WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Eidos Interactive Limited v. BWI Domains Case No. D2008-1818 1. The Parties
The Complainant is Eidos Interactive Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”) represented by Bond Pearce LLP, of the United Kingdom.
The Respondent is BWI Domains of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom, West Indies. 2. The Domain Name and Registrar
The disputed domain name is registered with R Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Medication Center (the “Center”) on November 25, 2008. On November 26, 2008, the Center transmitted by email to R Corp. a request for registrar verification in connection with the disputed domain name. On the same day the registrar confirmed its verification response disclosing the registrant and contact information for the disputed domain name.
On December 3, 2008, notification of a Complaint deficiency was given to the Complainant. On the same date an amendment to the Complaint was filed. In view of this the Panel proceeds to decide the Complaint on the basis of the Complaint as amended by the filed Amendment to the Complaint (together “the Complaint”).
The Center verified that the Amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) the UDRP Rules (the “Rules”) and the WIPO Supplemental Rules for UDRP (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), on December 4, 2008, notification of the Complaint was given to the Respondent. No Response was received from the Respondent. Accordingly, notification of Respondent Default was given to the Respondent on December 29, 2008. There has been no Response.
The Center appointed Messrs Clive Duncan Thorne, Tony Willoughby and David Taylor as Panelists. The Panel finds that it was properly constituted. The Panel has submitted the necessary Statement of Acceptance and Declaration of Impartiality and Independence as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
In the absence of a filed Response, the Panel relies upon the facts as set out by the Complainant in its Complaint. The Complainant, Eidos Interactive Limited, is a leading developer and publisher of entertainment software. It owns a significant portfolio of games titles for PC, PlayStation, GameCube, Xbox and N-Gage. The Complainant's parent company, SCi Entertainment Group plc, is the UK's leading publisher of computer games and one of the world's leading developers and publishers of entertainment software.
According to the Complainant, the brand JUST CAUSE was first used by the Complainant in May 2005 at the trade show E3 in relation to an interactive entertainment title, i.e. a video game. Following the trade show, the Complainant's use was immediately reported in all the leading consumer publications, both in print and online. Over the years, an increasing range of games and services have been sold, advertised and promoted under and by reference to the mark JUST CAUSE.
The Complainant submits that JUST CAUSE is a global brand with a significant goodwill in many territories including North America, the UK, France, Germany, Spain, Italy, the Russian Federation and Japan. The brand has a very strong fan base and is actively discussed in gaming forums. The Complainant submits that as a result of “extensive usage, advertising and promotion”, the Complainant has acquired substantial goodwill and reputation in the trade mark JUST CAUSE. The Complainant submits that through its registered European Community and UK trade marks the Complainant has acquired a substantial goodwill and reputation in JUST CAUSE throughout the United Kingdom, and has accordingly acquired common law trade mark rights in the mark JUST CAUSE.
The Complainant, in support of its claim for common law rights exhibits, at Exhibit 4 copies of publications produced by the Complainant in various territories including the UK. It also exhibits a copy of its most recent published accounts, at Exhibit 5, which show that SCi Entertainment Group Plc has a UK turnover of approximately £118.9 million.
In addition to a protectable goodwill, the Complainant owns numerous registered trade marks including: European Community Trade Mark registration number 4345385 for JUST CAUSE in Classes 9, 16 and 28, registered with effect from March 17, 2005 and UK trade mark registration number 2376788 also for JUST CAUSE in Class 9, registered with effect from October 26, 2004. Details of these registrations are annexed at Exhibit 3 to the Complaint.
The Complainant also adduces evidence of registration of a series of domain names incorporating JUST CAUSE including, for example, and . Details are exhibited at Exhibit 6 to the Complaint.
In the absence of evidence to the contrary from the Respondent, the Panel accepts the truth of the evidence referred to above. In particular the Panel accepts the evidence that the Complainant owns the registered trade marks referred to above and owns a protectable trading goodwill in the brand JUST CAUSE in the United Kingdom.
The disputed domain name was first registered on November 21, 1997. 5. Parties' Contentions A. Complainant
The Complainant contends:
(i) The domain name is identical or confusingly similar to trade marks or service marks in which the Complainant has rights; and
(ii) There is no evidence to the effect that the Respondent can demonstrate a right or legitimate interest in the domain name in dispute under the Policy; and
(iii) The Respondent registered and is using the domain name in bad faith. In particular, the Complainant contends that the Respondent has intentionally attempted to attract and indeed has attracted for commercial gain internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website.
(iv) The disputed domain name appears to have been registered to the Respondent on September 24, 2007. B. Respondent
The Respondent did not reply to the Complainant's contentions as contained in the Complaint. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant submits that the disputed domain name consists only of the Complainant's trade mark JUST CAUSE. No other distinctive elements are added to the mark. As a result, the disputed domain name is “essentially identical” to the Complainant's JUST CAUSE trade mark. The “.com” suffix is purely descriptive and the distinctive elements of the domain name are identical to the trade mark.
Having considered the evidence of the Complainant's trade mark rights referred to above, the Panel finds that the disputed domain name is identical to the trade mark JUST CAUSE in which the Complainant has rights.
The Panel therefore finds that the disputed domain name is identical to a trade mark in which the Complainant has rights and that the Complainant has succeeded in proving this element. B. Rights and Legitimate Interests
In support of its contentions, the Complainant relies upon the following:
(i) The Respondent has no connection or affiliation with the Complainant and has not received any licence or consent, expressed or implied, to use the Complainant's mark in a domain name or in any other manner.
(ii) The Respondent has no trade mark or other rights to the disputed domain name. The Respondent does not hold itself out as, and it not otherwise known as “Just Cause” and has no common law rights in “Just Cause”.
The Complainant also submits that the Respondent is not making a bona fide noncommercial or fair use of the disputed domain name and adduces evidence that the disputed domain name directs to a website containing links to various games, websites and products, many of which are directly competing with the Complainant. It exhibits at Exhibit 7 to the Complaint, printouts taken on September 10, 2008 and October 8, 2008, which it alleges show that the Respondent's actions are intentionally deceptive and part of a scheme to mislead consumers into believing that the sponsored website links located throughout the domain name are affiliated with or endorsed by the Complainant.
Exhibit 9 to the Complaint sets out some history of the registration of the disputed domain name, in particular it shows that the domain name was first registered on November 21, 1997 and was scheduled to expire on November 20, 2008. Details of the registrant and the administrative contact are BWI Domain Manager, i.e., the Respondent. The domain name WhoIs data was updated on September 24, 2007. The Complainant argues that this change in registrant data in the WhoIs on September 24, 2007 is the result of the Respondent's registration (or acquisition) of the disputed domain name at that time. Although on its face such change in the WhoIs data may not of itself establish that the Respondent registered or acquired the disputed domain name on September 24, 2007, (i.e., it could be from some change in the WhoIs data other than the registered name holder field), evidence from the publicly-available Internet Archive lends support to such an inference. According to the Internet Archive, on September 26, 2001, the webpage associated with the disputed domain name was in use by “Chesapeake Bay Internet Associates”. From around November 27, 2001 to approximately December 22, 2003, the website at the disputed domain name was in use by “Just Case Consulting Firm”. There is a gap in the archive showing no use of the disputed domain name from 2004-2005. The first subsequent apparent use of disputed domain name as shown in the Internet Archive is on December 2, 2006, which screenshot shows the text: “ expired on 11/20/2006 and is pending renewal or deletion” (screenshots throughout all of 2006 reflect the same text). Then, according to the screenshot of January 1, 2007, the website at the disputed domain name was “under construction and coming soon”. From January 6, 2007 to the present, screenshots of the website at the disputed domain name are not in the Internet Archive.1 On balance, it is apparent that this at least places the registration of the disputed domain name with the Respondent after December 2, 2006. That is to say well after the registration of the registered trade marks relied upon by the Complainant and the Complainant's first use of the mark JUST CAUSE in May 2005. There is also no evidence from the Respondent rebutting the Complainant's contention that the Respondent acquired the disputed domain name in September 2007.
The background to the dispute is that in September 2008, the Complainant instructed a Corporate Investigation company, Carratu International, to conduct investigations on the Respondent. The investigators carried out extensive searches through a variety of sources, including sources in Grand Cayman, but were unable to identify the owners of BWI Domains. It appeared that the Registrant had gone to great lengths to maintain anonymity. The Complainant contends that the details given by the Respondent are false.
In these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainant relies upon paragraph 4(b)(iv) of the Policy, i.e., that “by using the domain name, [the Respondent] has intentionally attempted to attract for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent's web site or location or of a product or service on its website or location]”.
The Complainant adduces evidence (Exhibit 7) of the Respondent's website containing commercial links to other websites offering goods and services, including games which compete with those of the Complainant.
The Complainant also points out that the investigations conducted by the investigator have revealed that the Respondent is the proprietor of some 36,959 domains, including a number that are closely linked to legitimate third-party corporations. Some of these are listed in the Complaint including, , , , and . It submits that the evidence of these registrations demonstrates evidence of the Complainant's registration and use of the domain name in bad faith.
Having considered this evidence, the Panel considers that the Respondent has attempted to attract Internet users to its website linked to the disputed domain name for commercial gain by creating a likelihood of confusion with the Complainant's mark. Based on the above, and given the findings under section 6.B concerning the Respondent's registration of the disputed domain name, on balance the Panel is therefore satisfied that the registration and use of the disputed domain name by the Respondent was in bad faith.
The Panel therefore finds for the Complainant in respect of this element. 7. Decision
For all the foregoing reasons and in accordance with paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Clive Duncan Thorne
Presiding Panelist
Tony Willoughby
Panelist
David Taylor
Panelist
Dated: February 12, 2009
1 The Internet Archive webpage instructs that placing a “robots.txt” file in the URL for a domain name name would remove a site from the Internet Archive. It is not clear in any event why there are no screenshots beyond January 6, 2007.
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