Jagex Limited v. na c/o
Kristen Shilley
Claim Number: FA0612000874805
PARTIES
Complainant is Jagex Limited (“Complainant”), represented by Adam
Taylor, of Adlex Solicitors, 76A
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <jagex.info>, <jagexlimited.net> and <jagexlimited.org>,
registered with Registerfly.com, Inc.
PANEL
The undersigned Daniel B. Banks, Jr., as Panelist, 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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on December 22, 2006; the
National Arbitration Forum received a hard copy of the Complaint on December 27, 2006.
On December 26, 2006, Registerfly.Com, Inc. confirmed by e-mail to
the National Arbitration Forum that the <jagex.info>, <jagexlimited.net> and <jagexlimited.org>
domain names are registered with Registerfly.com,
Inc. and that the Respondent is the current registrant of the
names. Registerfly.com,
Inc. has verified that Respondent is bound by the Registerfly.com, 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 January 3, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of January 23, 2007 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@jagex.info,
postmaster@jagexlimited.net and postmaster@jagexlimited.org by e-mail.
A Response was received on January 4,
2007. The Response was deemed
deficient under ICANN Rule 5(a) as it was not received in hard copy format.
On January 10, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Daniel B. Banks, Jr., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant was incorporated on 28 April 2000 and has
since 2001 carried on business of designing, developing and operating online
computer games. The Complainant's most
well known product is a game known as “RuneScape.”
One of the shareholders of the Complainant traded under the name
“Jagex” via a website at <jagex.com> since 1999. The Complainant acquired
the goodwill in the name “Jagex” in 2001 and has since provided services from
that <jagex.com> site including access to its various games.
RuneScape is a “MMORPG” or “massively multiplayer online
role-playing game.” MMORPG's are large online computer games in which players
undertake tasks and interact with each other in themed, evolving virtual
worlds. The domain name
<runescape.com> was registered in January 2000 and the game RuneScape was
launched at that site in 2001. The
Complainant owns registered trademarks for JAGEX.
As of June 2006, there were some 4.6 million active registered
RuneScape players and some 742,000 RuneScape subscribers worldwide including in
the
All RuneScape players will be aware of the Complainant. All players have to agree to the
Complainant's terms and conditions when registering and all customer support
email communications are from “@jagex.com” e-mail addresses.
The Complainant has a very high Internet profile. For example, a
Google search dated 25 July 2006 shows 663,000 references to “Jagex.” This is a made-up name referable only to the
Complainant and indeed all top-ten Google results relate to the Complainant.
The Complainant's turnover over the period 2002 to 2005 was approximately £8 million (approximately $15 million). The Complainant has generated extensive worldwide press coverage in national and other media.
The disputed domains <jagex.info>, <jagexlimited.net>
and <jagexlimited.org> were registered on or about 13 October
2005.
As of 21 February 2006, there were websites at
<jagexlimited.com>, <jagex.us> (two connected sites - see below)
and <jagexlimited.net> forwarding to the Complainant's own website
<runescape.com>. However there were separate false webpages
at <jagexlimited.com/moderators> and <jagex.us/moderators>
which were identical to the official page accessible on <runescape.com>
(even including the copyright notice) where players could apply to become
“moderators” (i.e. responsible for monitoring and reporting in appropriate
behavior by other players).
These false pages were a “scam” to defraud RuneScape players by
tricking them into revealing their passwords to the Respondent to enable the
Respondent access the RuneScape items accumulated in their accounts - no doubt
for subsequent resale for real money.
There can be no other explanation for such a false webpage with a
RuneScape password requirement. The equivalent page on <jagexlimited.net>
forwarded to the <jagexlimited.com> scam page above.
WHOIS printouts for <jagexlimited.com> and <jagexlimited.net>
on 21 February 2006 showed that they were held in proxy. However, <jagex.us>, which was
registered on the same date as <jagexlimited.com> and <jagexlimited.net>
and used in the same fraudulent manner as those domains, was held in the name
of Josh Doucette. No doubt this was
because the .us registry did not allow domains to be held in proxy.
The Complainant's solicitor sent a cease and desist
communication by e-mail on 22 February 2006 to Mr. Doucette. No response was received.
At some point following the Complainant's communication of 22
February 2006, the websites at the domain names <jagexlimited.com>, <jagexlimited.net>
and <jagex.us> were removed. On 7 March 2006, the Complainant
discovered that <jagexlimited.org> had also been registered on the
same date and held in the same proxy as <jagexlimited.com> and <jagexlimited.net>. There was no website at <jagexlimited.org>
when the Complainant checked but the Complainant has no reason to doubt that it
was registered / used for the same purpose as <jagexlimited.com> and <jagexlimited.net>.
The Complainant's solicitor sent a second cease and desist
letter by recorded delivery on 7 March 2006, to the physical address of Mr.
Doucette.
Mr. Doucette replied by e-mail on 18 March 2006 sent from runos@runos.com.
The gist of the response was that he admitted to being the owner of
<jagexlimited.com>, <jagexlimited.net> and <jagex.us>
but claimed that he was operating a “clearly identified parody” and made
an offer to transfer these domain names to the Complainant for $400.
The Complainant's solicitor responded on 8 May 2006 stating that
the Complainant did not accept what Mr. Doucette said in his e-mail of 18 March
2006 but that the Complainant was prepared to pay $400 for
<jagexlimited.com>, <jagexlimited.net> and <jagex.us>
to cover Mr. Doucette's reasonable documented out of pocket costs incurred in
registering / transferring the domain names.
No response was received. The Complainant's
solicitor sent Mr. Doucette a reminder on 19 May 2006. No response was received.
The Complainant noticed on 30 May 2006 that the registrant for
<jagexlimited.com>, <jagexlimited.net> and <jagexlimited.org>
had changed to that of the Respondent per the WHOIS printouts but the registrar
remained unchanged.
The Complainant's solicitor sent a further cease and desist
letter by recorded delivery on 8 June 2006 to the physical address of the
Respondent. The letter was returned and
marked “no such street.”
The Complainant's solicitor sent a chaser e-mail on 7 September
2006. A response was received the
same day from the Respondent's e-mail address denying that it was “the intended
recipient.” The e-mail response failed
to address the substantive issues raised in the Complainant's solicitor's
e-mail of 7 September 2006.
The Complainant's solicitor received an e-mail on 8 September
2006 purportedly signed by a lawyer “Danny Bronski” of “Law Firm:
VeriTrademark” claiming to represent the Respondent. However, the e-mail header spelled the name
differently: [DBRonski@VeriTrademark.com].
The e-mail claimed that the Respondent had provided
“indisputable evidence” that she was “lawfully permitted” to possess the domain
names <jagexlimited.com>, <jagexlimited.net> and <jagexlimited.org>,
but no such evidence was provided. The
e-mail referred to “parody sites” under US copyright legislation (as had the
e-mail of Mr. Doucette of 18 March 2006) and made arbitrary mention of the
terms “Jage XLimited” (“Gage” “XL” “Imited”).”
The e-mail went on to state that the Complainant's solicitor may not
contact “this office or my client for any purpose nor reply” except for the
notification of legal proceedings. The
e-mail warned that telephone recording devices may be employed “to document
violation of the cease and desist letter.” The e-mail
concluded “You hereby agree to pay a direct settlement starting at $1,000
USD for statue and up to $100,000 for legal cost and damages, or the
maximum allowed by law, per domain name that is illegally transferred or stolen
from my client by your company or client and $500 USD per unwanted letter,
e-mail, or call to this office or my client.”
On 8 September 2006 “Kristen Shelley” had been removed from the
registrant field of <jagexlimited.com> leaving just “na” as the
registrant. Kristen Shelley remained as
the administrative contact. By 13
September 2006, the registrant had changed yet again, this time to “runos” at
the address given for Mr. Doucette and with Mr. Doucette shown as the
administrative contact.
On 24 September 2006, the Complainant discovered that <jagex.info>
had also been registered on 13 October 2005, the same date as
<jagexlimited.com>, <jagexlimited.net> and <jagexlimited.org>
and was now in the name of the Respondent.
There was no website at <jagex.info> when the Complainant
checked but the Complainant again has no reason to doubt that it was registered
/ used for the same purpose as the others referred to above.
In response to an inquiry by the Complainant's solicitors, Mr.
Danny Bronski of VeriTrademark confirmed by e-mail and attached letter of 27
November 2006 that he did not act for the Respondent or Josh Doucette nor did
he write the e-mail of 8 September 2006.
He said that that e-mail was obviously fraudulent for many reasons
including the incorrect spelling of his name and the mis-statement of the
law. He mentions that he may take legal
action against the persons concerned.
The disputed domain names are identical and/or confusingly
similar to Complainant’s JAGEX trademark which is the dominant feature of the
domain names.
Respondent has no rights or legitimate interests in respect of
the domain names. Complainant has no
association with Respondent and has never authorized or licensed Respondent to
use its trademarks. Respondent has not
been commonly known by the name comprised in the domains.
Insofar as Respondent has used the domain names, it was to
impersonate the Complainant and seek to defraud Complainant’s customers.
The domain names were registered and are being used in bad
faith. Respondent’s use of the domain names
was intended to create a likelihood of confusion as to an association between
Respondent and Complainant.
B. Respondent
A response was received by the Forum but was deemed not to be in
compliance with ICANN Rule 5(a). The
response was considered by the undersigned but it did not address the issues
raised by the Complaint. The response
does not admit any wrongdoing and states that Respondent is not a lawyer. It says that this is an unfair case and
refers to a settlement reached whereby Complainant was to pay the amount of
$400 for the cost of time and alleged value of the domain names. Respondent requests that the original binding
agreement be completed as intended. The
response does not address the alleged failure of Respondent to reply to Complainant’s
attempts to comply with the agreement.
The response also does not address the Complainant’s evidence of rights
or legitimate interests in respect of the domain names or the damaging evidence
of bad faith use to defraud Complainant’s customers.
In a subsequent e-mail to the Forum, Respondent requested that “…the
results or details involving personal information, in favor of the Complainant
or Respondent, are not posted on a public web site or source for the following
reasons: Washington State laws
protecting the privacy of students under the age of 18 years of age.”
FINDINGS
1 - The disputed domain names are identical
and/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 names.
3 – The domain names were registered and are
being used in bad faith.
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.
Preliminary Issue
Complainant asserts rights in the JAGEX mark through trademark registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,860,020 issued July 6, 2004) and the United Kingdom Patent Office (“UKPO”) (Reg. No. 2,302,759 issued November 8, 2002). The Panel finds that Complainant has established rights in the JAGEX mark through these registrations under Policy ¶ 4(a)(i). See 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.”); see also 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.").
Complainant contends that Respondent’s <jagex.info> domain name is identical to
Complainant’s JAGEX mark. The Panel finds
that the addition of a generic top-level domain (“gTLD”) is irrelevant when
conducting a Policy ¶ 4(a)(i) analysis, as a gTLD is a required part of all
domain names. See
Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that
the top level of the domain name such as “.net” or “.com” does not affect the
domain name for the purpose of determining whether it is identical or
confusingly similar); see also Nev. State Bank v. Modern Ltd. – Cayman Web
Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established
that the addition of a generic top-level domain is irrelevant when considering
whether a domain name is identical or confusingly similar under the
Policy.”). Therefore, the Panel finds
that Respondent’s <jagex.info> domain name is identical to Complainant’s mark under
Policy ¶ 4(a)(i).
Complainant further contends that Respondent’s <jagexlimited.net> and <jagexlimited.org> domain names are confusingly similar to
Complainant’s JAGEX mark. Complainant asserts that the addition of the
word “limited” to Complainant’s mark has a direct relationship to Complainant,
as Complainant operates under the name “Jagex Limited.” The Panel finds that the addition of the word
“limited” to Complainant’s mark does not sufficiently negate the confusing
similarity between Complainant’s mark and Respondent’s disputed domain
names. 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 PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov.
22, 2000) (finding that “Respondent does not by adding the common descriptive
or generic terms ‘corp’, ‘corporation’ and ‘2000’ following ‘PGE’, create new
or different marks in which it has rights or legitimate interests, nor does it
alter the underlying [PG&E] mark held by Complainant”).
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See 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”); see also 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). The Respondent has failed to present any evidence to show that it has rights or legitimate interests in respect of the disputed domain names.
The Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). Respondent’s WHOIS information does not indicate that Respondent is commonly known by any of the <jagex.info>, <jagexlimited.net> and <jagexlimited.org> domain names and there is no other evidence in the record to suggest that Respondent has ever been known by any of the disputed domain names. Additionally, Complainant states that Respondent is not authorized to use Complainant’s mark and that Respondent is not associated with Complainant in any way. See 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); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
Complainant asserts that Respondent has no rights or legitimate interests in the <jagexlimited.net> domain name, but was using the disputed domain name to redirect Internet users to the <jagexlimited.com> domain name, where Respondent attempted to access Internet users’ personal information. The website displayed at the <jagexlimited.com> domain name included a place for Internet users to enter in a password required to use Complainant’s video game at Complainant’s website. Complainant asserts that Respondent wanted to acquire this information in order to commercially profit by re-selling the information. The Panel finds that such use constitutes phishing and thus indicates that Respondent lacks rights and legitiamte interests in the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s website, and is used to acquire personal information from Complainant’s potential associates fraudulently” does not fall within the parameters of Policy ¶¶ 4(c)(i) or (iii)); see also Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Complainant also contends that Respondent has failed to make an active use of the <jagex.info> and <jagexlimited.org> domain names. The Panel agrees and finds that Respondent has failed to show demonstrable preparations to use the disputed domain names and such inactive 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 Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the respondent is not commonly known by the domain name); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that when the respondent declares its intent to develop a website, “[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute’”).
The Panel finds that Respondent registered the <jagexlimited.net> domain name for the purpose of fradulantly acquiring personal information from Internet users by attempting to display its website as one operated by Complainant, a use that is referred to as “phishing.” Such use is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients); see also HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that the respondent registered and used the domain name in bad faith because it redirected Internet users to a website that imitated the complainant’s website and was used to fraudulently acquire personal information from the complainant’s potential associates).
The Panel also finds that
Respondent has failed to make an active use of the <jagex.info> and <jagexlimited.org>
domain names. Such inactive use may be
evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000)
(finding no rights or legitimate interests in the domain name where there is no
proof that the respondent made preparations to use the domain name or one like
it in connection with a bona fide offering of goods and services before
notice of the domain name dispute, the domain name did not resolve to a
website, and the respondent is not commonly known by the domain name); see
also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel
concludes that Respondent's passive holding of the domain name does not
establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
The Panel
finds that Respondent registered the disputed domain names for the purposes of
commercially benefiting from the good will associated with Complainant’s
mark. The <jagex.info>, <jagexlimited.net> and <jagexlimited.org>
domain names are capable of creating a likelihood of confusion as to the source
and affiliation of Complainant to the disputed domain names and corresponding
websites. The panel finds such to be bad
faith registration and use under 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); see also Am. Univ. v. Cook, FA
208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name
that incorporates another's mark with the intent to deceive Internet users in
regard to the source or affiliation of the domain name is evidence of bad
faith.”).
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 <jagex.info>, <jagexlimited.net> and <jagexlimited.org>
domain names be TRANSFERRED from Respondent to Complainant.
Daniel B. Banks, Jr., Panelist
Dated: January 23, 2007
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