WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gamigo AG v. Protected Domain Services / Jose Eduardo Nuri
Case No. D2011-1863
1. The Parties
The Complainant is Gamigo AG of Hamburg, Germany, represented by Schulte Riesenkampff Rechtsanwaltsgesellschaft mbH, Germany.
The Respondent is Protected Domain Services / Jose Eduardo Nuri of Colorado, United States of America and of Santiago del Estero, Argentina, respectively.
2. The Domain Name and Registrar
The disputed domain name <extremelastchaos.com> (“the Domain Name”) is registered with Name.com LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 27, 2011. On October 31, 2011, the Center transmitted by email to Name.com LLC a request for registrar verification in connection with the Domain Name. On October 31, 2011, Name.com LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. With the same email, Name.com LLC forwarded to the Center an “Informative Filing”, being a document submitted by the privacy service provider, Protected Domain Services, which generally disclaimed any ownership of or interest in the Domain Name. The Center sent an email to the Complainant on November 3, 2011 providing the registrant and contact information disclosed by Name.com LLC, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint, adding Mr. Nuri as a Respondent, on November 7, 2011.
The Center verified that the Complaint together with the amendment to 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 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 1, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 2, 2011.
The Center appointed Warwick Smith as the sole panelist in this matter on December 8, 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.
4. Factual Background
The Complainant is a German corporation. It holds an exclusive license from the Korean company Barunson Games Corporation (“Barunson”), to publish online the German version of a video game called “Last Chaos”, in which the intellectual property rights are held by Barunson. The Complainant makes this game available through its websites at “www.gamigo.de” and “www.lastchaos.de”.
The Complainant is the registered proprietor of the word mark LAST CHAOS, in Germany, in international classes 9, 28, and 41, in respect of online games, computer games, and certain video games. The Complainant’s mark has been registered in Germany with effect from April 18, 2008.
The Respondent and the Domain Name
According to the available WhoIs information, the Domain Name was “created” on July 14, 2011. According to the Complainant, the Respondent stole or copied the source code for the server and client files of the German version of the game “Last Chaos”, and it is now operating a so-called pirate server using the name “extremelastchaos” in opposition to the Complainant. The Complainant says that the Respondent has no intellectual property rights in the expression “lastchaos”, or in any parts of the game’s software.
According to the Complainant, the Respondent has been offering cheaper or even free services through the website at the Domain Name, and has been deriving commercial gain from his use of the Domain Name by charging customers or by asking for “donations” from them, and/or by generating advertising income.
The Complainant did not produce with its Complaint any screenshot showing how the Respondent had been using the Domain Name. The Panel has been unable to access any website at the Domain Name.
5. Parties’ Contentions
The Complainant contends:
1. the Domain Name is confusingly similar to the Complainant’s LAST CHAOS registered mark. The addition of the word “extreme” is not enough to eliminate the similarity.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant relies on the following matters:
(i) the Complainant’s LAST CHAOS mark was registered in 2008, and the “Last Chaos” game was launched in Germany in that year.
(ii) The Respondent stole or copied the source code for the server and client files of the German version of the game, and is now providing the game, under the name “extremelastchaos”, in competition with the Complainant.
(iii) The Respondent has no intellectual property rights in respect of “Last Chaos”, or in any parts of the game’s software.
(iv) The Respondent has been attracting customers away from the Complainant, offering cheaper or even free services, thus ruining the business models of the Complainant and Barunson. The Respondent’s use of the Domain Name has been neither legitimate nor noncommercial.
3. The Domain Name was registered and is being used in bad faith. The Complainant relies on the following matters:
(i) the Respondent registered and created the Domain Name several years after the launch of the game “Last Chaos”, and after he had illegally obtained the files required to operate a pirate server.
(ii) the Respondent’s use of the Domain Name and the pirate server has been solely for the purposes of disrupting the business of the Complainant and Barunson, and gaining profit by creating a likelihood of confusion with the Complainant’s trademark (and with the game which is marketed under that mark).
(iii) the operation of the Respondent’s servers running pirated software is illegal, and there is not even the slightest chance of a legitimate and rightful use of the Domain Name by the Respondent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. What the Complainant must prove under the Policy – General
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent’s failure to comply with the Rules (e.g. by failing to file a response), as the Panel considers appropriate.
B. Identical or Confusingly Similar
The Complainant has proved this part in its Complaint. It is the registered proprietor of the word mark LAST CHAOS in Germany, and that mark is included in its entirety in the Domain Name. Numerous WIPO UDRP panels have found that the incorporation of the complainant’s registered mark in a disputed domain name may be sufficient to establish confusing similarity for the purposes of the Policy – see, for example, Nokia Group v. Mr Giannattasio Mario, WIPO Case No. D2002-0782, and the decisions referred to at pp 4-5 of the decision in that case.
The confusing similarity caused by the inclusion of the Complainant’s mark in the Domain Name is not removed by the addition of the word “extreme”. That is merely a descriptive expression, suggestive of a different version of the “Last Chaos” game which is more “extreme”. The dominant part of the Domain Name remains the expression “Last Chaos”, and the Panel is satisfied that the visual, aural, and conceptual similarities between the Domain Name and the Complainant’s LAST CHAOS mark are sufficient to meet the “confusingly similar” test prescribed by paragraph 4(a)(i) of the Policy.
The “.com” suffix is not taken into account by this Panel in the comparison required by paragraph 4(a)(i) of the Policy, because, according to the consensus view on this issue, the applicable top-level suffix in the domain name would usually be disregarded under the confusing similarity test (see paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The consensus view of WIPO UDRP panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized at paragraph 2.1 of the WIPO Overview 2.0, as follows:
“… 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 burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
In this case, the Domain Name is confusingly similar to the Complainant’s LAST CHAOS mark, and the Complainant has not authorized the Respondent to use that mark, whether in a domain name or otherwise. There is nothing in the evidence to suggest that the Respondent, or any business or other organization owned by the Respondent, might be commonly known by the Domain Name, and therefore there is no possibility of a defense under paragraph 4(c)(ii) of the Policy. Nor is there anything to suggest that the Respondent may have been making a legitimate noncommercial use of the Domain Name, of the kind with which paragraph 4(c)(iii) of the Policy is concerned.
The foregoing circumstances sufficiently establish a prima facie case of “no rights or legitimate interests”, so the burden of production shifts to the Respondent. As the Respondent has not filed a Response, that burden has not been discharged, and, in the Panel’s view, the Complainant therefore succeeds on proving that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances include:
(iii) the respondent having registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; and
(iv) by using the disputed domain name, [the respondent having] intentionally attempted to attract, for commercial gain, Internet users to [the 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 respondent’s] website or location.
“Last Chaos” is not a commonly encountered combination of words in the English language – one does not normally describe a state of “chaos” in relative temporal terms, whether “first”, “last”, or anywhere in between. It is the kind of expression one would expect to see used as a trademark or service mark, if one encountered it at all. In those circumstances the Panel considers it unlikely that the confusing similarity between the Domain Name and the Complainant’s LAST CHAOS mark has arisen purely by chance. In the absence of any Response, the appropriate inference is that the Respondent was aware of the LAST CHAOS game and mark when it registered the Domain Name.
If the Respondent was aware of the LAST CHAOS game, the Respondent must have appreciated that Internet users familiar with that game would be likely to assume that any website at the Domain Name would be operated or endorsed by Barunson or the Complainant – the expression “extreme last chaos” is too similar to the LAST CHAOS mark to admit of any other sensible conclusion. If the Respondent did appreciate that, it can be inferred that it has intended to create that false impression.
Furthermore, the Complainant says (and the Respondent does not deny) that the Respondent has been using the Domain Name for the purpose of publishing online a video game which is either identical or very similar to the Complainant’s LAST CHAOS game. That additional similarity makes it inconceivable that the Respondent could have registered the Domain Name without being aware of the LAST CHAOS game marketed by the Complainant and Barunson. The Complainant also alleges (and the Respondent does not deny) that the Respondent has been targeting German language players of “Last Chaos”. Such use implies that the Respondent was specifically aware of the Complainant’s version of the game when the Domain Name was registered.
In the foregoing circumstances, it was clearly incumbent on the Respondent to explain its choice of the Domain Name if it had any innocent explanation for its choice. The Respondent has elected not to provide any explanation.
As for the Respondent’s use of the Domain Name, the Respondent has elected not to respond to allegations of illegal copying of software and operating a “pirate” website using intellectual property allegedly owned by Barunson or the Complainant. Those were serious allegations, and one would have expected that if the Respondent had answers to them, those answers would have been provided in a Response filed in the proceeding. No such answers were provided.
The Respondent has not denied the Complainant’s contention that it has been operating a website at the Domain Name for commercial gain.
Under paragraph 14(b) of the Rules the Panel may draw such inferences from the Respondent’s failure to file a Response as the Panel considers appropriate, and in this case the obvious inference for this Panel is that the Respondent did not file a Response because it had no answer to the Complaint, including the allegation that it registered the Domain Name, and has been using it, in bad faith.
The precise kind of bad faith registration and use to be attributed to the Respondent is a little difficult to identify, particularly as the Complainant has not provided any screenshots of the website to which the Domain Name has resolved, and no website is now accessible at the Domain Name. However in the absence of a Response the Panel is satisfied that the Respondent probably registered (and has been using) the Domain Name for one or both of the bad faith purposes described at paragraphs 4(b)(iii) and 4(b)(iv) of the Policy. It is not necessary to determine which of those subparagraphs apply, or whether both do.
The Complainant having proved each element of its case, the Domain Name must be transferred to the Complainant.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <extremelastchaos.com> be transferred to the Complainant.
Dated: December 15, 2011