The Complainant is Eidos Interactive Limited of Wimbledon, London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), represented by Bond Pearce LLP, United Kingdom.
The Respondent is Moniker Privacy Services/Taranga Services Pty Ltd. of Pompano Beach, Florida, United States of America and Wellington, New Zealand respectively.
The disputed domain name <deusex.com> (the “domain name”) is registered with Moniker Online Services Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2009 electronically and in hardcopy on February 4, 2009. On February 2, 2009, the Center transmitted by email to Moniker Online Services a request for registrar verification in connection with the domain name at issue. On February 9, 2009, Moniker Privacy Services transmitted by email to the Center its verification response disclosing registrant information for the disputed domain name which differed from the named Respondent in the Complaint. The Center sent an email communication to the Complainant on February 10, 2009 The Center sent an email communication to the Complainant on February 10, 2009 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 February 13, 2009. The Center verified that the Complaint satisfied the formal requirements of the Uniform domain name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the “Policy”), the Rules for Uniform domain name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the “Rules”), and the WIPO Supplemental Rules for Uniform domain name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 16, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 8, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 9, 2009.
The Center appointed Dr. Andrea Jaeger-Lenz to act as sole panelist in this matter on March 17, 2009. The Panel finds that it was properly constituted. It 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.
The Panel has independently determined and agreed with the assessment of the Center that the Complaint formally complies with the requirements of the Policy, the Rules and the Supplemental Rules.
The Complainant has stated that it is a leading developer and publisher of entertainment software with a significant portfolio of game titles for PC, Playstation, GameCube, Xbox and N-Gage. It is a subsidiary of SCi Entertainment Group plc, which is the UK's leading publisher of computer games and one of the world's leading developers and publishers of entertainment software, generating a turnover of some GBP118.9 million in the UK within a twelve month period until June 30, 2008. The Complainant publishes a computer game named “DEUS EX”. In December 2003 a sequel of the game was published called “DEUS EX: Invisible War”. A third version is currently being developed and has already been promoted and actively discussed in various gaming magazines and forums.
The Complainant is the registered owner of a series of trade marks (details enclosed at Exhibit 3):
- Community Trademark registration No. 968073 for DEUS EX in classes 9, 16 and 28 which is registered with effect from October 23, 1998.
- Community Trademark registration No. 2508091 for DEUS EX 2: INVISIBLE WAR in classes 9, 16 and 28 which is registered with effect from December 19, 2001
- Community Trademark registration No. 3072782 for DEUS EX: INVISIBLE WAR in classes 9, 16 and 28 which is registered with effect from February 27, 2003.
The Complainant and other companies within the group of which the Complainant is an affiliate have also registered the following domain names: <deusex.asia>, <deusex2.co.uk>, <deusex2game.de>, <deusex3.com> and <deusexgame.com>.
The Complainant claims that after releasing its first “DEUS EX” computer game in June 2000, the game became very popular and DEUS EX became a global brand with substantial goodwill and reputation. The game has been regularly featured in leading gaming magazines and gaming forums throughout the world and has won numerous industry “Game of the Year” awards and other accolades including “Best PC Game of All Time” in a 2007 poll carried out by UK gaming magazine PC zone. In the meantime, even the film rights have been optioned to a Hollywood studio. Moreover, the Complainant has annexed to its Complaint a Google search illustrating the Complainant's reputation in the DEUS EX brand.
The Complainant alleges that the disputed domain name <deusex.com> should no longer be registered with the Respondent but that it should be transferred to the Complainant.
It contends that this is justified because, within the meaning of paragraph 4 of the Policy, the domain name is identical to the Complainant's registered trademark DEUS EX, that the Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to the Complainant.
(i) In support of its case on the first of these three elements, the Complainant relies on the registered trademark already referred to and says that the domain name is self-evidently identical to the DEUS EX mark because the Respondent has incorporated into the domain name the trademark in its entirety and added nothing else.
(ii) The Complainant further submitted that the mere adjunction of the suffix “.com” in the domain name is purely descriptive and thus has no legal significance, whereas the distinctive elements are identical to the trademark.
The Complainant contends, to establish the second element that the Respondent has no rights or legitimate interests in the domain name for the following reasons:
(i) the Complainant has no connection or affiliation with the Respondent and has not licensed or otherwise granted permission to the Respondent to use its trade mark or apply for any domain names incorporating the trademark;
(ii) the Respondent has not registered DEUS EX as a trademark and does not have any other rights in the domain name;
(iii) the Respondent does not hold itself out as, and is not otherwise known as “Deusex” and has no common law rights in “Deusex”;
(iv) the Respondent is not making a bona fide commercial or fair use of the disputed domain name;
(v) the Respondent is not making a legitimate or bona fide use of the domain name as it resolves to a website containing links to various pornographic websites.
Finally, the Complainant contends that the domain name was registered and is being used in bad faith for numerous reasons including the following:
(i) by using the domain name for commercial pornographic websites the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship and/or affiliation;
(ii) although investigations by the Complainant have not revealed any Nominet, National Arbitration Forum or WIPO decisions against the Respondent Taranga Services Pty Ltd., the Complainant contends that the Respondent Taranga Services Pty Ltd uses the Respondent Moniker Privacy Services to maintain its anonymity which in the circumstances of this case is consistent with an inference of bad faith in registering and using the domain name;
(iii) the Respondent's use of the domain name will inevitably tarnish the Complainant's trademark and detrimentally affect the integrity of the DEUS EX brand and thus damage the Complainant's substantial reputation and goodwill built up over a number of years;
(iv) since the Complainant's trademark is well-known and the use of the domain name gives rise to a likelihood of confusion and deception, the Complainant contends that the fame and reputation of its trademark is persuasive in determining the Respondent's bad faith;
(v) the Respondent must have been aware of the Complainant's rights in its trademark when it registered the domain name in August 2007 (details enclosed at Exhibit 10).
(vi) investigations carried out by the Complainant revealed that the domain name is using “http://as.casalemedia.com” to manage the revenue generation (details enclosed at Exhibit 11).
(vii) the Respondent Moniker Privacy Services has a history of registering and using disputed domain names without any legitimate rights and interests including some 72 UDRP National Arbitration Forum and WIPO decisions (details enclosed at Exhibit 12).
The Complainant requests a decision that the domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant's contentions.
The Panel finds that the proceedings have been conducted in accordance with the Rules and the Policy. The procedural history of this case raises the question as to whether the Respondent has received notice of this proceeding. However, having gone through the series of communications as set out above under the section on procedural history, the Panel concludes that the Center has duly notified the Respondent of this proceeding and has discharged its responsibility under paragraph 2(a) of the Rules. Both Moniker Privacy Services and Taranga Services Pty Ltd are to be considered as the Respondent. The Respondent Taranga Services Pty Ltd had apparently deliberately used the Respondent Moniker Privacy Services in order to avoid revealing his identity, Moniker Privacy Services having something of a history of offering anonymity to third party not wanting to disclose their true name (see for example Jackson National Life Insurance Company v. Dan, Booker Total Net Solutions / Moniker Privacy Services, WIPO Case No. D2008-1505). In any event, a privacy or proxy registration service may be regarded as acting in an agency capacity for the principal (being the underlying registrant). Thus, any failure of Moniker Privacy Services to respond shall be imputed to Taranga Services Pty Ltd, and vice versa.
The Panel has reviewed the Complaint together with its annexes and, in the light of this material, the Panel finds as set out below.
This Panel does not find any exceptional circumstances pursuant to paragraph 5(e) of the Rules so as to prevent this Panel determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
In that regard, the Panel also notes that the fact that the Respondent has not made a submission does not avoid the necessity of examining the issues and of doing so in the light of the evidence. Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects as set out in paragraph 4(a) of the Policy. Past UDRP panels have said many times that despite the absence of a submission from a respondent, a complainant must nevertheless show that all three elements of the Policy have been made out before any order can be made to transfer a domain name (see, for example, PRL USA Holdings, Inc. v. Yan Shif, WIPO Case No. D2006-0700). Namely, the Complainant must prove that:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy stipulates that a complainant must prove that each of the three elements is present. Therefore, the Panel will deal with each of these requirements in turn.
Under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the panel “shall draw such inferences therefrom as it considers appropriate”. Therefore, in a case where a respondent fails to file a response, a panel may draw negative inferences from the respondent's default (see paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“the Overview”)).
Where the respondent chooses not to present any such evidence to dispute the claims of the complainant, an inference may be made that such evidence would not have been favorable to the respondent, or that he accepts the factual claims of the complainant, or even that he does not wish to respond or defend his perceived interest in the disputed domain name. (See, Caterpillar Inc. v. Spiral Matrix/Kentech, Inc./Titan Net/ NOCDC, Inc., WIPO Case No. D2006-0808.)
Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
Thus, the Complainant must prove two elements, i.e., that it holds the trademark or service mark right; and that the disputed domain name is identical with or confusingly similar to its trademark or service mark.
The Complainant has proven that it is the registered owner of the Community Trademark registration No. 968073 for DEUS EX in classes 9, 16 and 28 which is registered with effect from October 23, 1998 and thus proved the first limb in line with paragraph 4(a)(i) of the Policy.
Moreover the Panel finds that the domain name <deusex.com> is identical to the Complainant's registered trademark DEUS EX, since the trademark in its entirety has been reproduced in the domain name, and the domain name is spelt and pronounced in exactly the same manner as the trademark. The fact that the blank space between the words “deus” and “ex” does not feature in the domain name is due to technical reasons of the domain name system and does not lead away from identity. The Panel agrees with the Complainant that the addition of the gTLD suffix “.com” is not a distinguishing feature and does not have an impact on the analysis.
Accordingly, the Complainant has substantiated the first of the three elements that it must establish.
Under paragraph 4(a)(ii), the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name.
But by virtue of paragraph 4(c) of the Policy, it is open to the Respondent to establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to the respondent of the dispute, its use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Thus, if the Respondent proves any of these elements or indeed anything else that shows it has a right or interest in the domain name, the Complainant will have failed to discharge its onus and the Complaint will fail.
The Panel's task in deciding if a registrant has any rights or legitimate interests in a domain name is made more difficult when, as in the present case, the Respondent is in default and does not file a Response or any other form of submission. The Respondent was given notice that it had until March 8, 2009 to send in a Response, that it would otherwise be considered in default if it did not do so and that, by virtue of paragraph 14 of the Rules, the Panel might draw appropriate inferences from that default.
It is also well established that, as it is put in paragraph 2.1 of the Overview that “…a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a) (ii) of the UDRP”.
The Panel, after considering all of the evidence in the Complaint and the exhibits attached to it, finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the domain name.
That finding is based on the facts that the Respondent chose for its domain name a name identical to the Complainant's trademark. The trademark reflects the name of a well-known, popular and globally distributed computer game, which the Respondent is likely to have known. The Complainant has never given the Respondent permission to use its trademark in a domain name or otherwise. The Respondent has not registered “DEUS EX” as a trademark and does not have any other rights in the domain name. The Respondent does not hold itself out as, nor is it otherwise known as “Deusex” and has no common law rights in “Deusex”. The Respondent is not making a bona fide commercial or fair use of the disputed domain name as it resolves to a website containing links to various pornographic websites. Finally, it is a reasonable inference that all of this has been done to generate revenue by attracting Internet users to websites which contain pornographic material.
The Respondent has not made any attempt to rebut this prima facie case, and the Panel therefore concludes that the Respondent has no rights or legitimate interests in the domain name.
The Complainant has therefore substantiated the second of the three elements that it must establish.
The Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith (see, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
Further guidance on how to implement this requirement is to be found in paragraph 4(b) of the Policy which sets out four circumstances, any one of which shall be evidence of the registration and use of the domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:
(i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the site or location.
In the underlying case, the Complainant mainly relies on paragraph 4(b)(iv).
The Panel finds that the evidence submitted by the Complainant makes out a strong case that the Respondent both registered and is using the domain name in bad faith. In particular, the facts bring the case squarely within the provision of paragraph 4(b)(iv) of the Policy for the following reasons.
The evidence shows that the Respondent has registered the precise wording of the Complainant's DEUS EX trademark as a domain name and used it to establish a website containing links to various pornographic websites.
Both under previous WIPO panel decisions (see, for instance, Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397; Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806 and under paragraph 2 of the Policy, it is well-established that when someone registers a domain name, s/he represents and warrants to the registrar that, to her/his knowledge, the registration of the domain name will not infringe the rights of any third party.
However, in the underlying case, the Panelist reasonably finds that since the Complainant's trademark is well known worldwide, it is very unlikely that Respondent, at the time it registered the domain name, was not aware of the infringement of the Complainant's trademark DEUS EX. The Complainant's trademark DEUS EX was first registered in October 1998, whereas the Respondent registered the domain name in August 2007. The Complainant has shown evidence that its trademark in the meantime gained global recognition and the game itself a degree of worldwide popularity.
With respect to the Respondent's use of the domain name to attract Internet users to an adult content website, it is commonly understood, under WIPO panel decisions and it is the Panel's view in the pending case, that, whatever might be the Respondent's motivation, the use of domain names to divert users to pornographic sites is itself certainly consistent with the finding that the domain name was registered and is being used in bad faith (see Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022; Caledonia Motor Group Limited v. Amizon, WIPO Case No. D2001-0860; Bass Hotels & Resorts, Inc. v. Mike Rodgerall, WIPO Case No. D2000-0568).
Furthermore, it is a reasonable inference to draw that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship and/or affiliation. The Complainant has provided evidence of the fact that the Respondent is using the confusion in the consumer's minds over the use of DEUS EX in order to divert users to its website. The Respondent moreover uses “http://as.casalemedia.com” a Canadian online advertising network what has been showed by a review of the website's source code, in order to generate its revenue. Thus, it can reasonably be concluded that the Respondent is engaging in this activity for commercial gain.
The present redirection to pornographic sites from a domain name incorporating a well-known mark in this case is consequently evidence of bad faith.
It needs hardly be added that an essential feature of the whole of the Respondent's conduct is that it is entirely deceptive. Indeed, not only has the Respondent used a privacy service to maintain its anonymity, the privacy service itself is the proprietor of numerous domains including, for instance, inter alia, <adidasshoes.com>, <adobe-flahplayer.com>, <barclaysbank.com>, <ipodshuffle.net> and <sonyericcsson.com>, and has already been subject to numerous UDRP National Arbitration Forum and WIPO decisions in the past.
In light of the aforementioned facts and the Respondent's particular conduct in the underlying case the Panel reasonably concludes that the Respondent has intentionally attempted to attract and indeed has attracted for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website. Therefore, in light of the above, the Panel finds that the Complainant has proven bad faith in registration and use of the domain name on the part of the Respondent.
6.30 The conclusions expressed above are well supported by numerous analogous UDRP decisions, including those cited by the Complainant, namely CanWest Mediaworks Publications Inc. v. Moniker Privacy Services, WIPO Case No. D2008-0686; Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022.
The Complainant has thus substantiated the third of the three elements that it must establish.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <deusex.com> be transferred to the Complainant.
Dr. Andrea Jaeger-Lenz
Dated: March 31, 2009