WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Riot Games, Inc. v. Whois Agent, Domain Protection Services, Inc. / Osamah, Osamah Osamah
Case No. D2021-4195
1. The Parties
The Complainant is Riot Games, Inc., United States of America, represented by Greenberg Glusker Fields Claman & Machtinger LLP, United States of America (“United States”).
The Respondent is Whois Agent, Domain Protection Services, Inc., United States / Osamah, Osamah Osamah, Yemen.
2. The Domain Name and Registrar
The disputed domain name <arcanetoken.net> is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. Also on December 14, 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 December 27, 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 amended Complaint on December 29, 2021.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 4, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 24, 2022. This date was extended until January 28, 2022, upon request from the Respondent. The Respondent submitted several communications, including a Response on January 28, 2022, and supplemental filings on January 29, 2022, and February 2, 2022. The Complainant made a supplemental filing on February 2, 2022. The Center notified the Acknowledgement of Receipt of Response on February 2, 2022.
The Center appointed Adam Taylor as the sole panelist in this matter on February 7, 2022. 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 develops and publishes video games and organises e-sports tournaments. One of the Complainant’s most successful games is “League of Legends”, which is played by millions of people round the world.
In October 2019, the Complainant announced that it was developing an animated television series called “Arcane” as a prequel to League of Legends, and issued a promotional YouTube video that has viewed more than 7.8 million times.
Having been preceded by extensive publicity, the show premiered on Netflix on November 6, 2021. Within a week, it had become Netflix’s highest-rated original programme, and the most-watched Netflix show in 52 countries.
The Complainant operates a website for the show at “www.arcane.com”.
The Complainant owns a number of trade marks containing the word “Arcane” including European Union (“EU”) trade mark No. 018158515 for RIOT GAMES ARCANE, filed November 27, 2019, registered on May 22, 2020, in classes 9, 14, 16, 18, 20, 21, 24, 25, 26, 28 and 41, and
EU trade mark No. 018480556 for ARCANE LEAGUE OF LEGENDS, filed May 28, 2021, registered on October 13, 2021, in classes 9, 14, 25, 28 and 41.
The disputed domain name was registered on November 9, 2021.
As of December 13, 2021, the disputed domain name resolved to a website entitled: “Hyper deflationary token with ARCANE” reflections. The site explained that “Arcane Token is a community-focused, decentralized cryptocurrency that works on an autonomous frictionless NFT Marketplace and liquidity generation protocol”. Beneath this statement was a button labelled “Buy on PancakeSwap”. The site featured images of characters from the Complainant’s “Arcane” television show and also used an “A” favicon logo that was similar to that used by the Complainant. It also included a “White Paper” that made reference to the gaming industry.
On January 12, 2022, a company called Arcane Token Ltd, with an address in Abu Dhabi, United Arab Emirates, filed United States trade mark serial No. 97215607 for “Arcane Token” in class 36.
5. Parties’ Contentions
The following is a summary of the Complainant’s contentions.
The Complainant’s marks, including “Arcane”, have acquired global fame and have become distinctive identifiers which consumers associate with the Complainant’s goods and services.
The disputed domain name is confusingly similar to the Complainant’s marks as it includes a dominant feature of the Complainant’s marks, namely the word “Arcane”. The additional of the descriptive word “token” does not avoid confusingly similarity.
The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant has never authorised or licensed the Respondent to use the Complainant’s trade marks or to register any domain name corresponding to those marks.
So far as the Complainant is aware, the Respondent is not known by the disputed domain name.
The Respondent has not used or made any preparations to use the disputed domain name in connection with a bona fide offering of goods and services. The Respondent is attempting to associate the disputed domain name with the Complainant in order to divert and mislead Internet users.
The Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name. On the contrary, the Respondent is seeking to misleading divert Internet users for commercial gain to a website engaged in a highly contentious area of activity that is made even more so by the dubious nature of the Respondent’s own offerings.
The disputed domain name was registered and is being used in bad faith.
The Respondent set out to create a likelihood of confusion with the Complainant’s mark by virtue of the nature of the Respondent’s website, including use of the Complainant’s characters and favicon logo, and by registering and using a domain name incorporating the Complainant’s famous mark plus a descriptive term.
The fact that the disputed domain name was registered only three days after the Complainant’s television programme premiered on Netflix, with enormous publicity, is further evidence of bad faith, as is the failure of the Respondent to include any identity or contact details anywhere on its website.
The following is a summary of the Respondent’s contentions.
In November 2021, the Respondent became interested in developing a cryptocurrency and blockchain-based project.
After watching the Complainant’s show, the Respondent became inspired by the name and concept, but erroneously used the Complainant’s characters from the show. The Respondent immediately removed the images when he was notified of the copyright infringement, which was distinct from use of the disputed domain name, and created his own very designs and characters that are very different to those of the Complainant.
The fact that the name used by the Respondent is not identical to the Complainant, and that cryptocurrency is in a different trade mark class to entertainment, indicate that there would be no likelihood of confusion or deception.
C. Supplemental Filings
The Respondent invoked the United States trade mark application referred to in section 4 above.
The Complainant responded that the application could not constitute a legitimate interest in the disputed domain name as it was filed after the Respondent had notice of this proceeding and in the name of a different entity.
6. Discussion and Findings
Under the Policy, the Complainant is required to prove on the balance of probabilities that:
- the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith.
A. Preliminary Issue - Supplemental Filings
Both parties have made unsolicited supplemental filings.
Section 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that UDRP panels have repeatedly affirmed that the party submitting an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response, e.g., owing to some “exceptional” circumstance.
In this case, the Panel has decided to admit the supplemental filings, but only insofar as they refer to a trade mark filing invoked by the Respondent. While the Respondent could have addressed this in his Response, he says he forgot to do so and raised it in a communication made the following day. The Complainant has responded to this point in its supplemental filing.
The Panel has otherwise rejected both parties’ supplemental filings as they largely repeat matters raised in the respective party’s principal filing.
In any case, the disallowed material in the supplemental filings would have made no difference to the outcome of this case.
B. Identical or Confusingly Similar
The Panel finds that the Complainant has established unregistered rights for purposes of the Policy in the mark “Arcane” by virtue of its extensive worldwide use thereof since October 2019.
Section 1.8 WIPO Overview 3.0 makes clear that, where the relevant trade mark is recognisable within the disputed domain name, the addition of other terms, whether descriptive or otherwise, would not prevent a finding of confusing similarity under the first element.
Here, the Complainant’s trade mark is readily recognisable within the disputed domain name and, accordingly, the addition of the term “token” does not prevent a finding of confusing similarity.
For the above reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark and that the Complainant has therefore established the first element of paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
As explained in section 2.1 of WIPO Overview 3.0, the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests.
For reasons explained below, the Panel considers that the Respondent has used the disputed domain name to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant’s services. Such use of the disputed domain name could not be said to be bona fide.
The Respondent invokes on the United States trade mark application for “Arcane Token” referred to in section 4 above. However, even if it is appropriate for the Respondent to rely on this application on the grounds that the applicant company is related to the Respondent, the application does not in any event assist the Respondent. Not only has the application not yet been registered as a trade mark but as explained in section 2.12 of WIPO Overview 3.0, a respondent’s registration of a trade mark corresponding to the disputed domain name will not in any case suffice to establish rights or legitimate interests if the overall circumstances demonstrate it was obtained primarily to circumvent the application of the UDRP or otherwise prevent the complainant’s exercise of its rights even if only in a particular jurisdiction. Here, the Panel thinks it reasonable to infer that the trade mark application was purely a defensive move designed to bolster the Respondent’s position in this proceeding given that it was applied for eight days after the Complaint was formally served on the Respondent.
Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case. For the above reasons, the Panel concludes that the Complainant has established the second element of paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
The Respondent acknowledges that the disputed domain name was “inspired” by the Complainant’s television show.
Given the Respondent’s selection of a domain name reflecting the Complainant’s mark, and the evidence of its use for a website that included images of the Complainant’s characters and references to the gaming industry as well as the Complainant’s favicon logo, the Panel readily concludes that the disputed domain name was registered and is being used in bad faith by the Respondent in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.
The Panel disagrees with the Respondent’s assertion that there is no likelihood of confusion because the name used by the Respondent is not identical to the Complainant, and because cryptocurrency is in a different trade mark class to entertainment.
The Panel considers that, even if it were the case that site visitors did not assume that the Complainant itself operated the cryptocurrency service (which is arguable), they still had every reason to believe that the Complainant was associated with the website in some way, particularly given the Respondent’s extensive use of the Complainant’s characters, the references on the website to the gaming industry and the fact that the disputed domain name reflected the Complainant’s distinctive mark.
For the purposes of third element, the likelihood of confusion would not have been diminished by the possibility that at some point certain users arriving at the Respondent’s site might have realised that it was not connected with the Complainant. Paragraph 4(b)(iv) of the Policy is concerned with the intentional attracting of Internet users, and that was plainly the Respondent’s objective here.
Nor does it assist the Respondent that he removed the copyright-infringing images following notification by the Complainant, or that the Respondent has since created different designs and characters. The issue here is not simply whether the Respondent infringed the Complainant’s copyright and, if so, whether he has since stopped the infringement. Rather, the question is whether, in all circumstances, the Respondent set out to create a likelihood of confusion with the Complainant’s mark. As explained above, the Panel believes that the Respondent did so, based on his use of the Complainant’s imagery but also the website references to the gaming industry and the nature of the disputed domain name itself. The Panel would have come to the same conclusion even if the Respondent had not used the Complainant’s images at all. In any case, the Respondent cannot evade the consequences of his bad faith use of the disputed domain name by simply removing some of the aspects of that use.
For the above reasons, the Panel considers that the Complainant has established the third element of paragraph 4(a) of 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 <arcanetoken.net> be transferred to the Complainant.
Date: February 21, 2022