WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Gravity Co., LTD. and Gravity Interactive, Inc. v. Domain Privacy Service FBO Registrant / Junior Silva

Case No. D2021-2648

1. The Parties

The Complainant is Gravity Co., LTD. (the “First Complainant”), Republic of Korea, and Gravity Interactive, Inc. (the “Second Complainant”), United States of America (“United States”), represented by LUCEM, PC, United States.

The Respondent is Domain Privacy Service FBO Registrant, United States / Junior Silva, Brazil.

2. The Domain Name and Registrar

The disputed domain name <roorigin.com> is registered with Domain.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2021. On August 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 13, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 25, 2021 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 August 27, 2021.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 16, 2021. On August 31, 2021, the Respondent sent an email to the Center, but did not submit any formal response. Accordingly, the Center notified the Parties of commencement of panel appointment process on October 6, 2021.

The Center appointed John Swinson as the sole panelist in this matter on December 1, 2021. 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 First Complainant is a company from South Korea and is listed on NASDAQ. The Second Complainant is a company with an office in California, United States. In this decision, both the First Complainant and the Second Complainant will be referred to as the Complainant.

The Complainant is a global online game company that developed an MMORPG game called “Ragnarok Online” based on Norse mythology. This game was released 2002.

The Complainant launched the game “RAGNARÖK ORIGIN” in July 2020 for Korean users, in June 2021 for Japanese users, and then in October 2021 for United States users. The Complainant’s RAGNARÖK ORIGIN game website for United States users is located at <ragnarok-origin.com>.

The First Complainant owns over 100 trademark registrations and applications for “RAGNAROK” in connection with online and mobile games, including but not limited to United States Trademark Registration No. 2882208 for “RAGNAROK”, issued September 7, 2004, United States Trademark Registration No. 3405849 for “RAGNARÖK RAGNAROK ONLINE”, issued April 1, 2008; Republic of Korea Trademark Registration No. 1726522 for “RAGNARÖK ORIGIN”, issued May 11, 2021; and United States Trademark Application No. 90772831 for “RAGNARÖK ORIGIN”, filed June 14, 2021.

The Respondent did not file a response, so little is known about the Respondent. From information provided to the Center by the Registrar, the Respondent has an address in Brazil.

The disputed domain name was registered on February 12, 2021.

At the date of this decision, the disputed domain name resolves to a website that has the title “RO: Origin (Ragnarok) Website”. That website displays the Complainant’s logo and appears to provide a version of the Complainant’s online game “RAGNARÖK ORIGIN”.

5. Parties’ Contentions

A. Complainant

In summary, the Complainant makes the following submissions:

The First Complainant owns over 100 trademark registrations and applications for “RAGNAROK” in connection with online and mobile games, including those set out above in section 4.

It has recently come to the Complainant’s attention that the Respondent registered the disputed domain name and provides unauthorized and pirated version of the Complainant’s game “RAGNARÖK ORIGIN”. The disputed domain name is confusingly similar to the Complainant’s trademark and official domain name <ragnarok-origin.com>.

The disputed domain name is confusingly similar to the Complainant’s trademark “RAGNARÖK ORIGIN” as it incorporates the significant portions of the Complainant’s trademark, particularly the first letter of the trademark “R” and an emphasis on the “O” (almost shorthand for either Ragnarok or Ragnarok Online), and the second term “ORIGIN”. Moreover, the contents at the disputed domain name are pirated copies of the Complainant’s game and thus, infringe numerous intellectual property rights of the Complainant, including Complainant’s trademarks and copyrights.

The Respondent is using the disputed domain name to produce unauthorized and pirated copy of the Complainant’s game “RAGNARÖK ORIGIN” and illegally divert consumers to its website for profit.

Given that the Respondent is using the disputed domain name to promote and provide the unauthorized and pirated copy of the Complainant’s game “RAGNARÖK ORIGIN”, the Respondent cannot legitimately assert that it was unaware of the Complainant and Complainant’s trademarks.

The Respondent is misleading and diverting consumers to visit its disputed domain name and download unauthorized and pirated copies of the Complainant’s game that uses the Complainant’s RAGNARÖK ORIGIN trademark (via filelockers known to be used for software piracy) without any authorization or permission from the Complainant.

The disputed domain name infringes Complainant’s trademark RAGNARÖK ORIGIN and other trademarks. Given that the Respondent is using the disputed domain name to promote and provide the unauthorized and pirated copy of the Complainant’s game “RAGNARÖK ORIGIN”, the Respondent registered and is using the disputed domain name in bad faith.

B. Respondent

The Respondent did not file a formal response. The Respondent sent an email to the Center that stated:

“You can proceed with the complaint. We do not want to fight or waste any more of your time and ours over a domain. No worries, thanks in advance. Junior”

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, namely:

(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, even where the Respondent does not file a formal response.

An asserting party needs to establish that it is more likely than not that the claimed fact is true. An asserting party cannot meet its burden by simply making conclusory statements unsupported by evidence. To allow a party to merely make factual claims without any supporting evidence would essentially eviscerate the requirements of the Policy as both complainants or respondents could simply claim anything without any proof. For this reason, UDRP panels have generally dismissed factual allegations that are not supported by any bona fide documentary or other credible evidence. Snowflake, Inc. v. Ezra Silverman, WIPO Case No. DIO2020-0007; Captain Fin Co. LLC v. Private Registration, NameBrightPrivacy.com / Adam Grunwerg, WIPO Case No. D2021-3279.

Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The first element of the Policy requires the Complainant to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

As stated above in Section 4, the Complainant owns registered trademarks for RAGNAROK and RAGNARÖK ORIGIN.

The disputed domain name includes the word “origin” in its entirety and the addition of the letters “ro”. The Complainant asserts that “ro” could represent the initials of “RAGNARÖK ORIGIN” or could signify “Ragnarok Online”. However, the Complainant has not presented evidence that it is known by or has common law trademark rights in respect of the term “ro”. Contrast, for example, Royal Caribbean Cruises, Ltd. v. James Booth, BQDN.com, WIPO Case No. D2019-1042; Hiawatha National Bank v. Martha Coe, WIPO Case No. D2018-1946; Türkiye’nin Otomobili Girişim Grubu Sanayi Ve Ticaret Anonim Şirketi v. The Office of George Gould, WIPO Case No. D2021-1949; and ISL Marketing AG, and The Federation Internationale de Football Association v. J.Y. Chung, Worldcup2002.com, W Co., and Worldcup 2002, WIPO Case No. D2000-0034.

Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name. See, for example, Consumer Reports, Inc. v. Wu Yan, Common Results, Inc., WIPO Case No. D2017-0371.

Previous UDRP panels have also found domain names confusingly similar to a trademark for the purposes of the Policy where the domain name includes a dominant part of the trademark in the domain name. See, for example, 8848 Altitude AB v. Constance Siddiqui, WIPO Case No. D2017-2001. It is unclear whether “origin” is the dominant part of the Complainant’s trademark.

It is well established that the content of the Respondent’s website is an irrelevant factor when assessing confusing similarity under the first element of the Policy. The test is to be conducted by way of a side-by-side comparison of the Complainant’s trademark and the disputed domain name. Harry Winston Inc. and Harry Winston S.A. v. Jennifer Katherman, WIPO Case No. D2008-1267.

However, in rare and limited circumstances, it is permissible for the Panel to consider the website at the disputed domain name to gain an indication of the meaning of the dispute domain name. See Zippo Manufacturing Company v. Domains by Proxy, LLC and Paul Campanella, WIPO Case No. D2014-0995, cited with approval in VF Corporation v. Vogt Debra, WIPO Case No. D2016-2650.

In the present case, the Panelist reviewed the website at the disputed domain name and can draw the conclusion that the first letter in the disputed domain name is a reference to the Complainant’s trademark RAGNAROK.

In the circumstances, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s RAGNARÖK ORIGIN trademark. This is admittedly a close call.

After reaching the above conclusion, the Panelist became aware of another case in involving the same Complainant and a similar domain name, namely, <roorigin.asia>. In that case, the Panelist reached a similar conclusion, stating:

“Having regard to the context provided by the Respondent’s website, it appears clear that the disputed domain name targets the Complainant’s trademarks and users of the Internet or at least those interested in gaming are expected by the Respondent to associate the disputed domain name with the Complainant’s trademarks and game.” Gravity Co. Ltd., Gravity Interactive, Inc. v. Registration Private, Domains By Proxy, LLC / Zhang Xiaodong, WIPO Case No. D2021-2765.

This case is also evidence that other members of the gaming community, not just the Respondent, consider “roorigin” as referring to the Complainant’s game.

The Complainant succeeds on the first element of the Policy.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use 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) [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) [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 trademark or service mark at issue.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainant.

Previous UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent.

Accordingly, it is sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden of production will shift to the respondent to rebut that prima facie case.

The Complainant asserts that the Complainant has not authorized or permitted the Respondent to use the Complainant’s RAGNARÖK ORIGIN trademark, nor to register the disputed domain name.

The Complainant also asserts that there is no evidence that the Respondent has acquired any trademark rights in the RAGNARÖK ORIGIN name, or that the Respondent is commonly known by the disputed domain name.

Further, the Complainant asserts that the Respondent made a commercial use of the disputed domain name by operating a website to sell a pirated and unauthorized copy of the Complainant’s computer game. Such use is not bona fide, but rather, as asserted by the Complainant, misleads consumers into downloading a pirated version of the Complainant’s computer game. See Adobe Inc. v. Dmitrii Panin, WIPO Case No. D2021-0953; and Scottgames, LLC v. Domain Administrator, PrivacyGuardian.org / Kris Miranda, DTDAFF / Dang Ngo / Thuan Tran / Wiley Prince, DTD / Duong Ngo Huynh, DTD SOFTWARE CO., LTD / Fidel Vance, Spiritual, WIPO Case No. D2016-2372.

The Complainant has prior rights in the RAGNARÖK ORIGIN trademark, which precede the registration of the disputed domain name by the Respondent.

The Complainant has established a prima facie case that the Respondent does not have any rights or legitimate interests in the disputed domain name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the disputed domain name.

The Respondent informally responded that the Respondent does “not want to fight or waste any more of your time and ours over a domain”. This is not a statement that is likely made by a respondent who has rights or legitimate interests in a disputed domain name.

The Panel finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that none of the circumstances listed in paragraph 4(c) of the Policy apply in the present circumstances.

The Panel concludes the Respondent has no rights or any legitimate interests in the disputed domain name.

The Complainant succeeds on the second element of the Policy in relation to the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain name in bad faith.

In the present circumstances, the fact that the disputed domain name resolves to a website that promotes a pirated version of the Complainant’s computer game leads the Panel to conclude that the registration and use of the disputed domain name are in bad faith.

The Respondent’s conduct demonstrates the Respondent’s knowledge of the Complainant and its trademark. Registering the disputed domain name and then using the disputed domain name to market a pirated version of the Complainant’s software, demonstrates that the Respondent specifically knew of and targeted the Complainant.

The Panel finds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website under paragraph 4(b)(iv) of the Policy.

The Complainant succeeds on the third element of the Policy in relation to the disputed domain name.

7. Form of Order

The Complaint requested that the disputed domain name be transferred “to the Complainant”. However, the Complaint lists two Complainants, and does not specify to which entity the disputed domain name should be transferred.

The following passage from Ken Done, Ken Done & Associates Pty Limited and Ken Done Down Under Pty Ltd v. Ted Gibson, eResolution Case No. AF-0638 (2001) has been quoted with approval in a number of subsequent decisions, including Boot Royalty Company, L.P., Justin Brands, Inc. v. Bin Jiang, WIPO Case No. D2010-1536:

“no provision explicitly excludes a single Complaint brought by multiple related parties with a common interest in the Disputed Domain Name. In such cases, however, the complaining parties must be meticulous in delineating the relationships among the parties, the relevant trade mark ownership interests of each party, and each party’s stake in the remedy…”

In the Ken Done case, the complainant was unsuccessful for a number of procedural reasons, including “requesting an ambiguous remedy”. (See also National Hockey League And Lemieux Group Lp v. Domain For Sale, WIPO Case No. D2001-1185.)

In contrast, in some prior decisions, Panelists have simply ordered that the disputed domain name be transferred to both the complainants, without identifying which complainant. Sometimes, this is because the relevant trademark is owned jointly by the complainants. In other cases, this issue is simply not considered. See, for example, HUGO BOSS Trade Mark Management GmbH & Co. KG and Hugo Boss AG v. Ludwig Rhys, WIPO Case No. D2015-0280; Bennett, Coleman and Company Limited, Worldwide Media Private Limited v. Mr. Hubert Louis, WIPO Case No. D2019-0221; Springer Nature Holdings Limited, Springer Nature Limited v. Whois Privacy Protection Foundation / Nature Library LTD, WIPO Case No. D2020-2752.

In the circumstances of this case, the Panel does not consider it appropriate to deny the Complaint on the basis that the Complainants have not been clear about their respective interests or the remedy requested. The Panel considers it more appropriate and expedient in the circumstances of this case to transfer the disputed domain name to the First Complainant, who is the owner of the relevant trademarks.

8. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <roorigin.com> be transferred to the First Complainant.

John Swinson
Sole Panelist
Date: December 15, 2021