World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Jagex Limited v. Hao Chen, THS International, Inc., Wu Chen, WhoisGuard Protected, Usfine Electron & Information Co., Ltd, Tang Zaiping

Case No. D2011-0958

1. The Parties

The Complainant is Jagex Limited of Cambridge, United Kingdom of Great Britain and Northern Ireland, represented by Adlex Solicitors, United Kingdom.

The Respondents are Hao Chen, THS International, Inc. of Anhui, China, Wu Chen of Anhui, China, WhoisGuard Protected of California, United States of America, Usfine Electron & Information Co., Ltd, Tang Zaiping of Anhui, China, represented by Traverse Legal, PLC, United States of America.

2. The Domain Names and Registrars

The disputed domain names <buy-rsgold.com>, <gold4rs.com> and <runescapesell.com> are registered with GoDaddy.com, Inc.

The disputed domain name <gold4rs.biz> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2011. On June 7, 2011, the Center transmitted by email to GoDaddy.com, Inc. and eNom a request for registrar verification in connection with the disputed domain names. On the same date, eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name <gold4rs.biz> which differed from one of the named Respondent and contact information in the Complaint. On June 8, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Wu Chen is the Respondent listed as the registrant for the disputed domain name <buy-rsgold.com> and providing the contact details and that Hao Chen is the Respondent listed as the registrant for the disputed domain names <gold4rs.com> and <runescapesell.com> and providing the contact details.

The Center sent an email communication to the Complainant on June 14, 2011 providing the registrant and contact information disclosed by the Registrar eNom and inviting the Complainant to file a separate Complaint for the disputed domain name <gold4rs.biz>, and file a short amendment to drop said separately-filed domain name from the Complaint or provide the Center with a brief amendment to the Complaint, adding the name of the disclosed registrant of the domain name <gold4rs.biz> as a formal Respondent and demonstrating that the registrants for all the disputed domain names are, in fact, the same entity. The Complainant filed an Amended Complaint on June 17, 2011 adding the revealed registrant as Respondent and an argument that for reasons such as redirection to the same website and location that the registrants are indeed the same entity.

In response to an email communication, dated June 20, 2011, advising the parties about the expiration date of the disputed domain name <gold4rs.biz> sent by the Center, the Complainant on the same date, sent an email communication to the Center to indicate that the Complainant renewed such domain name on June 16, 2011.

The Center verified that the Complaint together with the Amended 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 June 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 11, 2011. The Response was filed with the Center on July 9, 2011.

The Center appointed John Swinson as the sole panelist in this matter on July 25, 2011. 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.

On July 26, 2011 the Complainant filed a Supplemental Filing. On July 30, 2011, the First Respondent (Hao Chen) filed a Supplemental Filing requesting a denial to transfer all the disputed domain names to the Complainant.

4. Factual Background

The Complainant is Jagex Limited, a company incorporated under the laws of England and Wales on April 28, 2000. The Complainant carries on the business of designing, developing and operating online computer games. One of the Complainant’s products is a game known as “RuneScape” which is a large online computer game in which players undertake tasks and interact with each other in themed, evolving virtual worlds. The Complainant owns various registered trade marks for RS and RUNESCAPE.

The Respondents are Hao Chen, THS International, Inc., Wu Chen, WhoisGuard Protected, Usfine Electron & Information Co., Ltd and Tang Zaiping.

The disputed domain names were registered on March 19, 2006 (<gold4rs.com>), December 21, 2006 (<runescapesell.com>), February 13, 2009 (<buy-rsgold.com>) and June 26, 2010 (<gold4rs.biz>).

Noting Complainant’s arguments, the Panel will treat all named Respondents as properly included in this proceeding, as described further below.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following submissions:

Identical or Confusingly Similar

The Complainant owns a community trade mark for the term, RS. The trade mark was filed on May 22, 2006 and registered on May 10, 2007. The Complainant also owns an international portfolio of trade marks for the term RUNESCAPE, including a community trade mark filed on November 25, 2002 and registered August 27, 2004, a United Kingdom registered trade mark dated December 27, 2002, a United States registered trade mark dated April 6, 2004 and a China registered trade mark dated September 14, 2009.

The Complainant also contends that it has unregistered rights in the terms RS and RUNESCAPE for the following reasons:

the Complainant owns the domain name, <runescape.com>;

the game, “RuneScape” was launched in January 2001 at <runescape.com>;

the game is widely referred to as “RS” and the Complainant has used the term to refer to the game since at least 2003;

a Google search for “RS” retrieves the Complainant’s website in fourth place;

“RS” is used by the public to search for, and refer to, the Complainant’s game;

in August 2008 the game was awarded a Guinness World Record for the most popular free “massively multiplayer online role-playing game” (“MMORPG“) with 10 million total registered users;

millions of people have registered to play the game and there are millions of active players;

the Complainant’s website for the game receives significant traffic with many people viewing and using the Complainant’s website; and

the Complainant’s turnover over the period 2002 - 2010 was approximately 171 million pounds.

Therefore, by virtue of these activities and reputation, the Complainant has acquired substantial goodwill in the terms RS and RUNESCAPE such that they are recognized by the public as distinctive of the Complainant’s services.

Moreover, the Respondents used the websites to target, profit from and damage the Complainant’s game. The Respondent used the terms “RS” and “Runescape” interchangeably to refer to the game and as such, this activity presupposes that the game is widely known as, and identified by, both names.

Finally, the Complainant’s trade mark rights in the terms have been accepted in a number of UDRP disputes. For example, in Jagex Limited v. can wang, Wu Chen, WIPO Case No. D2010-0680, the panel stated that “RS, the Complainant’s trademark, … has acquired distinctiveness and fame as shown by a third party rankings.”

Further the disputed domain names are confusingly similar to the Complainant’s trade marks. Three of the disputed domain names wholly incorporate the trade mark RS. In two instances the only difference between the disputed domain name and the Complainant’s trade mark in RS is the addition of the “gold4” prefix to the term RS. In the other instance the only change is the addition of the “buy-“ prefix and “gold” suffix. The term RS remains dominant in each disputed domain name and the additional words merely qualify and relate to the trade mark. These additional words fail to mitigate against the connection between the disputed domain names and the trade mark and in fact, reinforce this link as they connect the mark with “gold” which is the virtual currency of the game.

The fourth disputed domain name wholly incorporates the trade mark RUNESCAPE and differs only by the addition of the generic term “sell”. Again, the Complainant’s trade mark clearly dominates the disputed domain name.

The Complainant relies on numerous cases to support its argument that irrespective of the generic additions to the Complainant’s trade marks in the disputed domain names, the disputed domain names are nevertheless confusingly similar to the Complainant’s trade marks (e.g., see, Minnestoa Mining & Manufacturing v. JonLR, WIPO Case No. D2001-0428; Microsoft Corporation v. Serge Kovalev, WIPO Case No. D2005-0584, Jagex Limited v. can wang, Wu Chen, supra).

Rights or Legitimate Interests

The Respondents have not denied the assertion of lack of rights or legitimate interests in the Complainant’s pre-action communication.

The Complainant has no association with the Respondents and has never authorized or licensed the Respondents to use it trade marks.

The Respondents have clearly used the disputed domain names and the Complainant’s trade marks to attract, confuse and profit from Internet users seeking the Complainant and/or disrupt the business of a competitor and/or otherwise in bad faith. As such, the use of the disputed domain names cannot be considered to be bona fide.

There is no evidence that the Respondents have been commonly known by the names comprised in the disputed domain names.

It is clear that the Respondents intended to make a commercial gain from the use of the disputed domain names.

Registered and Used in Bad Faith

The Respondents’ activities

The Respondents have engaged in the following activities in connection with the websites:

extensively, persistently and knowingly reproduced copyright images from the game;

copied different versions of the header of the Complainant’s homepage including exact reproduction of game images;

used the websites to earn real money from cheating activities targeted at the game;

encouraged players to earn commission by referring other players to the Respondents for the purposes of its cheating activities;

misused the Complainant’s software and circumvented the Complainant’s updates in furtherance of its scheme; and

on at least one occasion, apparently diverted players to a game competing with the Complainant.

These activities are hugely damaging to the Complainant and to the game as:

players acquire virtual property and otherwise progress in the game by paying money to the Respondents rather than by spending time playing the game legitimately. As a result, the amount of subscription revenue received by the Complainant is diminished;

in the Complainant’s experience, these kinds of transactions are often accompanied by fraud and scams;

the Complainant’s support staff spend significant time unscrambling such illicit transactions (at a substantial cost to the Complainant); and

such activity demoralizes and disillusions genuine players of the game who do not cheat.

For those reasons, the Complainant’s terms and conditions bar such behaviour. The Respondents are subject to the Complainant’s terms and conditions as it obviously logs into the game on a frequent basis, including for the purpose of implementing its transactions and playing the game on behalf of other users. The Respondents are very well aware of the illicit nature of its activities as it warns users of the risk of being “caught” by the Complainant.

Further, the Respondents’ scheme is part of a pattern of misconduct by the Respondents in relation to the Complainant. Specifically, the Third Respondent was found in Jagex Limited v. can wang, Wu Chen, supra, to have acted in bad faith for:

operating a forum encouraging users to participate in private servers, and offering advice and help on enabling users to create unauthorized copies of the RuneScape game by removing copyright protection from, and copying, the game’s code;

directing site visitors to direct competitors of the Complainant; and

distributing a macro program which automated certain functions within the game, thereby reducing the amount of time users spent legitimately playing the game and diminishing the Complainant’s subscription revenue.

The Respondent also owns another domain name <maple-storygame.com> which reflects and targets the trade mark of the MMORPG “Maple Story”.

Disrupting competitor

The Respondents registered the disputed domain names for the purpose of disrupting the Complainant’s business by attracting the Complainant’s customers to its websites which engaged in the above-mentioned unlawful, infringing and damaging activities.

Importantly, the Respondents are competitors for the following reasons:

it is acting in opposition to the Complainant (see Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279); and/or

it is operating in the same field of commerce as the Complainant.

See also MySpace, Inc. v. Myspace Bot, NAF Claim No. 672161 (May 19, 2006).

Likelihood of confusion

The websites operating from the disputed domain names demonstrate the Respondents’ intention to confuse, attract and profit illicitly from Internet users who are seeking the Complainant’s business. This allegation was not denied by the Respondents in pre-action correspondence.

The disputed domain names were clearly registered for the purpose of targeting the Complainant’s game and so the Respondents were necessarily aware of the Complainant and its business when it registered the disputed domain names.

The use of the disputed domain names is intended by the Respondents to create a likelihood of confusion in the minds of the public as to an association between the Respondents and the Complainant. Furthermore, the Respondents have imitated the headers from the homepage of the Complainant’s site and has extensively utilised images from the game, thereby adding to likely confusion on the part of Internet users.

The likelihood of confusion is not mitigated by the possibility that at some point users arriving at the Respondents’ sites may realize that the site is not connected with the Complainant. Paragraph 4(b)(iv) of the Policy is concerned with the intentional attracting of Internet users. (See, e.g., National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net, WIPO Case No. D2000-0118; Jardine Motors Group Holdings Limited v. Zung Fu Kuen, WIPO Case No. D2004-0168.)

Further, It is obvious from its websites that the Respondents were intent upon commercial gain. The Respondents set out to profit at the Complainant’s expense by means of its illicit cheating activities.

In Jagex Limited v. THS ROBOT, NAF Claim No. 1152990 (April 17, 2008), similar activities to those in this case, including use of the Complainant images and sale of game virtual items, constituted registration and use in bad faith under paragraph 4(b)(iv).

Other factors

The Complainant contends that the Respondents’ activities, itemised above, constitute bad faith independently of the non-exhaustive factors in paragraph 4(b).

In addition, the Complainant relies on the fact that the Respondents have not responded to, let alone denied, the assertions of bad faith in the pre-action communications by the Complainant.

The Complainant also submits that bad faith is evidenced by the Respondents’ use of a variety of names, addresses and email addresses, which appear to be designed to conceal the Respondents’ real identity and obstruct the Complainant.

B. Respondent

The First Respondent makes the following submissions:

Identical or Confusingly Similar

Ownership of a trade mark or service mark does not necessarily give a complainant the exclusive right to the descriptive name in all contexts (Computer Connection v. Gamble Parts Dart, Inc., WIPO Case No. D2001-0783). Even though the Complainant owns registered trade marks in RS and RUNESCAPE, the Complainant has failed to show that the public associates the term with it as an indication of source (Baltimore Gas and Electric Company v. National Material Supply Co., LLC, WIPO Case No. D2001-0315).

Further, panels have recognized that a complainant must use an abbreviation in a trade mark sense for it to obtain trade mark rights in the abbreviation. The evidence submitted by the Complainant does not show that it has used the term RS as a trade mark.

UDRP panels have also found that complainants cannot monopolise the use of generic terms and common words in domain names. Further, generic words or common terms cannot give rise to trade mark rights.

Therefore, as the Complainant has not made use of the term RS as a trade mark, despite having a trade mark registration for the term, the Complainant cannot prohibit the Respondent’s use of the term in the relevant disputed domain names and as such, the three disputed domain names incorporating the term RS are not identical or confusingly similar to a trade mark in which the Complainant has rights.

Rights or Legitimate Interests

Even if the Complainant does have trade mark rights in the terms “RS” and “Runescape”, the Respondent has made a nominative fair use of the terms in the disputed domain names.

The Respondent is a legitimate provider of services that are ancillary and complimentary to the Complainant’s business. The Respondent is not a competitor of the Complainant.

The Respondent submits that it satisfies the Oki Data factors and as such the Respondent has legitimate interests in the disputed domain names (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). The Respondent uses the Complainant’s trade mark to accurately describe its business and as such, the Respondent’s use of the Complainant’s trade marks is bona fide. Where a respondent only provides goods or services ancillary to the trade mark holder’s goods and services, a respondent will have rights and legitimate interests in and to the domain name in question.

The services offered by the Respondent at the disputed domain names do not deny the Complainant any subscription revenue for their game. In fact, the Respondent’s services allow more Internet users to play the Complainant’s game and as such, increase the Complainant’s revenue. Therefore, the Respondent’s services are in no way competitive with the Complainant and its services.

Further, the Respondent’s websites prominently and clearly display that they are owned by THS International, Inc and “gpseller.com”, respectively. Therefore, no reasonable person, upon arriving at one of the disputed domain names, would believe that the disputed domain names are owned by, or connected with, the Complainant.

Moreover, the Respondent has not attempted to corner the market in all relevant domain names. The Complainant, not the Respondent, owns the trade marked term “Runescape” and all relevant generic and country code top-level domain names.

The Respondent has made a nominative fair use of the Complainant’s RUNESCAPE trade mark and the Complainant’s alleged RS trade mark in the disputed domain names to provide bona fide services ancillary to the Complainant’s services.

Finally, the Respondent is commonly known by the disputed domain names as is evidenced by Google searches for the relevant terms such as “gold4rs”.

Therefore, the Respondent has rights and legitimate interests in the disputed domain names.

Registered and Used in bad Faith

The Complainant has not established that the Respondent registered and used the disputed domain names in bad faith.

The Respondent registered the disputed domain names in good faith. Further, to the extent that the disputed domain names incorporate the Complainant’s trade marks, the Respondent has made a nominative fair use of those marks. UDRP panels have held that where a respondent meets the Oki Data test, the Respondent has made a nominative fair use of the relevant domain name and has not used the domain name in bad faith (see e.g., ITT Manufacturing Enterprises, Inc., ITT Corporation v. Douglas Nicoll, Differential Pressure Instruments, Inc., WIPO Case No. D2008-0936). Therefore, the Respondent’s registration and nominative fair use of the disputed domain names to sell services ancillary to the Complainant’s services cannot have been in bad faith.

The Complainant made allegations of copyright infringement and violations of the Complainant’s Terms of Use Agreement and Digital Millennium Copyright Act against the Respondent. Such allegations are not relevant to the current proceedings and fall outside the scope of the Panel’s jurisdiction. The Complainant is attempting to hijack the disputed domain names by clothing a breach of contract claim in the robes of trade mark law.

The Complainant’s contention that the Respondent registered the disputed domain name for the purpose of unfairly disrupting the business of the Complainant and to attract users to the Respondent’s websites for commercial gain through the creation of the likelihood of confusion with the Complainant’s services, defies logic. The Respondent would not have a business if not for the Complainant’s business. Moreover, the consumers are not confused into believing that the Complainant provides, sponsors, endorses, or is affiliated with the Respondent’s services. The Respondent maintains a clear statement at its websites that its websites are owned by THS International, Inc and “gpseller.com”, respectively.

The Complainant argues that the Respondent has created “initial interest confusion” through its use of the disputed domain names which evidences registration and use in bad faith. However, this is a doctrine of United States law and the parties are English and Chinese. In any event, the doctrine is inapplicable here as the Respondent has not registered a typographical error of the Complainant’s alleged trade marks and the average Internet user is unlikely to perceive the Respondent’s disputed domain names as originating with the Complainant.

The Complainant has attempted to prohibit the Respondent from participating in a legitimate business that generates between USD 200 million and USD 1 billion annually. Since the Respondent’s business is both legitimate and legal under Chinese law, the Complainant has filed a UDRP proceeding in an attempt to harm the Respondent’s business and hijack the Respondent’s disputed domain names, instead of asserting claims of breach of contract, anti-circumvention and copyright infringement in a court of appropriate jurisdiction.

As such, the Complainant’s request to transfer the disputed domain names must be denied.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated 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. Procedural Issues

Numerous Defendants

The Complainant made extensive submissions that the Respondents are the same person and not distinct persons or entities. It is not necessary for the Panel to specifically decide whether there is one or more than one actual respondent. However, the Panel does find that given the similarity of the disputed domain names, the similar look, feel and function of the websites operating from the disputed domain names, the fact that all contact details for the registrants of the disputed domain names are the same or similar address in China, and that a number of the Respondents did not file a response objecting to the consolidated Complaint, it is proper to deal with all disputed domain names together in this proceeding.

Supplemental Filings

The Complainant and First Respondent filed supplementary material. There is no obligation on the Panel to consider this information and it is at the Panel’s discretion as to whether it wishes to consider these filings. The Panel finds that the information contained in the Supplemental Filings does not add anything new to the parties’ cases and as such, the Panel has not considered this information when making its finding.

Delay

The Complainants delayed in bringing these proceedings. Delay in filing proceedings does not of itself prevent a complainant from succeeding (see e.g. Board of Trustees of the University of Arkansas v. FanMail.com, LLC, WIPO Case No. D2009-1139). Here, the Panel does not find that delay is a determinative factor. The Complainant provided reasons for this delay and the Panel is satisfied with these reasons.

Failure to File Response

Only the First Respondent filed a Response. Although, some or all of the Respondents may be related, the remaining Respondents did not file a response specific to their circumstances or jointly with the First Respondent.

The Panel notes that a failure to file a Response does not automatically result in a decision in favor of the Complainant (see e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413; M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941; Mancini’s Sleepworld v. LAKSH INTERNET SOLUTIONS PRIVATE LIMITED, WIPO Case No. D2008-1036; Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383). However, the Panel may draw appropriate inferences from a respondent’s default.

B. Identical or Confusingly Similar

As identified above, the Complainant has registered trade marks for RUNESCAPE and RS in various jurisdictions.

Further, although it was not necessary to do so in relation to the first element, the Complainant has put forward extensive evidence to suggest that it has common law rights in the terms RUNESCAPE and RS. In order to establish common law trade mark rights, the Complainant must show that the name has become a distinctive identifier associated with the Complainant or its goods and services. The decision in Fairview Commercial Lending, Inc. v. Aleksandra Pesalj, WIPO Case No. D2007-0123, is instructive when considering whether “secondary meaning” has been established and sets out the factors to consider such as, inter alia, length and amount of sales under the trade mark, nature and extent of advertising and media recognition. The Panel finds that the Complainant does have common law trade mark rights in the terms, RUNESCAPE and RS, given its extensive and comprehensive use of the term over a lengthy period of time and its strong reputation.

For the Complainant to succeed in this element, it must show that the disputed domain names are identical or confusingly similar to the Complainant’s trade marks.

The disputed domain names contains the terms “RS” and “Runescape” and generic terms related to MMORPGs. As such, the Panel concludes that each of the disputed domain names is confusingly similar to the Complainant’s registered trade marks. The inclusion of other words in the disputed domain names does nothing to alleviate this confusion given the distinctive nature of the trade marks and that the trade marked terms remain the dominant components of the disputed domain names. These additional terms are generic in nature and as such, are not sufficient to differentiate the disputed domain names from the Complainant’s trade marks.

The Panel agrees with the comments of the panel in Jagex Limited v. can wang, Wu Chen, supra that considers similar issues.

Therefore, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trade marks and as such, paragraph 4(a)(i) of the Policy is satisfied.

C. Rights or Legitimate Interests

The Policy provides that a complainant must establish a prima facie case that a respondent has no rights or legitimate interests in the disputed domain name. The Respondent must then rebut this presumption. Pursuant to paragraph 4(c) of the Policy, there are a number of ways in which a respondent may demonstrate rights or legitimate interests in the disputed domain names.

Here, the Complainant has succeeded in establishing a prima facie case that the Respondents have no rights or legitimate interests in a disputed domain name.

The Respondents have failed to rebut this prima facie case. The First Respondent relied on the test set out in Oki Data Americas, Inc. v. ASD, Inc., supra, in order to establish that it has legitimate interests in the disputed domain names. However, a prerequisite for applying the Oki Data test is that the person be “an authorised sales or service agent of trademarked goods” (Oki Data Americas, Inc. v. ASD, Inc., supra). The Respondents do not satisfy this threshold matter and as such the Oki Data test cannot be relied upon in establishing legitimate interests on the part of the Respondents.

In any event, even if the Oki Data test was applicable, the Respondents have failed to satisfy the elements of that test. For example, despite the Respondents’ contentions, the Respondents have failed to disclose its relationship with the Complainant as trade mark owner on the relevant websites at the disputed domain names. Further, in directing Internet users to competitors of the Complainant, the Respondents cannot be said to use the site to sell the trade marked goods only.

Further, in light of the business the Respondents operate from the disputed domain names, the Panel does not agree with the submission that it is making a nominative fair use of the disputed domain names (see further, section 6D.).

Finally, the Respondents cannot rely on their current use of the Complainant’s trade marks and disputed domain names as the basis for becoming known by the disputed domain name. As stated in Madonna Ciccone p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847, “[t]o conclude otherwise would mean that a [r]espondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy”.

It is not a legitimate interest to use the Complainant’s trade marks to facilitate the sale of virtual goods and virtual currency used in the Complainant’s online game in a way that is contrary to the terms and conditions of use for that game.

Therefore, the Panel concludes that the Respondents do not have any rights or legitimate interests in the disputed domain name.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy enumerates several circumstances that are evidence of registration and use of a domain name in bad faith. However, these factors are not exhaustive.

Here, the Panel finds that the Respondents acted in bad faith.

Specifically, the Panel finds that the Respondents registered the disputed domain names primarily for the purpose of disrupting the business of the Complainant (Paragraph 4(b)(iii) of the Policy). The Panel agrees with the Complainant that the Respondents are in competition with and competitors of the Complainant. The Panel relies on the authorities set out in the Complaint, specifically, MySpace, Inc. v. Myspace Bot, supra, in making this finding.

Further, it is clear that the Respondents have registered and used the disputed domain names in bad faith as they have used the disputed domain names to intentionally attempt to attract, for commercial gain, Internet users to their websites, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondents’ websites or products or services on the websites (paragraph 4(b)(iv) of the Policy).

The Respondents profit from the business they operate and they are attempting to create confusion in the mind of Internet users by using the Complainant’s trade marks in the disputed domain names and attempting to imitate the look and feel of the Complainant’s website on the websites operating from the disputed domain names. This confusion the Respondents intend to induce in Internet users, facilitates them earning profit and revenue.

Moreover, the following factors are also indicative of bad faith on the part of the Respondents:

failure to respond to pre-trial correspondence and, in relation to several of the Respondents, failure to file a Response (see e.g., Advance Magazine Publishers Inc. v. Moniker Privacy Services, Registrant, Registrant info@fashionid.com / Registrant, WIPO Case No. D2009-0801);

providing links to competitor’s websites;

operating a business contrary to the policy and terms and conditions of the Complainant’s business and website of which the Respondents are subject;

engaging in a similar patterns of behavior in relation to the Complainant and other entities and businesses; and

causing damage to Complainant’s brand, goodwill, trade marks and services.

As such, the Panel finds that the Respondents registered and used the disputed domain names in bad faith.

E. Reverse Domain Name Hijacking

In view of the findings above in favour of the Complainant, the Panel makes no finding of reverse domain name hijacking.

7. 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 disputed domain names <buy-rsgold.com>, <gold4rs.com>, <runescapesell.com> and <gold4rs.biz> be transferred to the Complainant.

John Swinson
Sole Panelist
Dated: August 9, 2011

 

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