ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Riot Games, Inc. v. Brandon Dossantos Case No. D2023-4878 1. The Parties The Complainant is Riot Games, Inc., United States of America (“United States”), represented by Marq Vision Inc., United States. The Respondent is Brandon Dossantos, United States. 2. The Domain Name and Registrar The disputed domain name (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2023. On November 23, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 23, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent (Unknown) and contact information in the Complaint. The Center sent an email communication to the Complainant on November 27, 2023, 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 amendment to the Complaint on November 28, 2023. The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 4, 2023. In accordance with the Rules, paragraph 5, the due date for Response was December 24, 2023. The Respondent submitted an online
page 2 Response to the Center on December 8, 2023. On January 30, 2024, the Center notified the Parties that the proceedings would move forward. The Center appointed Lynda M. Braun as the sole panelist in this matter on February 2, 2024. 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 corporation organized under the laws of the State of Delaware, United States, produces, manufactures, and distributes online games and merchandise. The Complainant owns multiple trademark registrations for its LEAGUE OF LEGENDS trademarks with the United States Patent and Trademark Office (“USPTO”), including, but not limited to: LEAGUE OF LEGENDS, United States Trademark Registration No. 3,756,125, registered on March 2, 2010, in international classes 9, 16, 38, and 41; LEAGUE OF LEGENDS, United States Trademark Registration No. 4,576,135, registered on July 29, 2014, in international classes 16, 20, 25, and 28; LEAGUE OF LEGENDS (stylized), United States Trademark Registration No. 6,782,216, registered on July 5, 2022, in international class 41; and LEAGUE OF LEGENDS (stylized), United States Trademark Registration No. 6,851,089, registered on September 20, 2022, in international class 9. In addition, the Complainant owns registered LEAGUE OF LEGENDS trademarks in various jurisdictions worldwide. The aforementioned trademarks will hereinafter collectively be referred to as the “LEAGUE OF LEGENDS Mark”. The LEAGUE OF LEGENDS Mark is often abbreviated as “LOL”. The Complainant owns the domain name that resolves to its official website at “www.leagueoflegends.com”. The Complainant prominently uses and actively promotes its LEAGUE OF LEGENDS Mark through its websites linked to the domain name. The Disputed Domain Name was registered on January 29, 2023. As of the writing of this Decision, the Disputed Domain Name resolves to an inactive error landing page with no substantive content that states, “This site can’t be reached. leagueoflegend.lol’s DNS address could not be found.” 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Disputed Domain Name. Notably, the Complainant contends that: - the Disputed Domain Name is confusingly similar to the LEAGUE OF LEGEND Mark because the Disputed Domain Name contains the LEAGUE OF LEGENDS Mark in its entirety, albeit without the letter “s”, followed by the generic Top-Level Domain (“gTLD”) “.lol”, and thus does not prevent a finding of confusing similarity; - the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Complainant has not authorized the Respondent to register a domain name containing the LEAGUE OF LEGENDS Mark, the Respondent was not making a bona fide offering of goods or services through use of the Disputed Domain Name, and the Respondent has never been commonly known by the LEAGUE OF LEGENDS Mark or any similar name; and - the Disputed Domain Name was registered and is being used in bad faith because, among other things, although access to the website at the Disputed Domain Name is currently blocked, the Disputed Domain
page 3 Name is being employed to host a website accessible at “http://login.okta.leagueoflegend.lol", unmistakably indicating the utilization of the subdomain “login.okta”.0F1 Given that the Complainant also employs the name “okta” in their Single Sign-On (SSO) service, this strongly suggests a deliberate attempt to mimic the Complainant’s official Okta Single Sign-On (SSO) service. The intention appears to be to collect sensitive login information under the guise of an official Okta login page, thereby deceiving users into providing confidential information through imitation of the authentic login processes. This poses a significant security breach. The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy. B. Respondent The Respondent submitted a Response on December 8, 2023. As to elements one and two, the Respondent did not rebut the Complainant’s contentions. As to element three, the Respondent denied registering and using the Disputed Domain Name in bad faith, but instead claimed that as a cybersecurity professional, the Respondent registered and was using the Disputed Domain Name for educational purposes “to educate myself on the level of effort for this attacker behavior, how one could set up an infrastructure to support the attack, and what logs would be produced when a user interacts with the reverse proxy server.” In addition, the Respondent agreed to cancel the Disputed Domain Name. 6 Discussion and Findings In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)): (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 was registered and is being used in bad faith. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires a two-fold inquiry: a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark. The Panel concludes that in the present case, the Disputed Domain Name is confusingly similar to the LEAGUE OF LEGENDS Mark. It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. Here, the Panel concludes that the Disputed Domain Name is confusingly similar to the LEAGUE OF LEGENDS Mark for purposes of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. It is uncontroverted that the Complainant has established rights in the LEAGUE OF LEGENDS Mark based on its years of use as well as its registered trademarks for the LEAGUE OF LEGENDS before the USPTO and jurisdictions worldwide. The consensus view of panels is that “registration of a mark is prima facie evidence of validity.” See CWI, Inc. v. Domain Administrator c/o Dynadot, WIPO Case No. D2015-1734. 1 Okta is a secure identity cloud that links apps, logins, and devices into a unified digital source.
page 4 The Respondent has not rebutted this view, and therefore the Panel finds that the Complainant has rights in the LEAGUE OF LEGENDS Mark. The Disputed Domain Name consists of the LEAGUE OF LEGENDS Mark in its entirety, although misspelled by deleting one letter – the letter “s” in “legends”, and then followed by the gTLD “.lol”. Such a minor modification to a trademark is commonly referred to as “typosquatting” and seeks to wrongfully take advantage of errors by a user in typing a domain name into a web browser. The misspelling of the Disputed Domain Name does not prevent a finding of confusing similarity to the LEAGUE OF LEGENDS Mark. WIPO Overview 3.0, section 1.9 (“A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element”). Finally, the addition of a gTLD such as “.lol” in a domain name is a technical requirement. As such, it is well established that a gTLD may typically be disregarded when assessing whether a disputed domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182 and WIPO Overview 3.0, section 1.11.1. Thus, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s LEAGUE OF LEGENDS Mark. Based on the available record, the Panel finds that the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving that a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. In this case, the Panel finds that the Complainant has made out a prima facie case. The Complainant has not authorized, licensed or otherwise permitted the Respondent to use its LEAGUE OF LEGENDS Mark. Nor does the Complainant have any type of business relationship with the Respondent. Further, the Complainant contends that the Disputed Domain Name was used to create and host a website that mimics the Complainant’s official website by using the name “okta” in its SSO service, and to potentially perpetuate a phishing scheme by collecting users’ confidential information. WIPO Overview 3.0, section 2.13.1 (“Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.”). There is also no evidence that the Respondent is commonly known by the Disputed Domain Name or by any similar name. The Panel finds the Respondent’s contention that it registered and was using the Disputed Domain Name for educational purposes is not sufficient to give rise to rights or legitimate interests in the Disputed Domain Name, noting in particular the nature of the Disputed Domain Name. Thus, the Panel concludes that nothing on the record before it would support a finding that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. Rather, the Panel finds that the subtle misspelling of the Complainant’s mark in the Disputed Domain Name carries an inherent risk of misleading Internet users.
page 5 Moreover, such use would also not constitute a bona fide offering of a product or service within the meaning of paragraph 4(c)(i) of the Policy. Finally, the Respondent agreed to cancel the Disputed Domain Name. Based on the available record, the Panel finds that the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith registration and use of the Disputed Domain Name pursuant to paragraph 4(a)(iii) of the Policy. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. Having reviewed the record, the Panel finds that the Respondent’s registration and use of the Disputed Domain Name constitutes bad faith under the Policy. The Panel notes that the LEAGUE OF LEGENDS Mark is contained in its entirety in the Disputed Domain Name, albeit omitting the letter “s” from the term “legends. The use of a domain name to intentionally attempt to attract Internet users to a respondent’s website or online location by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or online location demonstrates registration and use in bad faith. Here, the Respondent’s registration and use of the Disputed Domain Name indicate that such registration and use had been done to take an unfair advantage of the similarity with the Complainant’s LEAGUE OF LEGENDS MARK. Third, the Panel concludes that the Respondent’s registration of the Disputed Domain Name carries a risk of disrupting the Complainant’s business by diverting Internet users who were searching for the Complainant’s services from its official website to the Respondent’s website, and prevents the Complainant from registering the Disputed Domain Name. The Respondent’s use of the Disputed Domain Name is also highly likely to confuse Internet users into incorrectly believing that the Respondent is somehow authorized by or affiliated with the Complainant. Fourth, the Disputed Domain Name contains a misspelling of the Complainant’s LEAGUE OF LEGENDS Mark in the Disputed Domain Name to deceive Internet users. Such misspelling is evidence of bad faith registration and use. The Panel also finds that the Respondent knew that the Complainant had rights in the LEAGUE OF LEGENDS Mark when registering the Disputed Domain Name. Thus, the Panel finds that the Respondent had the Complainant’s LEAGUE OF LEGENDS Mark in mind when registering the Disputed Domain Name. Finally, the Panel finds that in the circumstances of this case, the subsequent passive holding of the Disputed Domain Name when it resolved to an inactive error landing page with no substantive content does not prevent a finding of bad faith under the Policy. Based on the available record, the Panel finds that the third element of the Policy has been established.
page 6 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. /Lynda M. Braun/ Lynda M. Braun Sole Panelist Date: February 15, 2024
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