ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Dragonsteel, LLC v. web master, Expired domain caught by auction winner.***Maybe for sale on Dynadot Marketplace*** Case No. D2024-2445 1. The Parties The Complainant is Dragonsteel, LLC, United States of America (“United States”), represented by Shapiro IP lLaw, United States. The Respondent is web master, Expired domain caught by auction winner.***Maybe for sale on Dynadot Marketplace***, China. 2. The Domain Name and Registrar The disputed domain name is registered with Dynadot Inc (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2024. On June 17, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 18, 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 (web master) and contact information in the Complaint. The Center sent an email communication to the Complainant on June 18, 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 June 20, 2024. 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 5, 2024. In accordance with the Rules, paragraph 5, the due date for Response was July 25, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 25, 2024.
page 2 The Center appointed Dawn Osborne as the sole panelist in this matter on August 5, 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 formed to promote the books and related merchandise and events of Brandon Sanderson, a well known and successful author in the fantasy field. He has been using the name “Dragonsteel” for his company and promotional enterprises since at least 2007, when he registered the business name “Dragonsteel Entertainment, LLC,” which was renamed to “Dragonsteel, LLC” in February 2023. Dragonsteel began holding annual conventions to promote Brandon Sanderson (and fantasy in general) since at least 2019. The convention has grown steadily in size and popularity. DRAGONSTEEL NEXUS is the name of Complainant’s annual convention for fantasy books and art. The Complainant is the owner of trade mark registration number 5819306 for DRAGONSTEEL ENTERTAINMENT, registered in the United States for books, ebooks and clothing since July 30, 2019. (It also owns a registered trade mark for DRAGONSTEEL in the United States for, inter alia, books, but this has only attained registration status since May 28, 2024 after registration of the disputed domain name.) The Complainant applied, inter alia, to register the trade mark DRAGONSTEEL NEXUS in the United States for arranging fantasy conferences on February 27, 2024. It remains a pending application. The Respondent applied to register the disputed domain name on February 28, 2024, one day afterwards. The disputed domain name has been offered for sale generally for 2850 USD. 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 second level part of the Domain Name “DRAGONSTEELNEXUS” is exactly the same as the name of the Complainant’s conference and the disputed domain name is confusingly similar to the Complainant’s DRAGONSTEEL trade marks. The Respondent is not authorised by the Complainant or commonly known by the disputed domain name. The disputed domain name has not been used, merely registered in opportunistic bad faith one day after the Complainant applied to register its DRAGONSTEEL NEXUS trade mark in the United States. The Respondent then subsequently offered the disputed domain name for sale generally for a sum well in excess of registration costs. The Respondent has no rights or legitimate interests in the disputed domain name. The disputed domain name has been registered and used in opportunistic bad faith with the purpose of offering it for sale for a sum in excess of the costs of registration. 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 Panel finds that the distinctive and dominant part of the Complainant’s registered DRAGONSTEEL ENTERTAINMENT mark, namely “DRAGONSTEEL” is recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the Complainant’s DRAGONSTEEL ENTERTAINMENT registered mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms here, “NEXUS” may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s registered mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. 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. The Respondent is not authorised by the Complainant or commonly known by the disputed domain name. The Respondent registered the disputed domain name one day after the Complainant applied to register DRAGONSTEEL NEXUS as a trade mark in the United States and the Respondent has not used the disputed domain name save to offer it for sale generally for 2850 USD. Accordingly the Panel holds that it is more likely than not that the Respondent registered the disputed domain name upon finding out about the Complainant’s trade mark application for DRAGONSTEEL NEXUS for the purpose of selling the disputed domain name at profit to the Complainant, or anyone else interested, the value of the disputed domain name being inherently linked to the fact that it reflects the Complainant’s DRAGONSTEEL NEXUS mark and the name of the Complainant’s conference. There is, therefore, no bona fide offering of goods or services or legitimate non commercial fair use of the disputed domain name. 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.
page 4 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 including paragraph 4 (b) (i) “The registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant, which is the owner of the trademark or service mark, or to a competitor for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name.” In the present case, the Panel finds that the Respondent registered the disputed domain name in opportunistic bad faith to sell for profit. The Panel finds that the 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 the Complainant. /Dawn Osborne/ Dawn Osborne Sole Panelist Date: August 12, 2024
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