The Complainant is Riot Games, Inc. of Santa Monica, California, United States of America (“USA”), represented by Davis & Gilbert LLP, USA.
The Respondent is Maik Baumgartner of Berlin, Germany.
The disputed domain name <support-leagueoflegends.com> is registered with Ascio Technologies Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2012. On April 11, 2012, the Center transmitted by email to Ascio Technologies Inc. a request for registrar verification in connection with the disputed domain name. On April 13, 2012, Ascio Technologies Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 April 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 13, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 14, 2012.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on May 18, 2012. 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.
The Complainant is a corporation existing under the laws of the State of Delaware, USA and having its principal place of business in Santa Monica, California, USA. The Complainant is a publisher and developer of premium online video games that are available internationally. The Complainant’s debut game title, “League of Legends”, was released in October 2009 and now has over 30 million registered players worldwide together with a total of over four million players on a daily basis.
The Complainant is the owner of USA federal trademark registration no. 3756125 for the word mark LEAGUE OF LEGENDS registered on March 2, 2010 in international classes 9, 16, 38 and 41 covering, inter alia, computer and video game software and providing an online computer game for others.
The disputed domain name was created on March 5, 2012. The website to which the disputed domain name points displays the Complainant’s LEAGUE OF LEGENDS mark and logo next to the words “Player Support”. The said website also shows a “Java” icon/dialog box, purports to notify users that they do not have the appropriate software to access the page, and requests that they download the necessary “Browser-Plugin”. The Complainant states that the said download is “malware” that takes over users’ computers.
The Complainant contends that the disputed domain name is confusingly similar to a trademark in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant states that it has used the trademark LEAGUE OF LEGENDS continuously in interstate and international commerce since at least as early as October 2009 in connection with computer and online games, and goods and services related thereto. The Complainant asserts that it has acquired substantial goodwill in its said trademark and has earned a valuable reputation throughout the world through continuous and extensive use and promotion thereof.
The Complainant states that it became aware of the disputed domain name on March 14, 2012 at which date the associated website was identical in appearance to the Complainant’s support website and was being used to “phish,” whereby it was acquiring Internet users’ information by masquerading as the Complainant. The Complainant notes that the website associated with the disputed domain name has since been altered and is no longer identical to the Complainant’s support website; however, it now provides the “malware” download referred to in the Factual Background section above.
The Complainant asserts that the inclusion of the generic term “support” in the disputed domain name fosters confusion, as consumers will inevitably mistake the Respondent’s website for the Complainant’s official game support website. The Complainant notes that the disputed domain name fully incorporates the Complainant’s LEAGUE OF LEGENDS mark and is merely one punctuation mark away from the Complainant’s own support website, “www.support.leagueoflegends.com”. The Complainant states that typing a hyphen rather than a period within a domain name is a common mistake made by someone typing a URL and that the alteration of a single character is a typical typosquatting tactic, which leads to confusion.
The Complainant notes that the Respondent is not authorized by the Complainant to use the LEAGUE OF LEGENDS trademark and/or logo and the Complainant has not authorized any software download. The Complainant states that it has no affiliation with the Respondent and that there is no indication that the Respondent has ever been commonly known by or associated with the Complainant’s LEAGUE OF LEGENDS trademark. The Complainant states that the Respondent’s use of the Complainant’s trademark and logo on its website will inevitably cause consumer confusion and that such conduct does not grant the Respondent any rights or legitimate interests in the disputed domain name under the Policy. The Complainant asserts that the Respondent’s use of the disputed domain name is neither a fair trademark use nor a bona fide offering of goods or services. The Complainant submits that the Respondent’s activity under the disputed domain name is intended to disrupt the Complainant’s business and to derive an advantage from user confusion. The Complainant asserts that such activity does not confer any rights or legitimate interests upon the Respondent.
The Complainant asserts that the Respondent is a typosquatter and that it is well settled that the practice of typosquatting, in and of itself, is evidence of bad faith registration of a domain name. The Complainant also submits that the Respondent is improperly diverting, deceiving and/or confusing Internet users through use of the disputed domain name. The Complainant states that the disputed domain name tricks consumers into downloading malware that they would likely believe is supported or provided by the Complainant, and that such conduct is indisputably bad faith.
The Complainant submits that it has attempted to communicate with the Respondent using an international courier company; however, the latter have stated that they have been unable to deliver the Complainant’s letter as the address given by the Respondent is incorrect. The Complainant asserts that the Respondent has deliberately provided false or misleading contact information in the disputed domain name registration records, for the purpose of public deception, and that this supports the conclusion that the disputed domain name was registered and is being used in bad faith
The Respondent did not reply to the Complainant’s contentions.
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;
(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 Panel is satisfied that the Complainant has demonstrated that it has rights in the mark LEAGUE OF LEGENDS by virtue of its USA registered trademark. The disputed domain name incorporates this term in its entirety, together with the generic word “support” and a hyphen. Spaces between the words in the trademark have been omitted; however, the Panel considers that this is of no significance as such spaces may not be employed in a domain name for technical reasons.
Numerous previous decisions under the Policy have found that the use of descriptive or generic words in addition to a trademark in a domain name does not prevent the domain name from creating a likelihood of confusion. A descriptive element cannot remove the overall impression made on the public by a trademark which is the dominant part of the domain name (Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409). In the present case, the Panel considers that the dominant part of the disputed domain name is the Complainant’s trademark LEAGUE OF LEGENDS and that the disputed domain name’s similarity to the Complainant’s trademark is further exacerbated by the fact that it is almost identical to the uniform resource locator of the Complainant’s support website, being merely one character different.
In these circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and thus that the first element under the Policy has been established.
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the Respondent’s] rights or legitimate interests to the [disputed] domain name for purposes of paragraph 4(a)(ii):
(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) ha[s] been commonly known by the [disputed] domain name, even if [the Respondent] ha[s] 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”.
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case not rebutted by the respondent that the respondent has no rights or legitimate interests in the disputed domain name. In the present dispute, the Panel is satisfied that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name based upon its submissions that the Respondent is not authorized to use the Complainant’s trademark, that the Complainant has no affiliation with the Respondent, and that there is no indication that the Respondent has ever been commonly known by or associated with the Complainant’s trademark. The Complainant adds that the disputed domain name has been used for the purposes of typosquatting and for the acquisition of Internet users’ information by masquerading as the Complainant, matters which the Panel agrees cannot be considered a bona fide use, or a legitimate non-commercial or fair use.
The Panel considers that the Complainant has made out a compelling prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. Given the present use of the disputed domain name in association with “malware”, according to the Complainant’s undisputed assertion, and the fact that the disputed domain name appears to be typosquatting by taking advantage of a visual similarity to the uniform resource locator of the Complainant’s official support website, it is difficult to conceive of any legitimate use to which the Respondent could put the disputed domain name. The Respondent has not responded to the contentions in the Complaint and has thus provided the Panel with no submissions regarding any rights or legitimate interests which it might have had in the disputed domain name.
In these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and accordingly that the second element under the Policy has been established.
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
“(i) circumstances indicating that [the Respondent] ha[s] registered or [the Respondent] ha[s] acquired the [disputed] domain name primarily for the purpose of selling, renting, or otherwise transferring the [disputed] domain name registration to the [C]omplainant who is the owner of the trademark or service mark or to a competitor of that [C]omplainant, for valuable consideration in excess of [the Respondent’s] documented out of pocket costs directly related to the [disputed] domain name; or
(ii) [the Respondent] ha[s] registered [disputed] the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent] ha[s] engaged in a pattern of such conduct; or
(iii) [the Respondent] ha[s] registered the [disputed] domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the [disputed] domain name, [the Respondent] ha[s] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] web site or other on line location, by creating a likelihood of confusion with the [C]omplainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] web site or location or of a product or service on [the Respondent’s] web site or location.”
In the present case, the Complainant has made a convincing case that the Respondent registered the disputed domain name with the deliberate intention of targeting the Complainant’s trademark for the purpose of acquiring various data from the Complainant’s customers by effectively impersonating the Complainant. In particular, the Complainant has demonstrated that the appearance of the Respondent’s website is highly likely to be confused with the support website of the Complainant. The Complainant has also demonstrated that the Respondent has intentionally selected a confusingly similar domain name to the Complainant’s trademark, being likewise a close typographical variant of the uniform resource locator of the Complainant’s support website, which in the Panel’s opinion is likely to heighten the possibility of consumer confusion. In addition, the Complainant has presented uncontested evidence that after registration of the disputed domain name the Respondent subsequently changed the function of the associated website in order to persuade Internet users who visit the said website unknowingly to download “malware”.
These circumstances do not necessarily fit squarely into the circumstances of registration and use in bad faith set out in paragraph 4(b)(i) to 4(b)(iv) inclusive of the Policy, albeit that paragraph 4(b)(iv) describes a partially analogous situation. The examples set out in paragraph 4(b) of the Policy are nevertheless expressed to be non-exclusive and the Panel has no hesitation in finding that the circumstances described by the Complainant demonstrate bad faith on the part of the Respondent both at the time of the Respondent’s registration of the disputed domain name and during the Respondent’s subsequent use thereof.
The Panel therefore finds that the Respondent has registered and is using the disputed domain name in bad faith and thus that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.
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 <support-leagueoflegends.com> be transferred to the Complainant.
Andrew D. S. Lothian
Sole Panelist
Dated: May 31, 2012