WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Eidos Interactive Limited v. TIEN-Total Internet Entertainment Network
Case No. D2004-0380
1. The Parties
The Complainant is Eidos Interactive Limited, London, United Kingdom of Great Britain and Northern Ireland, represented by Jones Day, United Kingdom of Great Britain and Northern Ireland.
The Respondent is TIEN-Total Internet Entertainment Network, Helsinki, Finland.
2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the�“Center”) on May 24, 2004. On May 24, 2004, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the domain name at issue. On May 24, 2004, eNom, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 28, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was June�17,�2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 18, 2004.
The Center appointed Edoardo Fano as the sole panelist in this matter on June 22, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties (taking note of the Respondent’s default in responding to the Complaint).
Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of the Respondent’s response.
The language of the proceeding is English, being the language of the Registration Agreement.
4. Factual Background
The Complainant is Eidos Interactive Limited, the owner of several registrations in the UK, the European Community and other jurisdictions outside the European Community for the CHAMPIONSHIP MANAGER trademark, among which:
- UK registration for “DOMARK CHAMPIONSHIP MANAGER” No. 2.031.714;
- Community registration for “CHAMPIONSHIP MANAGER” No. 000052373.
The Complainant’s trademark rights in the wording “CHAMPIONSHIP MANAGER” dates back to 1992.
The CHAMPIONSHIP MANAGER trademark, associated to one of the most popular series of PC-based computer games ever published in the UK, has considerable and extensive goodwill and reputation.
The Complainant has spent a considerable amount of money advertising and promoting the CHAMPIONSHIP MANAGER trademark and series of games throughout the world.
Since 1992, over 4.5 million units of the game have been sold, of which 1.3 million had been sold prior to 1999, when the disputed domain name was registered by the Respondent: the forth edition of the CHAMPIONSHIP MANAGER series of games was published to great acclaim in 2003, becoming the third fastest selling computer game of all time across all formats in the UK.
The Respondent’s domain name was registered on January 29, 1999. It does not currently point at any website.
5. Parties’ Contentions
A. Complainant
The disputed domain name is identical to the Complainant’s trademark CHAMPIONSHIP MANAGER and confusingly similar to the Complainant’s trademark DOMARK CHAMPIONSHIP MANAGER.
The Complainant has not licensed or otherwise permitted the Respondent to use its trademark CHAMPIONSHIP MANAGER.
The Respondent has no rights or legitimate interest in the disputed domain name because its business has no lawful connection or association with the CHAMPIONSHIP MANAGER trademark or with the Complainant.
The Respondent’s name is totally different from the disputed domain name and the latter was registered after the Complainant had launched the extremely successful CHAMPIONSHIP MANAGER series of computer games and registered the CHAMPIONSHIP MANAGER trademarks.
Therefore the Respondent must have been aware of the Complainant’s extensive goodwill and reputation in the CHAMPIONSHIP MANAGER trademark when the disputed domain name was registered.
Moreover, the fact that the domain name at issue currently and (as far as the Complainant is aware) at no time has been pointed at any website, there is no evidence that the Respondent is making a legitimate, non-commercial or fair use of the disputed domain name and the Respondent’s use of the latter as e-mail address or otherwise cannot therefore be legitimate use of it.
The Respondent registered and is using the domain name in bad faith.
The Respondent knew or should have known of the CHAMPIONSHIP MANAGER trademark and the reputation and goodwill of the latter prior to registering the disputed domain name.
Further evidence of the Respondent’s continuing bad faith is that, when the Complainant offered to pay the Respondent’s costs in transferring the domain name at issue, the Respondent’s lawyer indicated in a telephone conversation that costs would be in the region of euro 100,000 and then attempted, this time in writing, to claim over euro 40,000 as out of pocket costs, including over 25,000 of legal costs, without providing any supporting documentation.
The Respondent was therefore seeking to sell the domain name at issue for an amount greater than out of pocket costs directly related to the domain name.
Under the Policy, an offer to sell a domain name for valuable consideration in excess of the documented “out of pocket” costs directly related to the domain name has been considered as being not only evidence of, but conclusively establishing that, the domain name has been registered and is being used in bad faith (CBS Broadcasting, Inc. v. Gaddor Saidi, WIPO Case No. D2000-0243).
Furthermore, in a previous case (William Grant & Sons Limited v. Daniel Scotto, WIPO Case No. D2000-1656) the Panel stated that bad faith can be found where the Respondent lacks any legitimate interest in the domain name and “waits passively” for contact from the rights older before demanding a premium for sale of the domain name: in the present case, the Respondent has attempted to claim inflated “expenses” but is in fact demanding a premium for the disputed domain name.
Finally, in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the Panel decided that passive holding of a domain name which does not resolve to a website could satisfy the requirement that the domain name is “used in bad faith”.
B. Respondent
The Respondent did not reply to the Complainant’s contentions and is in default: no exceptional circumstances explaining the default have been put forward.
A Respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the Complainant, in accordance with paragraph 14(b) of the Rules (see also Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL International plc v. Mark Freeman, WIPO Case No. D2000-1080; Alta Vista Company v. Grandtotal Finances Limited et al., WIPO Case No. D2000-0848)
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three tests which a Complainant must satisfy in order to succeed:
i. the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
ii. the Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
As far as the first of these tests is concerned, the Panel finds that the Complainant is the owner of the trademark CHAMPIONSHIP MANAGER both by registration and acquired reputation.
The disputed domain name is confusingly similar to the trademark CHAMPIONSHIP MANAGER.
The Complainant has therefore met its burden of proving that the domain name at issue is confusingly similar to Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Respondent has failed to file a Response in accordance with the Rules, paragraph 5 and has no obvious connection with the disputed domain name.
This and the fact that the Complainant asserts that the Respondent has no right or legitimate interest in the name is enough to shift the burden of proof to the Respondent to demonstrate that such a right or legitimate interest exists.
The Respondent has not presented any evidence of rights or legitimate interests in using the disputed domain name and the Panel therefore finds that also test (ii) of the Policy’s paragraph 4(a) has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) of the Policy, “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, the Respondent had intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.”
As regards the registration in bad faith of the disputed domain name, the reputation of the Complainant’s trademark has been already established and the Panel finds that the Respondent knew or should have known that the disputed domain name was confusingly similar to a trademark of a third party.
In fact, although both CHAMPIONSHIP and MANAGER could be considered as descriptive denominations, the Panel finds that the relevant trademark, by means of continuous and extensive use duly proved in the Complaint, has acquired the so-called “secondary meaning” as well as a certain reputation, at least within the computer games’ world.
Further evidence of the Respondent’s bad faith lies in its attempt to sell the disputed domain name to the Complainant for an amount that clearly exceeds the out-of-pocket costs directly related to the domain name at issue, as proved by the telephone conversation between the Parties’ lawyers (the Panel is prepared to accept the evidence of the telephone conversation as in previous WIPO cases, see e.g.: HSBC Holdings Plc v. David H. Gold, WIPO Case No. D2001-0343; Orange Personal Communications Services Limited and Orange 3G Limited v. Richard Sharpe, WIPO Case No. D2000-1663; The Motley Fool v. Dong Hwan Ahn, WIPO Case No. DBIZ2002-00195) as well as by the written breakdown of expenses provided by the Respondent’s lawyer, not supported by any documentation.
As regards the use in bad faith of the disputed domain name, the Panel considers valid the Complainant’s allegation of “passive holding” as set forth in the landmark decision Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Considering the above, the Panel finds that the Complainant has presented sufficient evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and used the disputed domain name in bad faith.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to the Complainant.
Edoardo Fano
Sole Panelist
Dated: July 1, 2004
Full & Egal Universal Law Academy