WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gravity Co. Ltd., Gravity Interactive, Inc. v. Registration Private, Domains By Proxy, LLC / Zhang Xiaodong
Case No. D2021-2765
1. The Parties
The Complainants are Gravity Co. Ltd., Republic of Korea (“Korea”) and Gravity Interactive, Inc., United states of America (“United States”), represented by LUCEM, PC, United States.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Zhang Xiaodong, China.
2. The Domain Name and Registrar
The disputed domain name <roorigin.asia> is registered with GoDaddy.com, LLC, (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2021. On August 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 24, 2021, the Registrar transmitted by email to the Center its verification response:
(a) confirming the disputed domain name is registered with it;
(b) disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint; and
(c) confirming that the language of the registration agreement was English.
The Center sent an email communication to the Complainant on August 30, 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 September 2, 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 September 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 28, 2021.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on October 4, 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 Complainant is an online and mobile gaming company listed on the NASDAQ. One of its products is the Ragnarok Online suite of massively multi-player online role playing games (MMORPG). The first edition of Ragnarok Online was released in 2002. More recently, it released Ragnarok Origin in Korea in July 2020 and in Japan in June 2021. At the time the Complaint was filed, Ragnarok Origin was open to pre-release registration in the United States.
The Facebook page for Ragnarok Online has almost 151,000 followers. According to a post on “mmorpg.com”, more than 400,000 people have pre-registered for the American release.
The Complaint includes evidence of numerous registered trademarks for or including RAGNAROK. These include by way of example:
(a) United States Registered Trademark No. 2882208, RAGNAROK (in a stylized font) in respect of recorded computer games in International Class 9;
(b) United States Registered Trademark No. 3405849, RAGNAROK RAGNAROK ONLINE (where the first RAGNAROK is in a stylized font) in respect of online games and related services in International Class 41;
(c) Korean Registered Trademark No. 1726522, RAGNAROK ORIGIN and shield device (where RAGNAROK is in a stylized font), in respect of downloadable mobile game software and related products in International Class 9 and which was registered on May 11, 2021; and
(d) Korean Registered Trademark No 1726523, RAGNAROK ORIGIN and shield device (where RAGNAROK is in a stylized font), in respect of gaming services and online game services in International Class 41 and which was also registered on May 11, 2021.
The disputed domain name was registered on June 2, 2021.
It resolves to a website which purports to allow users to register for and play “Ragnarok Origin” and to download the software to play the game.
The Complainant contends the contents of the Respondent’s website are pirated copies of the Complainants’ game hosted on “https://roo-asia-[redacted for publication in this decision]” (directed by download instructions on <roorigin.asia>).
5. Discussion and Findings
No response has been filed. The Complaint and Written Notice have been sent, however, to the Respondent at the electronic and physical coordinates confirmed as correct by the Registrar in accordance with paragraph 2(a) of the Rules. Bearing in mind the duty of the holder of a domain name to provide and keep up to date correct WhoIs details, therefore, the Panel finds that the Respondent has been given a fair opportunity to present his or its case.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(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.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of a number of registered trademark for RAGNAROK and RAGNAROK ORIGIN. The word RAGNAROK is presented in a stylised font and in some cases superimposed over a shield device.
The second stage of this inquiry requires a visual and aural comparison of the disputed domain name to the proven trademarks. This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 1.7.
In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11.
It is also usual to disregard the design elements of a trademark under the first element as such elements are generally incapable of representation in a domain name. Where the textual elements have been disclaimed in the registration or cannot fairly be described as an essential or important element of the trademark, however, different considerations may arise. See for example, WIPO Overview 3.0, section 1.10. The United States registrations which include the word “online” do include a disclaimer over the word “online” apart from the manner of its representation in the trademark. The design elements and the limited disclaimer in this case do not displace the usual rule and, therefore, can be disregarded.
Disregarding the “.asia” gTLD, the disputed domain name consists of “roorigin”.
When compared side by side in isolation and without any context, the trademarks RAGNAROK and RAGNAROK ORIGIN are not immediately visually or aurally recognisable in “roorigin”. WIPO Overview 3.0, section 1.7 does note, however, that context may be taken into account in undertaking the assessment of confusing similarity. For example, WIPO Overview 3.0, section 1.7 records:
“In specific limited instances, while not a replacement as such for the typical side-by-side comparison, where a panel would benefit from affirmation as to confusing similarity with the complainant’s mark, the broader case context such as website content trading off the complainant’s reputation, or a pattern of multiple respondent domain names targeting the complainant’s mark within the same proceeding, may support a finding of confusing similarity. On the other hand, if such website content does not obviously trade off the complainant’s reputation, panels may find this relevant to an overall assessment of the case merits, especially under the second and third elements (with such panels sometimes finding it unnecessary to make a finding under the first element).”
“In this context, panels have also found that the overall facts and circumstances of a case (including relevant website content) may support a finding of confusing similarity, particularly where it appears that the respondent registered the domain name precisely because it believed that the domain name was confusingly similar to a mark held by the complainant.” (emphasis supplied)
“roorigin” may be seen, amongst other things, as “ro origin” and “ro” may be seen, amongst other things, as an abbreviation for Ragnarok Online.
That this association is intended is confirmed by the website to which the disputed domain name resolves. The Respondent’s website is prominently headed “Ragnarok Origin” in the font and style used by the Complainant for its product, features images that appear to reproduce character images from the Complainant’s game and invites visitors “Ragnarok Origin Launch Download Now!”
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.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied.
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. 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 usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See e.g., WIPO Overview 3.0, section 2.1.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it.
The disputed domain name is not derived from the Respondent’s name. Nor is there any suggestion of some other name by which the Respondent is commonly known from which the disputed domain name could be derived.
Not only is the Respondent not authorised by, or associated with, the Complainant but the Complainant contends the Respondent has pirated copies of the Complainant’s materials for the Respondent’s website. If that is the case, the Respondent would be engaging in infringement of the Complainant’s intellectual property rights in its materials.
The Respondent has not sought to dispute any of these matters.
These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name. As the Respondent has not sought to rebut that prima facie case or advance any claimed entitlement, therefore, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
Given the content of the Respondent’s website, there can be little doubt that the Respondent was well aware of the Complainant, its trademarks and its game when registering the disputed domain name.
On the uncontested basis that the Respondent has adopted the disputed domain name and copied the Complainant’s materials without any permission from the Complainant or any other right or legitimate interest, therefore, the Panel finds that the Respondent has both registered and is using the disputed domain name in bad faith under the Policy.
Accordingly, the Complainant has established all three requirements under the Policy.
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.asia>, be transferred to the Complainant.
Warwick A. Rothnie
Date: October 18, 2021