WIPO Arbitration and Mediation Center
Case No. WIPO2007PL1
FINAL AWARD
In an arbitration under the
WIPO Expedited Arbitration Rules for Domain Name Dispute Resolution under .PL
between:
Jagex Limited
St. Andrews House
90 St. Andrews Road, Cambridge
Cambridgeshire CB4 1DL
United Kingdom of Great Britain and Northern Ireland
Claimant
and
Mr. Daniel Cox
St. 14036 Parland Blvd. S.E
T2J3X5 Calgary, Canada
Respondent
Arbitral Tribunal
Mr. Mark V. B. Partridge
Representatives of the Claimant
Adam Taylor
Adlex Solicitors
76a Belsize Lane, London NW3 5BJ
United Kingdom of Great Britain and Northern Ireland
Respondent is not represented by legal counsel
This Award is issued by me as Sole Arbitrator in the dispute between Jagex Limited. (Claimant) and Mr. Daniel Cox (Respondent) regarding a dispute over the domain name <runescape.pl> (the Domain Name).
1. THE PROCEEDINGS
1.1. Parties to the Arbitration
Claimant is a designer, developer and operator of online computer games, including the online computer game offered under the mark RUNESCAPE.
Respondent is an individual who resides in Calgary, Alberta, Canada.
1.2. Arbitration Agreement, Rules and Place of Arbitration
1.2.1 After Claimant, in accordance with Article 6(a) of the WIPO Expedited Arbitration Rules for Domain Name Dispute Resolution under .PL (the Expedited Rules; available at “ https://www.wipo.int/amc/en/domains/rules/cctld/expedited/pl/index.html”), notified the WIPO Arbitration and Mediation Center (the Center) in writing of Claimant’s intention to file the present case, both parties have signed the Arbitration Agreement in accordance with Article 6(b) of the Expedited Rules.
1.2.2 The version of the Expedited Rules applicable to the present arbitral proceedings is, pursuant to Article 2(b) of the Expedited Rules, that in effect as of the date of commencement of this arbitration.
1.2.3 In accordance with Article 34 of the Expedited Rules, the Sole Arbitrator has decided that the Place of Arbitration be Chicago, Illinois, United States of America.
1.3. Procedure
1.3.1 On October 19, 2007, Claimant transmitted to the WIPO Arbitration and Mediation Center (the Center) and to Respondent the Request for Arbitration together with the Statement of Claim (together, the Statement of Claim) in accordance with Article 10 of the Expedited Rules.
1.3.2 Pursuant to Article 8 of the Expedited Rules, the date of commencement of the arbitration is October 22, 2007 and in accordance with Article 12 of the Expedited Rules, the due date for Answer to the Request and Statement of Defense was November 11, 2007. Respondent did not submit any Answer to the Request and Statement of Defense.
1.3.3 On November 14, 2007, the Center notified the parties of Respondent’s default in accordance with Article 12 of the Expedited Rules.
1.3.4 On November 29, 2007, after receipt of an unqualified Statement of Acceptance, Impartiality and Independence, the Center appointed the undersigned, Mr. Mark V.B. Partridge, as Sole Arbitrator pursuant to Article 15 of the Expedited Rules.
1.3.5 On December 11, 2007, the Sole Arbitrator issued Procedural Order No. 1 regarding further written submissions, requests for live hearing and close of the proceedings. No responses were received.
1.3.6 On December 19, 2007, with reference to Article 46 of the Expedited Rules, the Sole Arbitrator declared the proceedings closed.
2. SUMMARY OF SUBMISSIONS
2.1. Claimant
In its Statement of Claim, Claimant states the following:
Claimant was incorporated on April 28, 2000 and since 2001 has been in the business of designing, developing, and operating online computer games.
Claimant's RUNESCAPE product is a large online computer game in which players undertake tasks and interact with each other in themed evolving virtual worlds.
As of June 2006 there were 4.6 million active registered RUNESCAPE and over 740,000 RUNESCAPE subscribers worldwide.
Claimant registered the domain name <runescape.com> in January 2000.
Claimant owns registrations of RUNESCAPE in the following jurisdictions: United Kingdom, European Community, United States, Australia and Canada.
From 2003 to 2006, Claimant had over 5,500 transactions in connection with its RUNESCAPE game in Poland.
Respondent registered the domain name <runescape.pl> on May 14, 2005.
Respondent’s website contains links to online game websites which compete with Claimant and its RUNESCAPE game.
In March 2006, Claimant sent two cease and desist emails to Respondent and then mailed hard copies of the cease and desist letters in April 2006.
2.2. Respondent
Respondent did not answer any allegations made by Claimant.
3. FINDINGS
Article 45 of the Expedited Rules allows the Arbitration to proceed if Respondent without good cause fails to submit a Statement of Defense. Further, since Respondent has defaulted, the Sole Arbitrator may draw inferences where he deems appropriate. In this case, the Sole Arbitrator accepts the facts asserted by Claimant where these do not appear implausible.
The Sole Arbitrator notes Claimant e-mailed Respondent on September 17, 2007 proposing the language of the proceeding to be English and that the substantive law to be applied to this domain name dispute would be that of England and Wales. Respondent never replied to Claimant’s proposal and as such the language of this proceeding will be English, pursuant to Article 35(a) of the Expedited Rules.
Article 48 of the Expedited Rules provides, in relevant part, that the Tribunal shall decide the substance of the dispute in accordance with the law or rules of law chosen by the parties. Claimant proposed the laws of England and Wales as the substantive law applicable to the arbitration in its email to Respondent. The Statement of Claim alternatively proposed the principles of the Uniform Domain Name Dispute Resolution Policy (UDRP) be used as the basis of this decision. Respondent has not pronounced itself on this issue. However this may be, since the UDRP was specifically created to address situations like the one presented here the Sole Arbitrator will base his decision upon the substantive rules of the UDRP.
Paragraph 4(a) of the UDRP requires each of the following three elements must be proved in order to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Claimant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
I. Identical or Confusingly Similar
Claimant is the owner of trademark registrations for RUNESCAPE in Canada, the European Community and other jurisdictions throughout the world. As of June 2006 Claimant’s RUNESCAPE game had at least 4.6 million active players. Clearly, Claimant has trademark rights in the term RUNESCAPE. Here, the domain name is identical to Claimant’s mark with the exception it contains the .PL country code designation. Previous, WIPO decisions have held the addition of adding only the generic top level domain (gTLD) identifier does nothing to reduce the confusing similarity between domain names and trademarks. See, MasterCard International v. Paul Barbell, WIPO Case No. D2007-1139 (holding domain name <priceless.org> is confusingly similar to Complainant’s PRICELESS mark). While in this case Respondent has added the ccTLD .PL to Claimant’s mark, the same principle applies.
The disputed domain name is identical to a service mark in which Claimant has rights.
II. Rights or Legitimate Interests
Claimant has made a prima facie showing Respondent lacks any rights or legitimate interest in the domain name. Respondent has not made a bona fide offering of goods or services under the domain name, does not hold any trademark registrations relating to that name, and is not generally known by that name. Further, Respondent is not making fair or noncommercial use of the domain name.
III. Registered and Used in Bad Faith
Respondent registered the domain name four years after Claimant had begun operating its RuneScape game at <runescape.com> and a year after Claimant obtained a registration of RUNESCAPE with the European Trademark Office whose jurisdiction covers Poland. It is highly unlikely Respondent was not aware of Claimant’s trademark when he registered the domain name. Respondent is using the domain name for the operation of a click-through website which provides links to websites of competitors of the Claimant. The evidence shows Respondent was not authorized or licensed to use the Claimant’s trademark and Respondent did not file any response contesting this claim. Respondent appears to have deliberately traded on the goodwill of Claimant, by attracting internet users and diverting internet traffic intended for Claimant’s website to the Respondent’s website for the purpose of monetary gain. This sort of behavior demonstrates bad faith registration and use of the domain name.
IV. Damages
Claimant has also requested an accounting of profits derived from the domain name. The request, however, is not supported by specific authority or evidence. It appears that the primary purpose of this arbitration was to determine the ownership of the domain name. Claimant waited 18 months after sending its cease and desist letters before initiating this proceeding, suggesting that any monetary loss caused by the domain name was not egregious. Given that delay and the absence of evidence of actual confusion leading to specific loss to Claimant, the Sole Arbitrator concludes there is not sufficient basis for a monetary award in this proceeding.
4. DECISION
Based on the foregoing considerations and reasons, the Sole Arbitrator issues his Final Award in Chicago, Illinois, on January 2, 2008, holding as follows:
The Domain Name <runescape.pl> shall be transferred from Respondent to Claimant in accordance with Article 36(a) of the WIPO Expedited Arbitration Rules for Domain Name Dispute Resolution under .PL.
Claimant's request for additional monetary relief is denied.
5. COSTS
Articles 59 and 60 of the Expedited Rules allow the Tribunal to make an award of costs and expenses, including fees incurred for legal representation.
The record indicates that Respondent is engaged in the business of registering domain names for commercial use. There appears to be no bona fide basis for Respondent's registration of the disputed domain name, and Respondent has offered no justification for its conduct. Claimant's efforts to resolve this matter prior to initiating this proceeding were ignored, leading Claimant to incur added cost to obtain appropriate relief. These expenses could have been avoided if Respondent had acted in good faith when contacted about the dispute. Respondent signed the Arbitration Agreement and was therefore aware that its failure to defend could result in an award of costs and expenses. Given Claimant’s well-established rights, the deliberate nature of Respondent’s infringement and Respondent’s failure to cooperate after notice of the dispute, and, on the other hand, the considerations set out in section 3 IV above, the Sole Arbitrator concludes that Respondent should share the burden of expense in this proceeding as follows.
Pursuant to Articles 59 and 60 of the Expedited Rules, it is ordered that Respondent shall pay Claimant the cost of this arbitration in the amount of the case registration fee and the Arbitrator’s fee, in a total amount of US$1,500.
6. NOTIFICATION AND PUBLICATION OF THE AWARD
Pursuant to Article 64 of the Expedited Rules, this Award will be published in full at the website of the WIPO Arbitration and Mediation Center. The Award is signed in four (4) originals and is to be notified by the Center as follows:
6.1 one original to the Representative of the Claimant;
6.2 one original to Respondent;
6.3 one original to be retained by the WIPO Center;
6.4 one original retained by the Sole Arbitrator; and
6.5 one original to the Registry NASK.
Mark V. B. Partridge
Sole Arbitrator
Chicago, Illinois
Dated: January 8, 2008