Complainant is Re-Logic, Inc. of Memphis, Indiana, United States of America represented by Middleton Reutlinger, United States of America.
Respondent is Whoisguard, Inc. of Panama City, Panama / Kenneth Buhrs of Assendelft, Netherlands, self-represented. 2. The Domain Names and Registrar
The disputed domain names and (the “Domain Names”) are registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2015. On July 30, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On July 31, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent a Complaint Deficiency Notification to Complainant on August 4, 2015 providing the registrant and contact information disclosed by the Registrar, and informing that the Complaint and/or annexes were not submitted in the appropriate electronic format as required by paragraph 3(b) of the Rules for Uniform Domain Name Dispute Resolution Policy (“the Rules”) and Annex E of the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). Complainant filed an amended Complaint on August 6, 2015.
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, and the Supplemental Rules
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 7, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 27, 2015.
The Center appointed Clive L. Elliott Q.C. as the sole panelist in this matter on September 9, 2015. 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
According to the Registrar the Domain Name was registered on March 11, 2014 and the Domain Name was registered on April 11, 2014. 5. Parties’ Contentions A. Complainant
Complainant states that it is a video game developer of Terraria, an action-adventure sandbox indie video game series, released on all platforms. The game features a variety of creatures in a randomly generated 2D world. Complainant states that development of the game Terraria began in January 2011 and was originally released for Microsoft Windows in May 2011, with over 50,000 copies sold on the first day of release. Complainant contends that the Terraria game is well known throughout the world and has sold over 12,000,000 copies worldwide.
Complainant states that it also owns the following registrations with the United States Patent and Trademark Office (hereinafter collectively “the TERRARIA Marks”):
- TERRARIA; U.S. Reg. No. 4,176,854 for use of the mark in connection with, inter alia, interactive video game programs; dated July 17, 2012.
- TERRARIA & Design; U.S. Reg. No. 4,180,576 for use of the mark in connection with, inter alia, interactive video game programs; dated July 24, 2012.
Both registrations were obtained prior to the date Respondent registered the Domain Names. In addition to the trademark registrations identified above, Complainant also relies upon common law rights it has developed in the “Terraria” marks and names in the United States of America and worldwide.
It is asserted that the Domain Names resolve and/or are redirected to a website operated by Teeria, LLC. (“Teeria”), a company of the Netherlands (the “Teeria Legends website”).
Complainant submits that the Domain Names are confusingly similar to its registered TERRARIA Marks, and contends that confusion is created because the overall impression left by the names “Teeria” and “Jteeria” suggest that these names belong to or are associated with Complainant and/or involve some affiliated or authorized use and/or promotion of the Terraria game. It is argued that there are only minor differences in the terms in that, for example, when comparing the term “terraria” with the term “teeria” there are only three different letters – with the comparison being made essentially between the terms “errar” and “eer”.
Complainant states that Respondent is not now, nor has it ever been, an authorized reseller of the Terraria game or any other of Complainant’s products, yet the Teeria Legends website appears to be designed to provide an unauthorized server to consumers dedicated to online play of the Terraria game.
Complainant alleges that Respondent has never used, or made demonstrable preparations to use, the Domain Names in connection with a bona fide offering of goods or services and Respondent does not disclose on its website that it is not affiliated with Complainant in any way. Further, Respondent is not making a legitimate, noncommercial, or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the marks at issue.
Complainant alleges that Respondent has made representations in online forums and in communications with Complainant that he is in fact generating revenue from unlawfully linking to free downloads of the Terraria game.
Complainant submits that Respondent is well aware of Complainant’s trademark rights as the TERRARIA marks have been a staple in the video game industry for a number of years. Complainant has owned rights to the TERRARIA marks well before Respondent registered the Domain Names. Complainant argues that Respondent cannot dispute that he was aware of the Terraria name and Marks since his entire website is dedicated to providing consumers with free, unauthorized access to the Terraria game. It is submitted that the intentional registration and use of a Domain Name incorporating another party’s well-known trademark is evidence of an intentional attempt to attract, for commercial gain, visitors to the registrant’s site by creating a likelihood of confusion as to source, sponsorship, or affiliation.
Complainant concludes by asserting that this is opportunistic bad faith use and registration of the Domain Names by Respondent. B. Respondent
No formal response was received from Respondent. Nevertheless, Respondent sent several emails to the Center dated August 7, 10, 11, 12 and 18 2015. Respondent denies Complainant’s allegations that his website contains illegal downloads or trademarked items from Complainant, and contends that “Teeria” does not sound like “Terraria”. Respondent asserts that he made up the name “Teeria” when registering his server and denies profiting from any Complainant related items. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant provides clear evidence that the TERRARIA trademark, (the “TERRARIA Trademark”) covering video game programs, has been used by it since in or about 2011 and registered as a trademark in the United States of America since 2012. As a result of such use and by virtue of such registration in relation to, inter-alia, video game programs Complainant owns rights, through registration and at common law, in the TERRARIA Trademark.
It appears on the basis of the record that the TERRARIA Trademark, at least in relation to video game programs, is associated exclusively with Complainant. It is also apparent that by virtue of its use and the repute of the TERRARIA Trademark that an unrelated entity or person using a similar domain name is likely to lead to members of the public being confused and deceived, at least in so far as the provision of video game programs or the playing of such video games is concerned.
Complainant argues that the Domain Names are confusingly similar to its TERRARIA Trademark. That is, on the basis that there are only minor differences and when comparing the term “Terraria” with the term “Teeria” (and “Jteeria”) there are only three different letters in the middle.
The Panel accepts that “Terraria” and “Teeria” (and “Jteeria”) are similar and that the overall impression created by the two is substantially similar if not the same.
While Respondent failed to file a formal response Respondent has denied through email communications that his website contains illegal downloads or trademarked items from Complainant. Respondent contends that “Teeria” does not sound like “Terraria”. There might be some merit in this argument. However, the look and overall impression created by “Teeria” and “Terraria” (and “Jteeria”) is substantially the same.
The panel notes that the content of the website would usually be disregarded under the confusing similarity test.
Respondent does not deny that his website is dedicated to providing consumers with free, unauthorized access to the Terraria game . Given the similarity between Complainant’s Trademark and the Domain Names this is likely to confuse and deceive consumers as to the true nature of the video game programs they are purchasing, licensing or otherwise using and the origin of those goods and services. Further, the overall impression is likely to be that the Domain Names are connected in some way to Complainant and/or the TERRARIA Trademark.
On this basis the Panel finds:
a) Complainant has rights in respect of the TERRARIA Trademark.
b) The Domain Names are confusingly similar to the TERRARIA Trademark.
Accordingly, the Panel is satisfied that the first element of the Policy has been met. B. Rights or Legitimate Interests
As noted above, Complainant contends that Respondent is using the Domain Names on a website dedicated to providing consumers with free and, unauthorized access to the Terraria game . In the absence of any denial, the Panel infers that through these activities Respondent is using a domain name which is confusingly similar to the TERRARIA Trademark and using Complainant’s goodwill and reputation in the video game market to attract Internet traffic. The Panel further finds that Respondent is not using the Domain Names in connection with a bona fide offering of goods and services and does not disclose on its website that it is not affiliated with Complainant in anyway.
The Panel concludes that the Domain Names have been employed as a means of improperly diverting Internet customers. In those circumstances, Respondent’s conduct cannot be characterized as legitimate and thus permissible.
On this basis the Panel finds that Respondent has no rights or legitimate interests in the Domain Names. The Panel is satisfied that the second element of the Policy has been met. C. Registered and Used in Bad Faith
Respondent has endeavored to provide an explanation as to the registration and use of the Domain Names. Respondent denies his website contains illegal downloads or trademarked items from Complainant and that he has profited from any Complainant related items. However, the Panel has found that the Domain Names are confusingly similar to the TERRARIA Trademark. Further, the Panel is satisfied that bad faith registration is supported by the fact that Complainant’s TERRARIA Trademark pre-dated Respondent’s registration of the Domain Names. In light of the pre-existing use and protection of the TERRARIA Trademark the Panel infers that Respondent (who operates in the same area as Complainant, namely the video game market) knew or ought to have known of Complainant’s prior rights.
With respect to bad faith use, the Panel finds that Respondent has attempted to attract for commercial gain Internet users to his website, thereby creating a likelihood of confusion with Complainant and/or the TERRARIA Trademark as per paragraph 4(b)(in) of the Policy.
The Panel thus finds that the third element of the Policy has been met. 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 Domain Names, and be transferred to Complainant.
Clive L. Elliott Q.C.
Sole Panelist
Date: September 23, 2015
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