The Complainant is Jagex Limited of Cambridge, United Kingdom of Great Britain and Northern Ireland, represented by Adlex Solicitors, United Kingdom of Great Britain and Northern Ireland (herein “UK” or “United Kingdom”).
The Respondent is Whois Privacy Protection Service, Inc / Nazfezer Terrazik of Bellevue, Washington, United States of America (herein “United States”) and Singapore, respectively. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2011. On November 25, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the Disputed Domain Name. On November 28, 2011, eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 30, 2011 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 1, 2011.
The Center verified that the Complaint together with the amended 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 December 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 27, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 29, 2011.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on January 18, 2012. 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. 4. Factual Background
The Complainant (a United Kingdom company) was incorporated in 2000 and since 2001 has carried on the business of designing, developing and operating online computer games, including a game called "RuneScape" (the "Game"). In 2000, the Complainant registered the domain name , where the Game was launched in 2001. The Complainant owns an international trade mark portfolio for RUNESCAPE, including in the European Union, the United Kingdom, the United States and china the earliest of which dates back to 7 June 2002.
The First Respondent, Whois Privacy Protection Service, Inc. operates a domain name privacy service that was utilised by the Second Respondent, Nazfezer Terrazik, to register the Disputed Domain Name . The Panel notes that the Second Respondent, Nazfezer Terrazik, is the true registrant of the Disputed Domain Name and accordingly subsequent references in this Decision to the “Respondent” shall be references to the Second Respondent.
The Respondent is an individual residing in Singapore. The Disputed Domain Name was first registered on April 22, 2002, but was acquired by the Respondent sometime during 2005/2006. The Disputed Domain Name currently resolves to a website which contains numerous references to the Game and other computer games and provides links to websites offering "cheats" for the Game (the "Website"). The Website has changed numerous times since 2006 and has previously been used as a parking page featuring sponsored links relating to the Game, as well as other computer game and pornography related links. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarised as follows:
(a) The Respondent acquired the Disputed Domain Name some time throughout 2005/2006. In November 2006, the Website featured sponsored advertising links, including links to the Game and other computer-related websites and pornographic websites.
(b) As of October 28, 2011, the Website was headed "R", had a similar look and feel to the home page of the Complainant's website, and was devoted to the Complainant and computer games generally. The Website included specific references to the Game (e.g. providing cheats for the Game). The Website also contained links to other role-playing games in direct competition to those of the Complainant.
(c) The Respondent has been found, in numerous other previous UDRP cases, to have registered and used domain names in bad faith.
(d) The Disputed Domain Name is confusingly similar to the RUNESCAPE trade mark, in which the Complainant has both registered and unregistered rights. The Disputed Domain Name differs from the trade mark only by switching the letters "n" and "e", thus creating a misspelling of the Complainant's RUNESCAPE trade mark. This is confusing both visually and phonetically.
(e) The Complainant is not associated with the Respondent and has not authorised or licensed the Respondent to use its trade marks.
(f) The Respondent used the Disputed Domain Name to attract, confuse and profit from Internet users seeking the Complainant and/or disrupt the business of the Complainant. The Disputed Domain Name is being used to offer similar services to those offered by the Complainant. Such use of the Disputed Domain Name could not be said to be bona fide.
(g) There is no evidence that the Respondent has become commonly known by the Disputed Domain Name.
(h) The Respondent is not using the Disputed Doman Name for legitimate, noncommercial or fair purposes, but rather is using it for commercial gain.
(i) The Respondent is a competitor of the Complainant and registered the Disputed Domain Name for the purpose of unfairly disrupting the business of the Complainant by diverting business intended for the Complainant.
(j) The Respondent intended to create confusion in the minds of the public as to an association between the Respondent and the Complainant. This likelihood of confusion was compounded by the Respondent's use of a look and feel similar to that of the Complainant's website.
(k) The Respondent was intent on making commercial gain in connection with the Disputed Domain Name as it provides commercial services at the Website by means of sponsored links and advertising. It is well known that many directory websites generate revenue by directing traffic to other websites.
(l) The Respondent used a privacy service to register the Disputed Domain Name, which is further evidence of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions.
The fact that the Respondent has not submitted a formal Response does not automatically result in a decision in favour of the Complainant. However, the failure of the Respondent to file a formal Response may result in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following from the Complaint as true. See Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403 and Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,WIPO Case No. D2009-1437. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainant to show each of the following three elements:
(i) the Disputed 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 Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used by the Respondent in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in respect of the RUNESCAPE trade mark on the basis of its various registrations for such mark in Europe, the United Kingdom and China dating from 2002. The Panel notes that the Complainant has also registered the domain name.
It is a well-established rule that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the domain extension, in this case “.com”, may be disregarded (See Rohde & Schwartz GmbH & Co. KG v. Pertshire Marketing Ltd,WIPO Case No. D2006-0762).
The only difference between the Complainant's RUNESCAPE trade mark and the Disputed Domain Name is the switching of the letters "e" and "n". It has been held in many previous WIPO decisions that a domain name which contains an obvious or common misspelling of a trade mark (typo-squatting) will be found to be confusingly similar to the trade mark, where the misspelled trade mark remains the dominant component of the domain name (see Paragraph 1.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0")). The Panel finds that the Disputed Domain Name is an obvious misspelling of the RUNESCAPE trade mark and that the misspelled RUNESCAPE trade mark is the dominant portion of the Disputed Domain Name. The small difference of changing the order of the letters "e" and "n" does not reduce the degree of similarity between the Disputed Domain Name and the RUNESCAPE trade mark, which are confusingly similar in terms of both visual and aural characteristics.
The Panel accordingly finds that the Disputed Domain Name is confusingly similar to the RUNESCAPE mark in which the Complainant has rights and that element 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview 2.0 states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of the respondent, the onus shifts to the respondent who must discharge the burden of proving that it has rights or legitimate interests in the disputed domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel finds that there is no evidence to suggest that the Respondent has any rights in any trade marks or service marks which are identical, similar or related to the Disputed Domain Name. Therefore, the Panel will assess the Respondent's rights in the Disputed Domain Names (or lack thereof) based on the Respondent's use of the Disputed Domain Names in accordance with the available record.
The Panel accepts that the Complainant has not authorised the Respondent to use the RUNESCAPE trade mark. The Panel further accepts that the Respondent has not become commonly known by the Disputed Domain Name.
Accordingly the only way for the Respondent to acquire rights or legitimate interests in the Disputed Domain Name for the purposes of 4(a)(ii) of the Policy would be through use of the Disputed Domain Name for legitimate noncommercial purposes or in connection with bona fide offerings of goods or services.
At the time of the Complaint, the Disputed Domain Name resolved to a website that contains numerous references to the Game and other computer games, provides links to websites offering "cheats" for the Game as well as providing links to various parking pages containing sponsored advertising links. The Disputed Domain Name was previously used to host a parking-page featuring sponsored links to computer games and pornography-related websites. The Panel assumes that the Respondent is obtaining revenue from such sponsored links, which precludes any argument that the Disputed Domain Name is being used on a noncommercial basis.
The use of a domain name containing a well-known trade mark for the purpose of collecting referral fees from sponsored advertising links, has been consistently held not to be a bona fide offering of goods or services (See PRL USA Holdings, Inc. v. LucasCobb,WIPO Case No. D2006-0162 and Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,WIPO Case No. D2009-1437).
The use of the Disputed Domain Name to host links to pornographic websites cannot constitute a bona fide offering of services (see Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052). Similarly, the use of the Disputed Domain Name to provide links to websites offering cheats to the Game is not consistent with a bona fide offering of services.
Further, on the basis of the Panel's findings of bad faith on the part of the Respondent (as detailed below), the Panel finds that the Respondent's intentional illegitimate use of the Complainant's RUNESCAPE trade mark in connection with the Disputed Domain Name precludes a finding that any offering of services on the Website constitutes a bona fide offering (see Madonna Ciccone p/k/a Madonna v. Dan Parisi and "M",WIPO Case No. D2000-0847 and Viacom International, Inc., Paramount Pictures Corporation, and Blockbuster Inc. v. TV, Inc. f/k/a Affinity Multimedia,WIPO Case No. D2000-1253).
The Panel accordingly finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to establish that the Respondent registered and used the Disputed Domain Name in bad faith.
Evidence of bad faith may include actual or constructive notice of a well-known trade mark at the time of registration of a domain name by a respondent (see Samsonite Corporation v. Colony Holding, NAF Claim No. FA94313). The Complainant provided evidence that its RUNESCAPE trade mark is well-established in connection with computer games. While the Disputed Domain Name was created on April 22, 2002, a number of months before the Complainant first obtained registration of its RUNESCAPE trade mark in the United Kingdom on June 7, 2002, the Complainant had registered the domain name in January 2000 and launched the Game at that domain name’s website in 2001. Archived WhoIs records for the Disputed Domain Name indicate that the Respondent acquired the Disputed Domain Name sometime after July 15 2005. The Complainant had an annual turnover in excess of GBP 5.2 million in 2005 and in excess of GBP 16.8 million in 2006. The Panel accepts that the Game was sufficiently well-known at the time that the Respondent registered the Disputed Domain Name, particularly amongst computer-gamers.
Given the degree of fame of the RUNESCAPE trade mark throughout the world for a number of years at the time that the Disputed Domain Name was registered by the Respondent, as well as the fact that the Website contains numerous references to the Complainant's Game, links to websites offering cheats for the Game as well as websites of competing computer games, and the fact that the look and feel of the Website and the Complainant's “www.” website bear some similarities, the Panel accepts that the Respondent was aware of the Complainant’s RUNESCAPE trade mark at the time of registering the Disputed Domain Name and registered and is using the Disputed Domain Name solely for the purpose of capitalising on the Complainant’s reputation and goodwill to generate profits, not only by attracting to the Website customers who the Panel accepts would be drawn to the Website on the mistaken assumption that the Website was authorised by or connected with the Complainant, but by then redirecting those customers to games which are in competition with the Complainant's Game (see Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052 and Volvo Trademark Holding AB v. Unasi, Inc.,WIPO Case No. D2005-0556). In these circumstances, the Panel finds that there is no basis on which to infer that the Respondent has used the Disputed Domain Name in any manner or for any purpose otherwise than in bad faith.
The fact that the Website contains or has previously contained links to competitors' websites and websites providing cheats for the Game (which is contrary to the rules and policies of the Complainant) is further evidence of bad faith on the part of the Respondent (see Jagex Limited v. Hao Chen, THS International, Inc., Wu Chen, WhoisGuard Protected, Usfine Electron & Information Co., Ltd, Tang Zaiping,WIPO Case No. D2011-0958).
The Panel notes that the Website previously contained links to websites containing pornographic material. It has been previously held on many occasions that using a domain name which is confusingly similar to a well-known trade mark to host links to websites containing pornographic material, constitutes evidence of bad faith use of a domain name (see, for example, Deutsche Bank Aktiengesellschaft v New York TV Tickets Inc., WIPO Case No. D2001-1314 and Caledonia Motor Group Limited v. Amizon,WIPO Case No. D2001-0860).
The Panel accepts that the Respondent registered the Disputed Domain Name for the sole purpose of creating confusion with the Complainant’s well-known RUNESCAPE trade mark and benefitting from this confusion by generating revenue from sponsored advertising links.
The Panel notes that the Respondent registered the Disputed Domain Name using a privacy service. While there are legitimate purposes for using a privacy service and such use is not, of itself, indicative of bad faith, the use of a privacy service to shield the Respondent's identity may further support an inference of bad faith where there is evidence of other improper behaviour on the part of the Respondent (see Fifth Third Bancorp v. Secure Whois Information Service,WIPO Case No. D2006-0696).
In the circumstances, the Panel finds that the Respondent has registered and is using the Disputed Domain Name in bad faith and paragraph 4(a)(iii) of the Policy has been satisfied. 7. Decision
For 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.
Gabriela Kennedy
Sole Panelist
Dated: February 1, 2012
Full & Egal Universal Law Academy