ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Riot Games, Inc. v. John Case No. D2024-1261 1. The Parties The Complainant is Riot Games, Inc., United States of America, represented by Marq Vision Inc., Republic of Korea. The Respondent is John, Russian Federation. 2. The Domain Name and Registrar The disputed domain name is registered with PSI-USA, Inc. dba Domain Robot (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2024. On March 25, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 26, 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 (John / Registrar (PSI-USA, Inc.)) and contact information in the Complaint. The Center sent an email communication to the Complainant on March 28, 2024, 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 March 28, 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 the Respondent of the Complaint, and the proceedings commenced on April 2, 2024. In accordance with the Rules, paragraph 5, the due date for Response was April 22, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 26, 2024.
page 2 The Center appointed Andrew F. Christie as the sole panelist in this matter on May 6, 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 is a company incorporated under the laws of the State of Delaware, United States, in May 2006. It is recognized for its production, manufacturing, and distribution of online games and merchandise under the brand name “Riot Games”. The Complainant owns a number of trademark registrations consisting of, or including, the trademark RIOT, including United States Trademark Registration No. 4641399 for the word trademark RIOT (registered November 18, 2014) and Swiss Trademark Registration No. 745972 for the word trademark RIOT GAMES ARCANE (registered April 23, 2020). The Complainant actively promotes its trademarks though its official website at “www.riotgames.com”. The disputed domain name was registered on December 10, 2023. The Complainant has provided an undated screenshot showing that the disputed domain name resolved to a webpage with the banner headline “ANNUAL VALORANT UNIQUE GIVEWAY”, containing the text “Riot Games makes a unique giveaway! Get the rarest skins completely free for the Valorant game!”, and displaying a logo containing the words RIOT GAMES. As at the date of this decision, the disputed domain name does not resolve to an active location. 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. The Complainant contends that the disputed domain name is confusingly similar to a trademark in which it has rights on the following grounds, among others. The disputed domain name is registered in a form that incorporates the Complainant’s registered trademark RIOT, along with a significant portion of the Complainant’s registered trademark RIOT GAMES ARCANE, with the mere addition of a hyphen and the generic Top-Level Domain extension “.com”. This similarity can lead to confusion among Internet users, implying a connection to the Complainant’s business. The Complainant contends that the Respondent does not have any rights or legitimate interests in the disputed domain name and has registered and is using the disputed domain name in bad faith, on the following grounds, among others. As an internationally renowned gaming company, the Complainant has established a significant presence in the online gaming industry with its world-famous games such as “League of Legends” and “Valorant”. Moreover, the Complainant has expanded its brand reach beyond gaming by developing a Netflix series titled “Arcane”, set within the universe of “League of Legends”. The Complainant holds the trademark RIOT GAMES ARCANE, further solidifying its intellectual property rights related to the “Arcane” series. The disputed domain name incorporates elements from both the Complainant’s trademarks RIOT and RIOT GAMES ARCANE, derived from the title of its Netflix series, “Arcane”. By combining these elements, the Respondent intentionally seeks to create confusion among Internet users and to exploit the Complainant’s brand reputation and intellectual property. B. Respondent The Respondent did not reply to the Complainant’s contentions.
page 3 6. Discussion and Findings 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 the 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. The 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 Complainant’s registered word trademark RIOT is reproduced within the disputed domain name, together with the word “arcane” preceded by a hyphen. Although the addition of other terms (here, the word “arcane”) may bear on assessment of the second and third elements, the Panel finds the addition of this term does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s RIOT trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. Furthermore, the first and last elements of the Complainant’s registered word trademark RIOT GAMES ARCANE are reproduced within the disputed domain name, with a hyphen substituted for the word “games”. The Panel finds that distinctive elements of this trademark are recognizable within the disputed domain name. Accordingly, the disputed domain name is also confusingly similar to the Complainant’s RIOT GAMES ARCANE trademark 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 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 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. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the 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. The Respondent has used the disputed domain to resolve to a webpage which falsely purports to be a webpage of, or affiliate with, the Complainant - i.e., to a website which impersonates the Complainant. Panels have held that the use of a domain name for illegal activity (here, impersonation) can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. The Panel finds the second element of the Policy has been established.
page 4 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 the Respondent registered the disputed domain name some years after the Complainant registered its word trademarks RIOT and RIOT GAMES ARCANE, that the disputed domain name incorporates distinctive elements of the Complainant’s trademarks, and that the Respondent used the disputed domain name to resolve to a website which impersonates the Complainant. Given these circumstances, it is clear the Respondent registered the disputed domain name with knowledge of the Complainant’s trademarks. 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. The evidence shows that the Respondent has used the disputed domain name to impersonate the Complainant, apparently for commercial benefit. Panels have held that the use of a domain name for such an illegal activity constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy. The fact that the disputed domain name does not currently resolve to an active location does not prevent a finding of bad faith. 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. /Andrew F. Christie/ Andrew F. Christie Sole Panelist Date: May 20, 2024
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