate interests in the disputed domain name. See Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Complainant asserts that Respondent is not authorized to use
Complainant’s RUNESCAPE mark, and that Respondent is not associated with Complainant
in any way. Furthermore, Respondent’s
WHOIS information does not suggest that Respondent is commonly known by the <runescapeclassic.com>
domain name. In Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000), the panel found no rights or legitimate interests where the
respondent was not commonly known by the mark and had never applied for a
license or permission from the complainant to use the trademarked name. See Ian
Schrager Hotels, L.L.C. v. Taylor, FA
173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable
evidence to support the assertion that a respondent is commonly known by a
domain name, the assertion must be rejected).
Accordingly, the Panel finds that Respondent is not commonly known by
the disputed domain name under Policy ¶ 4(c)(ii).
Respondent is using the disputed domain name to display hyperlinks to websites that offer services related to Complainant’s game as well as direct competitors of Complainant, presumably for Respondent’s own commercial benefit through the accrual of click-through fees. Such use 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 WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <runescapeclassic.com>
domain name to divert Internet users to a website that displays links to
third-party websites, some of which are in direct competition with
Complainant. The Panel finds that such
use constitutes disruption and is evidence of bad faith registration and use
under Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368
(Dec. 15, 2000) (finding that the respondent registered and used the domain
name <eebay.com> in bad faith where the respondent has used the domain
name to promote competing auction sites); see
also Puckett, Individually v.
Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted
business from the complainant to a competitor’s website in violation of Policy
¶ 4(b)(iii)).
Respondent is using the
disputed domain name to display links to third-party websites, a use that the
Panel infers is for the commercial gain of Respondent through the earning of
click-through fees. Additionally, the <runescapeclassic.com>
domain name creates a likelihood of
confusion as to the source and affiliation of Complainant with the disputed
domain name and corresponding website.
In Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22,
2002), the panel found that where the respondent profited from its diversionary
use of the complainant's mark where the domain name resolved to commercial
websites and the respondent failed to contest the complaint, it may be
concluded that the respondent was using the domain name in bad faith pursuant
to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312
(Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in
question is obviously connected with the complainant’s well-known marks, thus
creating a likelihood of confusion strictly for commercial gain). The
Panel finds that such use constitutes bad faith registration and use under
Policy ¶ 4(b)(iv).
Moreover, the Panel also
finds bad faith registration and use under Policy ¶ 4(b)(ii) as Respondent has
been involved in several previous UDRP decisions where the disputed domain
names were transferred from Respondent to the respective complainants in those
cases. See Ravina Festival Ass’n v.
xc2 c/o Internet Coordinator, FA 738155 (Nat. Arb. Forum August 7, 2006); see
also Martha Stewart Living Omnimedia Inc. v. XC2, D2003-0944 (WIPO January
23, 2004). The Panel finds that such
evidence demonstrates Respondent’s pattern of registering infringing domain
names, which is evidence of bad faith under Policy ¶ 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum
Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by
registering multiple domain names that infringe upon others’ famous and
registered trademarks); see also
Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 16,
2000) (finding a bad faith pattern of conduct where the respondent registered
many domain names unrelated to its business that infringe on famous marks and
websites).
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 <runescapeclassic.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: October 31, 2006
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