The Complainant is RPG Life Sciences Ltd. of Mumbai, India, represented by Anand & Anand, India.
The Respondent is James Mathe of Greenfield, Wisconsin, United States of America, represented by UDRP POLICE DBS, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2013. On December 3, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 3, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On December 3, 2013, the Center received an email communication from the Respondent.
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 December 10, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 30, 2013. The Response was filed with the Center on December 12, 2013.
The Center appointed Nicholas Weston as the sole panelist in this matter on December 19, 2013. 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 language of this administrative proceeding is English, being the language of the registration agreement. 4. Factual Background
The Complainant operates a pharmaceuticals and biotech business with operations in India, distributing product more than 30 countries. The Complainant holds registrations for the trademarks RPG and RPG LIFE in India which it uses to designate pharmaceutical, veterinary and sanitary preparations for medical purposes. The Indian registration for the mark RPG has been in effect since 1999 and the registration for RPG LIFE since October 2012, the latter claiming use from 1999. Approximate global revenue for sales of RPG brand product in 2012-13 was around USD 47million.
The disputed domain name (the “Disputed Domain Name”) was registered on October 28, 2005.
The Respondent uses the Disputed Domain Name to resolve to a social media platform for players of games involving “role-playing” where participants pretend to be imaginary characters in fictional settings. 5. Parties’ Contentions A. Complainant
The Complainant cites its trademark registrations of the trademarks RPG and RPG LIFE in India as prima facie evidence of ownership.
The Complainant submits that the trademarks RPG and RPG LIFE are distinctive and that its rights in these marks predate the Respondent’s registration of the Disputed Domain Name . It submits that the Disputed Domain Name is confusingly similar to its trademarks, because the Disputed Domain Name incorporates in its entirety the RPG trademark (presumably alluding to Oki Data Americas, Inc. v. ASD, Inc.WIPO Case No. D2001-0903) and that the similarity is not removed by the addition of the word “life”. Alternatively, it submits the Disputed Domain Name wholly incorporates its registered RPG LIFE trade mark, thus compounding the potential for confusion. The Complainant also contends that it has common law rights in the marks in the United States of America pursuant to reputation flowing from patents registered in its name in that country.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Respondent has no trademark rights in or license to use the RPG or RPG LIFE marks.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, pursuant to the Policy, paragraphs 4(a)(iii) and 4(b) and the Rules, paragraph 3(b)(ix)(3). On the issue of registration, the Complainant contends that it was registered “for the purpose of piggybacking on the goodwill and reputation of the Complainant in India and worldwide.” On the issue of use, the Complainant contends that “there is no use or intention to use the domain name for any legitimate purpose” and that “there could be no plausible explanation for the use of the domain name by the Respondent since the Complainants trade/service mark RPG and RPG LIFE is an invented word” and further alleges that the Respondent used the Disputed Domain Name to direct internet traffic to another website address. B. Respondent
In defense of its registration of the Disputed Domain Name, the Respondent’s submissions in the Response filed are set out in summary below.
On the issue of confusing similarity to a trademark in which the Complainant has rights, the Respondent contends that:
(i) the Complainant has not provided any evidence of a common law reputation in the name “RPG” as alleged by the Complainant and, as such, submits that the alleged reputation has not been made out.
(ii) consumers are not likely to be confused because the Disputed Domain Name comprises the word “RPG” and the trademarks of the Complainant do not grant exclusive rights to that word having regard to its widespread use as an acronym for the term “Role-Playing Game” or “RPG” putatively coined by American war-gamer Dave Arneson in 1974 to connote “a game in which players assume the roles of characters in a fictional setting. The Complainant submits “RPG’s are an extremely popular genre of gaming played in a variety of different formats, leading to the birth of cult classics such as Dungeons & Dragons (D&D), Final Fantasy and World of Warcraft (WOW).”
On the issue of rights and legitimate interests, the Respondent contends that:
(i) the Respondent has a legitimate interest in the Disputed Domain Name because it has used the Disputed Domain Name since 2008 for bona fide offerings of goods or services. The Respondent submits that the use in this case was as a retail e-commerce website entirely unrelated to the trade channels exploited by the Complainant as a pharmaceutical and biotech business.
(ii) use of the Disputed Domain Name for a social website forum for players of “role playing games” is sufficient to grant a legitimate interest as the Respondent has a right to use “a common abbreviation in the game industry for a “Role-Playing-Game” which dates back to as early as 1974”, citing advice, reviews, publications and forums that make reference to the acronym “RPG”.
(iii) the Respondent has made sufficient use of the Disputed Domain Name to grant a legitimate interest.
The Respondent also denies that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, pursuant to paragraph 4(a)(iii) or 4(b) of the Policy. On the issue of bad faith registration, the Respondent contends that the Disputed Domain Name was purchased in 2005 and that “none of the evidence presented by the Complainant precedes or even relates to this period of time. Furthermore, there is no evidence which is indicative of awareness either globally or locally within Respondent’s jurisdiction”. Respondent also contends that the purpose of operating the website at the Disputed Domain Name is to run a social website for the RPG player community, providing them with a platform to discuss their RPG experiences. The Respondent admits that the redirection of the website at the Disputed Domain Name to another website address is true, given that the Respondent's other website is fully developed for the same activity.
Finally, the Respondent contends that the Complaint is brought in bad faith, in “a malicious attempt to defame the Respondent as a cybersquatter and bully him out of a domain name that he has legitimately held for a significant period of time” and that this constitutes reverse domain name hijacking, as contemplated by paragraph 15(e) of the Rules. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the complainant has the burden of proving the following:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith A. Identical or Confusingly Similar
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark RPG in India and elsewhere throughout the world. The Panel finds that the Complainant has rights in the mark RPG pursuant to Indian Trademark Registration No. 850255 from April 8, 1999, which predates registration of the Disputed Domain Name. Even so, the propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358). The Panel finds that the Complainant has rights in the mark RPG.
As the Complainant has thus established rights in the registered trademark referred to, it is not necessary for the Panel to decide if it also has rights in the other trademark applications relied on or at least cited including an Indian application for the mark RPG LIFE dated October 10, 2012. It is necessary, however, for the Panel to give consideration to whether the Complainant has common law rights in RPG or, alternatively, RPG LIFE. That is so because, although the time when a complainant acquires its trademark rights may not be significant for the purposes of paragraph 4(a)(i) of the Policy, it may well be important during a consideration of paragraphs 4(a)(ii) and (iii) of the Policy. It is therefore necessary to consider whether the Complainant has common law trademark rights and, if so, whether they date back to a time when the Disputed Domain Name was registered.
The Complainant has submitted no cogent evidence concerning the recognition of the word “RPG” as a trademark. It has provided a number of copies of annual reports that do provide some evidence of the extent of advertising and sales and awards given to demonstrate recognition as a good employer but this Panel finds that there is no persuasive indicia of secondary meaning in the brand that might have occurred nor any evidence that it has been known in the trade or publicly as the source of any specific goods or services. Bald assertions are no substitute for evidence. UDRP panels have said on many occasions that allegations made in these proceedings must be supported by evidence and, indeed, the Policy makes it plain enough itself in paragraph 4(a) that “[…] the complainant must prove that each of these three elements are present.” This Panel finds the Complainant has not, for the purposes of the Policy, carried its burden of proving that it enjoys common law rights in “RPG” nor “RPG LIFE”.
Turning to whether the Disputed Domain Name is identical or confusingly similar to the RPG trademark, the Panel observes that the Disputed Domain Name comprises (a) an exact reproduction of the Complainant’s trademark (b) followed by the descriptive word “life” (c) followed by the generic top level domain suffix “.com”.
It is well established that the top level designation used as part of a domain name may be disregarded: (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374). The relevant comparison to be made is with the second level portion of the Disputed Domain Name “rpglife”.
It is also well established that where a domain name incorporates a complainant’s well known and distinctive trademark in its entirety, it is confusingly similar to that mark despite the addition of a descriptive word or words: (see Oki Data Americas, Inc. v. ASD, Inc., supra; Wal Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033).
This Panel finds that the descriptive word “life” after the Complainant’s registered trademark is an additional element that does not serve to adequately distinguish a disputed domain name and therefore the Disputed Domain Name in this matter remains confusingly similar to the registered trademark: (see Tiffany (NJ) LLC, and Tiffany and Company v. Vincent & Co.,WIPO Case No. D2009-0428 (“Neither the inclusion of the descriptive word “life” nor the addition of the suffix “.com” to the Complainant's mark precludes a finding that the Domain Name is confusingly similar to this well-known trademark”). This is particularly so here as the Panel also declines to find the mark is well-known.
In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698, the panel held that “[t]he use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the Complainant’s mark into thinking they are on their way to the Complainant’s Website”. The Disputed Domain Name is therefore confusingly similar to the RPG trademark.
Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or a legitimate interest in the disputed domain name:
(i) before any notice of the dispute, 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; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Policy places the burden on the complainant to establish the absence of respondent’s rights or legitimate interests in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The evidential burden then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2,0”), paragraph 2.1.)
It is well established that a respondent may have a right to register and use a domain name to attract Internet traffic based solely on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant (see National Trust for Historic Preservation v. Barry Preston,WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc.,WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich,WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp.,WIPO Case No. D2001-0031; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047). However, this business model is legitimate vis-a-vis the Policy only if the disputed domain name was registered because of its attraction as a descriptive phrase comprising dictionary words, and not because of its value as a trademark and that website is then used to post links that are relevant only to the common meaning of the phrase comprising dictionary words. (see National Trust for Historic Preservation v. Barry Preston, supra; The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340; WIPO Overview 2.0, paragraph 2.2)
However, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is misleadingly directing Internet users to a “gaming and gambling” webpage and thereby acting illegitimately for the purpose of “piggybacking on the reputation and goodwill of the Complainant in India and worldwide”. The Complainant also has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark. The Complainant asserts that the use of its trade mark is unlicensed.
In its Response, Respondent offers a fulsome explanation as to how it selected and used the Disputed Domain Name, stating:
“The term ‘RPG’ is a common abbreviation in the game industry for a “Role-Playing-Game” which dates back to as early as 1974. A definition of such a game has been provided below:
“A role-playing game (RPG and sometimes roleplaying game) is a game in which players assume the roles of characters in a fictional setting. Players take responsibility for acting out these roles within a narrative, either through literal acting or through a process of structured decision-making or character development. Actions taken within many games succeed or fail according to a formal system of rules and guidelines. There are several forms of RPG. The original form, sometimes called the tabletop RPG, is conducted through discussion, whereas in live action role-playing games (LARP) players physically perform their characters' actions. In both of these forms, an arranger called a game master (GM) usually decides on the rules and setting to be used and acts as referee, while each of the other players plays the role of a single character.
Several varieties of RPG also exist in electronic media, such as multi-player text based MUDs and their graphics-based successors, massively multiplayer online roleplaying games (MMORPGs). Role-playing games also include single-player offline role-playing video games in which players control a character or team who undertake quests, and may include capabilities that advance using statistical mechanics. These games often share settings and rules with tabletop RPGs, but emphasize character advancement more than collaborative storytelling. Despite this variety of forms, some game forms such as trading card games and war games that are related to role-playing games may not be included. Role-playing activity may sometimes be present in such games, but it is not the primary focus. The term is also sometimes used to describe role play simulation games and exercises used in teaching, training, and academic research.”
Respondent further states:
“The Respondent registered the domain name in dispute for the purpose of running a social website for the RPG player community, providing them also with a platform to discuss their RPG experiences. An extract from an archive history page from 2008 demonstrates this fact with the tagline, [“RPG LIFE: It’s a gamer’s life”] and the statement: “Welcome to RPGL where we host everything about and for paper and pen role-playing. Our front page will be dedicated to what our moderators feel are the important need to know happenings in the industry. While the inside this site you’ll find much more details, feeds, and more exclusive events and blogging.” Throughout the site could be found various articles offering RPG related gaming advice, reviews, publications and forums, with the site continually being developed up until September 2013. Such valid and consistent use of the domain name for over 6 years would give rise to a finding of Respondent’s legitimate rights and interest. (See Annex 4)”.
This Panel accepts this submission as its authenticity is supported by evidence and finds that the letters RPG are, in addition to being a trade mark registered in India, a widely recognized acronym for the words “role playing game”. In this Panel’s view, in adopting that acronym the Respondent is making a legitimate commercial use of the Disputed Domain Name.
In so finding, the Panel is conscious of the serious nature of conduct that misleads the Internet using public in a pharmaceutical context. In Lilly ICOS LLC v. East Coast Webs, Sean Lowery,WIPO Case No. D2004-1101, the panel stated: “While mere resale of genuine branded products might give rise to a legitimate debate over whether the use of the mark was ‘nominative’, any such contention is undermined by Respondent’s sale of products directly competing with Complainant’s through the same web site. This principle may have particular weight in the pharmaceutical context, where risks to the public may be enhanced by the lack of regulatory safeguards assuring the safety or efficacy of the purported “generic” version of Complainant’s branded products, thus further undermining any argument that it was making a bona fide offering of goods. See Lilly ICOS LLC v. Dan Eccles,WIPO Case No. D2004-0750.”
In Lilly ICOS LLC v. Tudor Burden d/b/a BM Marketing/Burden Marketing,WIPO Case No. D2005-0313, the panel found that “the Respondent is making a non-legitimate commercial use of the disputed domain names that misleadingly diverts consumers (for the reason) because the Respondent was using the infringing domain name to sell prescription drugs, it could be inferred that the Respondent was opportunistically using Complainant’s mark in order to attract Internet users to its website.”
The facts in this matter distinguish these above cited cases as the parties in this case operate in completely different trade channels. Applying a very conservative standard, the Panel shall refer to as the “idiot in a hurry” test, not even an idiot in a hurry could be misled that neither the Respondent’s website, nor the website it resolves to, is in any way connected with the Complainant.
The Panel finds for the Respondent on the second element of the Policy. The Complaint therefore fails on the conjunctive requirement of paragraph 4(a) of the Policy. However, for completeness, the Panel will also consider the other issues tabled for rulings. C. Registered and Used in Bad Faith
The Panel finds that the Disputed Domain Name was not registered in bad faith and has not been used in bad faith. Essentially, this is for two reasons. First, the Panel has already noted that although the Complainant’s trademark RPG is registered in India from 1999, and it has been decided that “the propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country” (see Thaigem Global Marketing Limited v. Sanchai Aree, supra), the Complainant’s submission seeks transfer of the Disputed Domain Name based on claimed superior rights, yet the Policy does not concern itself with better rights but with the complete absence of rights in a maliciously registered domain name (see Credit Europe Bank N.V. v. Peter Yu,WIPO Case No. D2010-0737). The Respondent is simply using an established acronym for the words “role playing game” in conjunction with word “life” to resolve to a webpage directed to those Internet users who like that sort of thing. That being so, there is no evidence that the Respondent was motivated by bad faith towards the Complainant at the time the Disputed Domain Name was registered. There was therefore no registration of the Disputed Domain Name in bad faith.
Secondly, there has been no use of the Disputed Domain Name in bad faith as its use for the purpose, principally, of publishing articles and advertising goods and services applicable to “role playing games”, is entirely legitimate. The Panel finds that the Disputed Domain Name is a popular and commonly used acronym or phrase and this, in turn, is a defense to an allegation of bad faith (see CNR Music B.V. v. High Performance Networks, Inc.,WIPO Case No. D2005-1116). Moreover, there is no evidence that the Respondent pretended that it was the Complainant, advertised goods that the Complainant sells, tried to confuse Internet users, sought to damage the Complainant or its business or engaged in any other bad faith activities.
The Panel finds for the Respondent on the third element of the Policy. D. Reverse Domain Name Hijacking
The Respondent requests a finding of reverse domain name hijacking. This is defined in the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Moreover, paragraph 15(e) of the Rules provides as follows: “If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
In the present case, the Panel considers that the Complainant’s professional representative should have appreciated, even on a rudimentary examination of the Policy and its application in this area, that the Complaint could not succeed where the Respondent’s Disputed Domain Name is a widely recognized acronym and is being used to promote goods and services available for purchase in that field, as it had no reasonable hope of meeting the conjunctive requirement of paragraph 4(a) of the Policy.
Accordingly, the Panel accepts the Respondent’s allegation that the Complaint was filed in willful disregard of the requirements of the Policy. It is clear to the Panel that the Complainant knew or ought to have known that the Respondent’s registration and use of the Disputed Domain Name could not, under any fair interpretation of the reasonably available facts, have constituted registration and use in bad faith. The Panel therefore finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. (See Futureworld Consultancy (Pty) Limited v. Online Advice,WIPO Case No. D2003-0297; Kur- und Verkehrsverein St. Moritz v. Domain Finance Ltd.,WIPO Case No. D2004-0158).
The Complaint speculates that “such strategies of creating domain names incorporating well known trademarks is a strategy typically used by cybersquatters so that they can force the Complainant to buy the impugned domain name at an exorbitant price and the Respondent may, in the future, offer to sell the domain name at an unreasonable price to the Complainant”. Initiating domain name dispute resolution proceedings necessarily involves putting the parties to a considerable expenditure of time and in many cases cost and the Policy must not be used unless the complainant has a reasonable and credible belief it is entitled to succeed. In particular, proceedings must not be commenced in an unjustifiable attempt to pressure a domain name owner into releasing a legitimately held domain name predating any trademark rights held by the complainant, see Sustainable Forestry Management Limited v. SFM.com and James M. van Johns “Infa dot Net” Web Services,WIPO Case No. D2002-0535.
Further, the Complaint has misconceived the nature of UDRP proceedings in citing other domain names registered by the Complainant that contain the words “rpg life” including the following domains , , , and as evidence that “clearly shows that our client has exclusive rights in domain names contained in the mark RPG LIFE”. UDRP proceedings are concerned with abusive registration of domain names and are not a test of who has the better rights to a disputed domain name nor who holds the most similar domain names.
Finally, it should also be said that it was the Complainant who, on no evidence at all, accused the Respondent of acting in bad faith and that there was “no plausible explanation” as to the Respondent’s use (and presumably choice) of the Disputed Domain Name. That, itself, is an act of bad faith and is part of the reason why the Panel has made the finding of Reverse Domain Name Hijacking. Such allegations should not be made lightly or without cogent evidence to support them and certainly not where, after obtaining instructions, it must have been apparent to the Complainant that no such allegation could properly be made against the Respondent. Indeed, in a curious inversion of the roles of the Complainant and the Respondent, it was the Complainant who tendered evidence that the Respondent’s website was ostensibly concerned with Role Playing Games and activities associated with it and hence entirely legitimate and in good faith.
The Panel therefore makes a finding of Reverse Domain Name Hijacking. 7. Decision
For the foregoing reasons, the Complaint is denied.
Nicholas Weston
Sole Panelist
Date: December 30, 2013
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