WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Jagex Limited v. can wang, Wu Chen Case No. D2010-0680 1. The Parties
The Complainant is Jagex Limited of Cambridge, United Kingdom of Great Britain and Northern Ireland.
The Respondent is can wang, Wu Chen of Hefei, Anhui, the People's Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Zhicheng Technology Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 29, 2010. On April 30, 2010, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the disputed domain name. On May 4, 2010, HiChina Zhicheng Technology Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 10, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 30, 2010. No formal Response was filed.
However, on May 12 and May 13, 2010, the Center received email communications from the Respondent regarding a possible settlement. On May 20, 2010, the Complainant transmitted by email to the Center indicating that it did not wish to suspend the proceedings as the Respondent had not replied to its email with respect to a possible settlement.
The Center appointed Linda Chang as the sole panelist in this matter on June 4, 2010. 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.
Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise. According to information from the concerned Registrar, the language of the registration agreement for the disputed domain name is Chinese. On May 4, 2010, the Center transmitted by email to the parties in both Chinese and English a communication regarding the language of proceedings. On May 6, 2010, the Complainant submitted a request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date. The Panel notes that the disputed domain name resolves to a website with content in English, so it appears that the Respondent is familiar with the English language. The Complainant may be unduly disadvantaged by having to conduct the proceedings in Chinese. Furthermore, the Panel notes that all of the communications from the Center to the parties have been transmitted in both Chinese and English. Given the provided submissions and circumstances of this case, the Panel chooses at its discretion to render the decision in English.
Due to special circumstances, the Panel required an extension until June 29, 2010 to render the decision. 4. Factual Background
The Complainant is engaged in the business of designing, developing and operating online computer games, including a game known as “RuneScape”, also referred to as “RS”, which was launched in 2001. RS is an online computer game in which players undertake tasks and interact with each other in themed, evolving virtual worlds – commonly described as a “massively multiplayer online role-playing game” or “MMORPG”.
The Complainant owns the following trademark registration: Community Trademark No. 005122916 for RS in class 41 filed on May 22, 2006 and with a registration date of May 10, 2007.
The Respondent registered the disputed domain name on October 26, 2009. 5. Parties' Contentions A. Complainant
The Complainant contends that it's “RuneScape” or “RS” game is well-known, pointing to the following:
- A Google search for “RS” brings up the Complainant's site in fourth place.
- According to A, a provider of Internet traffic metrics that produces rankings of websites based on three months aggregated page views and site users, “RS” was the second highest search term used by visitors seeking the Complainant's site in April 2010. Moreover, the Complainant's site has a ranking of 969 by A as of April 19, 2010.
- In August 2008, the RuneScape game was awarded a Guinness World Record for the most popular free MMORPG with 10 million total registered users. As of April 20, 2010, the total number of accounts ever created for RuneScape was approximately 167 million
- As of April 20, 2010, there were over three million active players of RuneScape (i.e., players who had logged in within the previous 14 days).
- In the period January to March 2010, there were some 37 million unique visits to the Complainant's site for RuneScape.
The Disputed Domain Name Is Confusingly Similar to the Complainant's Mark
The Complainant contends that the disputed domain name is confusingly similar to the Complainant's trademark to which the Complainant has rights.
The Complainant contends that not only does it own the registered trademark for RS but it has also acquired common law rights by virtue of its activities and reputation, which has contributed to substantial goodwill in the term RS such that it is recognized by the public as distinctive of the Complainant's service.
The Complainant asserts that the disputed domain name wholly incorporates the trademark RS, which appears at the start of the disputed domain name and is the most dominant part of the disputed domain name. “Rs” is then followed by the additional word, “bot”, which the Complainant asserts is generic. According to the Complainant, a web definition explains the term “bot” as “a program that operates as an agent for another user or another program or simulates a human activity”. Such addition of a generic word, the Complainant asserts is insufficient to avoid confusion with the two-letter trademark RS. Moreover, the Complainant asserts that the use of the term reinforces the link between the Complainant's rights and the disputed domain name as the word is capable of denoting services or activity referable to the RuneScape game.
The Respondent Has No Rights Or Legitimate Interests in the Disputed Domain Name
The Complainant contends that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
The Complainant claims that it has no association with the Respondent and has never authorized or licensed the Respondent to use its trademarks and contends that the Respondent has clearly used the disputed domain name and the Complainant's trademarks to attract, confuse and profit from Internet users seeking the Complainant and/or disrupt the business of a competitor. As such, the Complainant contends that the Respondent has made no bona fide offering of goods or services on the website of the disputed domain name.
Moreover, the Complainant contends that there is no evidence that the Respondent is commonly known by the disputed domain name and, thus, does not have any rights or legitimate interests in the disputed domain name on this basis; nor does the Respondent make any legitimate non-commercial or fair use of the disputed domain name, but rather is simply using the site for commercial gain.
Registered and Used in Bad Faith
The Complainant contends that the Respondent registered the disputed domain name for the purpose of unfairly disrupting the business of the Complainant by attracting the Complainant's customers to a commercial website which diverted users to other online computer games directly competing with the Complainant's game, hosted discussions encouraging users to use unauthorized and infringing copies of the RuneScape game (i.e., private servers), and offered or advertised services, which target and interfere with the Complainant's game and its security systems, and which seriously damage the Complainant and the RuneScape game. In addition, the Complainant also points to the terms and conditions on the Respondent's site, which purport to bar the Complainant and its lawyers from entering the site as evidence of bad faith.
The Complainant also contends that the Respondent's activities are damaging to the Complainant and to the RuneScape game. For example, according to the Complainant, when users deploy the macro program distributed by the Respondent, certain functions within the RuneScape game are automated, thereby reducing the amount of time users spend playing the RuneScape game legitimately and, consequently, the amount of subscription revenue received by the Complainant is diminished.
The Complainant also contends that by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location. For example, the Complainant points to the inclusion of banner advertisements on the Respondent's website for a game called “4STORY”, which competes with the Complainant's RuneScape game, as well as banner advertisements for sale of virtual items used within the RuneScape game and player accounts. B. Respondent
The Respondent did not formally reply to the Complainant's contentions. 6. Discussion and Findings
The Panel notes that the Respondent, on May 12, 2010 and May 13, 2010, communicated with the Center regarding a possible settlement. Since this UDRP proceeding was initiated by the Complainant, unless the Complainant requested for a suspension of the proceeding, the Panel holds that this should still be a full decision.
Paragraph 4(a) of the Policy requires the Complainant to prove all of the following in order for its contentions to be supported in the proceedings:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant is the registered owner of the trademark RS and has acquired substantial goodwill in the RS trademark. Compared to the Complainant's trademark, the disputed domain name completely reproduces the trademark with the only difference being the mere addition of a generic word, “bot” after “rs”. “Bot” is a term defined as “a program that operates as an agent for another user or another program or simulates a human activity” as in “robot”. Internet games such as that offered by the Complainant also involve agents (i.e. game characters) that simulate human activity (as controlled by the players). The term “bot” is not only generic but also associated with the type of services offered by the Complainant. Such addition of a generic word is in this case insufficient to avoid confusion with the two-letter trademark RS.
Given the notoriety of the Complainant's trademark, the popularity of the Complainant's RuneScape game, and the descriptive nature of the term “bot”, the disputed domain name is confusingly similar to the Complainant's trademark.
The Panel holds that the disputed domain name is confusingly similar to the Complainant's trademark and the Complainant has met the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has made a prima facie showing of the Respondent's lack of rights or legitimate interest in the disputed domain name. There is nothing in the record to suggest the Respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services, to suggest that it has been commonly known by the disputed domain name, or to suggest that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. Therefore, the burden shifts to the Respondent to prove otherwise. However, the Respondent has not responded to the Complainant's claims.
The Panel can only make its decision based on the information and evidence submitted before it and given the circumstances believes that the Respondent does not have any rights or legitimate interests in the disputed domain name.
The Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The files on record have shown that:
- The Complainant's services, particularly the RuneScape game has come to be known as RS, the Complainant's trademark, which has acquired distinctiveness and fame as shown by a third party rankings;
- The Complainant's game, RuneScape, has been awarded a Guinness World Record for the most popular free MMORPG with 10 million total registered users in 2008;
- The word “bot” is a generic word which when connected with the popular RS trademark would reasonably be associated with Internet games provided by the Complainant;
- The Respondent did not formally respond to the Complainant's contentions;
- The Respondent's website includes a forum encouraging users to participate in private servers, and offering advice and help on enabling users to create unauthorized copies of the RuneScape game by removing copyright protection from, and copying, the game's code;
- The metatitle or metadescription related to the disputed domain name and visible in the search engine states “RSBot - # 1 place for RuneScape cheating[…]”;
- The disputed domain name is used to post banner advertisements that direct visitors to other websites that are in direct competition with the Complainant;
- The macro program distributed by Respondent, when deployed by users, automates certain functions within the Complainant's RuneScape game that reduce the amount of time users spend legitimately playing the Complainant's RuneScape game and, presumably, the amount of subscription revenue received by the Complainant is diminished.
These circumstances lead the Panel to conclude that the Respondent's use and registration of the domain name fall within the circumstances of bad faith registration and use of domain names, as provided in paragraph 4(a)(iii). 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 disputed domain name be transferred to the Complainant.
Linda Chang
Sole Panelist
Dated: June 29, 2010
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