ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Riot Games, Inc. v. Benjamin Dover, Rambo Shop Case No. D2024-1127 1. The Parties Complainant is Riot Games, Inc., United States of America (“United States”), represented by Marq Vision Inc., Republic of Korea. Respondent is Benjamin Dover, Rambo Shop, Canada. 2. The Domain Name and Registrar The disputed domain name is registered with Porkbun LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 14, 2024. On March 15, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 15, 2024, 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 Complainant on March 18, 2024 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on March 18, 2024. 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 Respondent of the Complaint, and the proceedings commenced on March 25, 2024. In accordance with the Rules, paragraph 5, the due date for Response was April 14, 2024. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 15, 2025. The Center appointed Frederick M. Abbott as the sole panelist in this matter on April 19, 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.
page 2 4. Factual Background Complainant is a corporation organized under the laws of the State of Delaware, United States. Complainant produces, manufactures, and distributes online games and merchandise under the trademark RIOT GAMES. Among Complainant’s games is the popular “League of Legends” series. Complainant operates a commercial website at the domain name . Complainant is the owner of registrations for the word, and word and design, trademark RIOT GAMES on the Principal Register of the United States Patent and Trademark Office (“USPTO”), including word registration number 4109440, registration dated March 6, 2012, in international classes (“ICs”) 9, 38, and 41, covering, inter alia, downloadable and online video game software, and providing chat rooms for interactive discussion; word registration number 4,597,374, initial registration dated September 2, 2014, in ICs 25 and 28, covering clothing and toys, as further specified, and: word and design registration number 6,404,044, registration dated June 29, 2021, in IC 41, covering entertainment services, including interactive online video game services. According to the Registrar’s verification, Respondent is the registrant of the disputed domain name. According to the WhoIs record, the disputed domain name was registered on February 2, 2024. The disputed domain name was registered with a privacy shield (Private by Design, LLC, as per the annex to the Complaint). There is no indication on the record that any party other than Respondent has owned or controlled the disputed domain name since its creation, although the record of registration was updated on March 15, 2024. There is no evidence on the record of this proceeding that Respondent has used the disputed domain name in connection with an active website. However, Respondent has used the disputed domain name as the sender email domain for messages that falsely purport to originate with an actual employee of Complainant, including business title, corporate logo, and address information. Respondent’s conduct includes transmitting falsified requests to an ISP demanding on behalf of Complainant the copyright enforcement-based removal of video content on YouTube that addresses Complainant’s video games, as well as demanding payment to desist from this type of activity. There is no indication of any commercial or other relationship between Respondent and Complainant. 5. Parties’ Contentions A. Complainant Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Complainant alleges that it owns rights in the trademark RIOT GAMES and that the disputed domain name is identical or confusingly similar to that trademark. Complainant argues that Respondent lacks rights or legitimate interest in the disputed domain name because: (1) Respondent is not commonly known by the disputed domain name; (2) Respondent has not acquired trademark or service mark rights; (3) Respondent has not been authorized by Complainant to use its well-known mark; (4) Respondent has not engaged in actual or contemplated bona fide legitimate use of the disputed domain name, and (5) the disputed domain name is registered in a form that is identical to Complainant’s trademark. Complainant contends that Respondent registered and is using the disputed domain name in bad faith because: (1) Respondent must have been aware of Complainant and its trademark when it registered the disputed domain name; (2) the second level term in the disputed domain name is identical to Complainant’s trademark and can lead to Internet user confusion; (3) Respondent uses the disputed domain name for fraudulent purposes, including impersonating Complainant and its employee, and demanding payment to refrain from shutting down a YouTube channel under false pretenses.
page 3 Complainer requests that the Panel direct the registrar to transfer the disputed domain name to Complainant. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)). The Center formally notified the Complaint to Respondent at the email and physical addresses provided in its record of registration. Courier delivery of the Complaint to Respondent could not be completed because of an inaccurate physical address in Respondent’s record of registration. There is no indication of difficulty in transmission of email notification to Respondent. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements. Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; (ii) 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. Each of the aforesaid three elements must be proved by a complainant to warrant relief. A. Identical or Confusingly Similar 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 Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is identical to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The Panel finds 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 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 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
page 4 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. Having reviewed the available record, the Panel finds Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has not rebutted Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. Panels have held that the use of a domain name for illegal activity, here impersonating Complainant and its employee to deliberately and deceptively cause injury to a video content producer and seeking payment to refrain from continuing such conduct, can never confer rights or legitimate interests on Respondent. WIPO Overview 3.0, section 2.13.1. The Panel finds 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. In the present case, the Panel notes that Respondent was manifestly aware of Complainant and its trademark when it registered and used the disputed domain name in that it specifically identified and impersonated an employee of Complainant, his business title, corporate logo and contact information. Respondent targeted Complainant for purposes of carrying out its wrongful conduct. Panels have held that the use of a domain name for illegal activity, here impersonating Complainant and its employee to deliberately and deceptively cause injury to a video content producer and seeking payment to refrain from continuing such conduct, constitutes bad faith. WIPO Overview 3.0, section 3.4. This constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy in that Respondent has intentionally used the disputed domain name to attract for commercial gain Internet users to its online location by creating a likelihood of confusion regarding Complainant’s association with Respondent’s online (email) location. Having reviewed the record, the Panel finds Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy. The Panel finds that Complainant has established the third element of the Policy. 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 Complainant. /Frederick M. Abbott/ Frederick M. Abbott Sole Panelist Date: May 3, 2024
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