World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Games Workshop Limited v. Forge World Quebec Blog

Case No. D2010-1844

1. The Parties

The Complainant is Games Workshop Limited of Nottingham, United Kingdom of Great Britain and Northern Ireland, represented by Eversheds, LLP, United Kingdom.

The Respondent is Forge World Quebec Blog of Quebec, Canada.

2. The Domain Name and Registrar

The disputed domain name <forgeworld.com> is registered with Rebel.com Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2010. On November 1, 2010, the Center transmitted by email to Rebel.com Corp. a request for registrar verification in connection with the disputed domain name. On November 2, 2010, Rebel.com Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 3, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 23, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 24, 2010.

The Center appointed John Swinson as the sole panelist in this matter on December 8, 2010. 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. Re-filing of Complaint

The Complainant has previously brought a UDRP proceeding in relation to the same disputed domain name (see Games Workshop Limited v. Admin, Domain, WIPO Case No. D2008-1321). In this case, the Complainant’s complaint was denied, primarily on the basis that the Complainant failed to provide any evidence to support its allegations. A “re-filed” Complaint has been defined as “a subsequent complaint under the Uniform Policy in relation to the same domain name, that is filed by the same complainant against the same respondent to a previous complaint (Creo Products Inc. v. Website In Development, WIPO Case No. D2000-1490).

Here the Complainant contends that it is entitled to bring this Complaint irrespective of the previous decision due to the fact that there has been a change in registrant of the disputed domain name. In a previous decision where a complaint was filed against a different respondent the panel found that the complaint was not a “re-filing” and was therefore admissible (see AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527). There is no evidence that there is any relationship between the previous registrant and the current registrant, such that they are actually the same entity. In this instance, the Panel concludes that since this Complaint has been filed against a new respondent, it is admissible as a new Complaint (see AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527).

5. Factual Background

The Complainant is a company based in the United Kingdom that sells tabletop fantasy and futuristic battle games as well as various other associated products including resin models. The Complainant also sells similar products under a division known as “Forge World”. The Complainant owns two registered trademarks for the word mark FORGEWORLD.

No information is known about the Respondent.

The exact date of registration of the disputed domain name by the Respondent is unknown. It appears that the disputed domain name was first registered by another person on December 8, 1998. The website resolving from the disputed domain name is currently used as a landing page with sponsored links.

6. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

The Complainant is the world’s leading tabletop fantasy and futuristic battle games company. It sells its products via Games Workshop hobby centres and stores (of which there are more than 300 worldwide), as well as independent toy and hobby shops (of which there are over 3,700 worldwide). Sales are also made by mail order and online from the Complainant’s main website, “www.games-workshop.com”. One of the divisions of Games Workshop is known as “Forge World”, which has been selling its product ranges and models since 1999.

The Complainant is the owner of the following registered trademarks:

- European Community Trademark Registration No. 878355 for the word mark FORGEWORLD (filed July 16, 1998, registered October 5, 1999); and

- United States Trademark Registration No. 2751558 for the word mark FORGEWORLD (filed October 9, 1998, registered August 19, 2003).

The Complainant owns the domain name, <forgeworld.co.uk> from which it operates its official “Forge World” website. The Complainant also owns a number of other trademarks related to its business including WARHAMMER (United States Trademark Registration No. 2718741) and WARHAMMER 40,000 (United States Trademark Registration No. 3707457).

The Complainant spends significant sums each year in marketing and promoting the brand “Forge World” and in developing new products under that brand name. The Complainant promotes its products across the world, including to Canada (where the Respondent is located). The Complainant makes sales of approximately £10,000/month in Canada in relation to its “Forge World” branded products.

The disputed domain name contains the Complainant’s trademark in its entirety. It is well settled that the addition of a top level domain does not affect the domain for the purpose of determining whether it is identical or confusingly similar. The disputed domain name is therefore identical to the Complainant’s trademark for FORGEWORLD.

The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name and has no rights in the name “Forgeworld”. The Complainant is not aware of any other entity which has rights in the name “Forgeworld” or is commonly known by the name “Forgeworld”.

There is no evidence of the Respondent’s use of, or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Respondent is using the disputed domain to resolve to a pay-per-click website. The issue of pay-per click websites has been considered by numerous panels (see Ford Motor Company v. Domain Administrator, WIPO Case No. D2008-1856). It has been held that such use is not a bona fide offering of goods or services and cannot offer any rights or legitimate interests in a disputed domain name. The sponsored listings on the Respondent’s pay-per-click website are to third party sites which offer competing goods to those sold by the Complainant. It is therefore evident that the Respondent’s use of the disputed domain name is not in accordance with honest practices (and does not indicate that any right the Respondent may have is ‘legitimate’).

The Respondent is intentionally misusing the name “Forgeworld” to attract Internet users to the Respondent’s website and/or to divert users away from the Complainant’s website (“www.forgeworld.co.uk”). This use of the disputed domain name is causing commercial damage to the Complainant.

The disputed domain name was registered and is being used in bad faith by the Respondent.

At the time the disputed domain name was acquired by the Respondent, the Complainant’s product range under the brand “Forge World” was renowned worldwide and the Respondent was clearly aware of this. This is made clear by the Respondent’s use of some of the Complainant’s trademarks on the Respondent’s website (for example the Respondent’s website also contains a list of related searches which includes “Forge World” and “Warhammer”).

The fact that the disputed domain name is identical to the Complainant’s trademark obviously has the effect of disrupting the Complainant’s business. Additionally, many of the sponsored listings on the Respondent’s website link to websites of third party competitors of the Complainant. The disputed domain name has evidently been registered to divert potential or existing customers of the Complainant to the Complainant’s competitors (see paragraph 4(b)(iii) of the Policy).

The Respondent has no rights in the name “Forgeworld”. On this basis it can be assumed that it has intentionally registered the disputed domain name in order to take advantage of the substantial goodwill that the Complainant has built up in that name so that Internet users will be attracted to the Website and the Respondent will generate revenue via the pay-per-click advertising (see paragraph 4(b)(iv) of the Policy). The use of the name “Forgeworld” and other of the Complainant’s trademarks on the Respondent’s website also supports the Complainant’s contention that the Respondent has sought to mislead users into believing that it is in some way connected to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

7. Discussion and Findings

To succeed, a complainant must demonstrate that all of the elements in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed 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 disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The onus of proving these elements is on the complainant.

A. Identical or Confusingly Similar

The Complainant is the owner of registered trademarks for the word mark FORGEWORLD (European Community Trademark Registration No. 878355 and United States Trademark Registration No. 2751558). The Complainant is well known in the tabletop fantasy and games business. For the Complainant to succeed in this element, it must show that the disputed domain name is identical or confusingly similar to the Complainant’s trademark.

The disputed domain name reproduces the Complainant’s trademark in its entirety and contains no other distinguishing features. It is well established that the “.com” suffix can be ignored for this purpose.

The Panel therefore finds that the disputed domain name is identical to a registered trademark in which the Complainant has rights.

Accordingly, the first element has been met.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name. The Complainant in this case is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The disputed domain name is being used in connection with a website that operates as a landing page showing sponsored listings. The Complainant has provided printouts of the website resolving from the disputed domain name that clearly show sponsored listings for companies who provide similar goods and services to the Complainant and can therefore be considered competitors. For example sponsored listings for “The Terrain Store” (“www.theterrainstore.com”) and “The Games Place” (“www.thegamesplace.co.uk”) appear on the landing page. The website also contained categories of “related searches” which include “Forge World” and “Warhammer” (both registered trademarks of the Complainant). On one occasion when the Panel viewed the Respondent’s website, it contained sponsored listings for “Cheap Warmachine” (at “www.giftsforgeeks.co.uk”) as well as other listings for modeling supplies. The Panel notes theses listings are also for entities who are likely to be competitors of the Complainant. On this same occasion when the Panel viewed the Respondent’s website the categories of “related searches” included “board games” and “battleship”. When these categories are selected, further sponsored listings for entities who are likely to be competitors of the Complainant appear.

The Complainant contends that the use of the disputed domain name in this way cannot be considered a bona fide offering of goods or services under the Policy. The Complainant further contends that the Respondent is making commercial, unfair use of the disputed domain name with intent for commercial gain. It is well established that landing pages with sponsored listings built around or relying on a trademark (compared to landing pages built around a dictionary term) do not constitute a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy, nor do they constitute a legitimate non-commercial or fair use under paragraph 4(c)(iii) of the Policy (see mVisible Technologies, Inc v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141 and Ford Motor Company v. Domain Administrator, WIPO Case No. D2008-1856). That is clearly the case here, as “forgeworld” is not a term with an ordinary meaning, but rather is a trademark in which the Complainant has held registered rights since 1999.

By failing to submit a Response, the Respondent has not provided any explanation as to why it selected or registered the disputed domain name. All the evidence available to the Panel suggests that the Respondent selected and is using the disputed domain name because it is identical to the Complainant’s brand and trademarks for FORGEWORLD, which has potential to generate a significant amount of Internet traffic by mistake due to user confusion. This is not bona fide, or legitimate or fair use within the meaning of paragraph 4(c) of the Policy.

Moreover, the Panel is able to draw the inference that the Respondent has no rights to or legitimate interests in the disputed domain name based on the Respondent’s failure to respond to the Complainant’s allegations. See for example, Geocities v. Geociites.com, WIPO Case No. D2000-0326 and Pavillion Agency, Inc. v. Greenhouse Agency Ltd., WIPO Case No. D2000-1221, where the respondents’ failure to respond was construed as an admission that they had no legitimate interest in the domain names.

On balance, without any response from the Respondent as to the circumstances in which it registered the disputed domain name and its reasons for doing so, the Complainant has made a prima facie case that has not been rebutted by the Respondent and the Panel finds that the second element has been met.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy enumerates several circumstances which if found by a panel shall be evidence of registration and use of a disputed domain name in bad faith.

The exact date of registration of the disputed domain name by the Respondent is unknown. However the Complainant sets out a timeline in relation to registration of the disputed domain name:

- December 8, 1998 - initial registration of the disputed domain name by the Complainant (the Panel notes that there is no evidence that the Complainant was this registrant, however this date appears correct);

- January or February 2008 - registration of the disputed domain name by Admin, Domain (the Panel notes that there is no evidence that this date is correct, however Admin, Domain did own the disputed domain name at least in November 1998 (the date of the previous UDRP proceedings));

- sometime between November 27, 2008 (the date of the previous UDRP proceedings against Admin, Domain) and January 5, 2010 (the date at which the Complainant first became aware of the current Respondent) - registration of the disputed domain name by the Respondent (the Panel notes that both dates are supported by evidence, the first by the UDRP decision and the second by a WhoIs search).

The Panel further notes that the Registrar was unable to provide the date of registration of the disputed domain name as “the domain was transferred to Rebel.com”. Based on the explanation and evidence provided by the Complainant, the Panel is prepared to accept that the disputed domain name was registered by the Respondent sometime between November 27, 2008 and January 5, 2010.

The Complainant contends that the Respondent must have been aware of the Respondent when registering the disputed domain name due to the fact that the range of Forge World products have been available worldwide since 1999. Furthermore, the Complainant contends that such view is supported by the fact that the Respondent uses the Complainant’s other trademarks (including WARHAMMER) on its website (however this could be the result of an advertising algorithm). The Panel finds that the name “Forgeworld” is an unusual combination of words (as discussed in Games Workshop Limited v. Admin, Domain, WIPO Case No. D2008-1321) such that this, combined with the content on the Respondent’s website leads to the conclusion that the Respondent had knowledge of the Complainant and its rights when it registered the disputed domain name. This is further supported by the fact that the disputed domain name was registered well after the date of registration of the Complainant’s trademarks.

It is well established that landing pages with sponsored listings built around or relying on a trademark is considered evidence of bad faith (Hoffman-La Roche Inc. v. Carolyn Mardis, WIPO Case No. D2009-1717, Volvo Trademark Holding AB v. Unasi, Inc, WIPO Case No. D2005-0556, National City Corporation v. MH Networks LLC, WIPO Case No. D2004-0128 and Fiat S.p.A.and Fiat Group Automobiles S.p.A. v. Antonia Esposito, WIPO Case No. D2007-1868). There are no circumstances relevant to the Respondent’s website which preclude the same finding.

The Panel finds that by using the Complainant’s widely known mark in the disputed domain name, the Respondent has attempted to attract, for commercial gain, users to its website with the intent of creating a likelihood of confusion with the Complainant’s mark and its affiliation with the Respondent’s website. The Respondent receives a “commercial gain” via the revenue it receives for the sponsored listings advertised on the website resolving from the disputed domain name. This conduct is an example of registration and use of the disputed domain name in bad faith under 4(b)(iv) of the Policy (see Mastercard International Incorporated v. Paul Barbell, WIPO Case No. D2007-1139, Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp., WIPO Case No. D2010-1404 and Su Kutusu İçme Suyu Teknolojileri Pazarlama Sanayi ve Ticaret A.Ş. v. Nyunhwa Jung, WIPO Case No. D2009-0976).

On the evidence available to it, the Panel finds that the Respondent registered and used the disputed domain name in bad faith.

Accordingly, the third element has been met.

8. Decision

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, <forgeworld.com> be transferred to the Complainant.

John Swinson
Sole Panelist
Dated: December 21, 2010

 

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