Complainant is Riot Games Inc. of Santa Monica, California, United States of America, represented by Davis & Gilbert LLP, United States of America.
Respondent is Michael Brown of Temple Terrace, Florida, United States of America.
The disputed domain name <leagueoflegendsporn.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on July 26, 2012. On July 27, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 27, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the disputed domain name.
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 Respondent of the Complaint, and the proceedings commenced on July 31, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 20, 2012. Respondent did not submit any formal response.
The Center appointed Gary J. Nelson as the sole panelist in this matter on September 13, 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.
On August 20, 2012, Respondent requested a two week extension of time to submit his response. Complainant objected to the requested extension. On August 21, 2012, the Center denied Respondent's request. The Panel finds that there having been no exceptional circumstances cited for the Respondent’s request that it concurs with the Center’s determination to not extend the Response due date.
Complainant is the owner of at least one United States trademark registration for LEAGUE OF LEGENDS. Specifically, Complainant owns the following trademark registration in the United States:
Country | Registration No. | Mark | Classes | Dates of Application and Registration |
|
United States |
3,756,125 |
LEAGUE OF LEGENDS |
009; 016; 038; and 041 |
October 2, 2008 March 2, 2010 |
The disputed domain name appears to have been registered in February 2012. The corresponding website at <leagueoflegendsporn.com> is not operational.
Complainant owns trademark rights in LEAGUE OF LEGENDS, which it acquired prior to the registration of <leagueoflegendsporn.com>, the disputed domain name.
The disputed domain name, <leagueoflegendsporn.com> is confusingly similar to Complainant's LEAGUE OF LEGENDS trademark.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent registered and is using the disputed domain name in bad faith.
Complainant is a leading publisher and developer of premium online video games that are available internationally. Complainant's debut game title, LEAGUE OF LEGENDS, was released in October 2009, and is an extremely popular multiplayer online battle-arena game. LEAGUE OF LEGENDS has over 30 million registered players worldwide and over four million people play LEAGUE OF LEGENDS each day.
Complainant is the owner of United States (“U.S.”) federal trademark registration No. 3756125 for the mark LEAGUE OF LEGENDS covering, among other things, computer and video game software and providing an online computer game for others.
Complainant owns numerous U.S. and international applications and registrations for the mark LEAGUE OF LEGENDS, as well as marks that incorporate LEAGUE OF LEGENDS.
Complainant has used the mark 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. Through continuous and extensive use and promotion of the mark LEAGUE OF LEGENDS, Complainant has acquired a substantial amount of goodwill in the mark and has earned a valuable reputation throughout the world.
In February 2012, Respondent registered the disputed domain name.
On or about February 21, 2012, Complainant became aware that Respondent had registered
the disputed domain name, which fully incorporates Complainant's LEAGUE OF LEGENDS mark.
The website associated with the disputed domain name does not host or display any content or provide any services to the public. Instead, it consists of a graphic with the words "Future home of something quite cool" and an invitation for visitors to "please check back soon."
Upon learning of Respondent's registration, on March 14,2012, Complainant sent a letter to Respondent. The letter demanded that Respondent immediately discontinue use of the disputed domain name and Complainant's LEAGUE OF LEGENDS mark, or any variation thereof, and requested that Respondent transfer the disputed domain name to Complainant.
On March 19, 2012, Respondent responded to Complainant, stating that he has "no intentions of doing anything with www.leagueoflegendsporn.com” and that he had "forgot" that he had registered the disputed domain name. Respondent assured Complainant that "the domain name will not be used nor will I use the League of Legends name in any way." Respondent added that if Complainant needed the disputed domain name, he "will gladly hand it over" and asked for instructions on how to transfer it.
Complainant responded on the same date requiring the transfer of the disputed domain name, and providing instructions on how to do so.
On March 20, 2012, Respondent sent an email Complainant inquiring about "financial compensation" that he would be offered for complying with Complainant's request.
Complainant responded on April 30, 2012, offering to reimburse Respondent for the cost of registering the disputed domain name.
On May 14, 2012, Respondent rejected the offer stating that it is "simply not enough... the traffic that can be drawn to this website with the millions of league fans is worth too much" and asked for a "significant offer" for the disputed domain name.
On May 16, 2012, Complainant offered to pay USD 250.00 for the disputed domain name in the interests of avoiding legal expenses and time. The next day, Respondent rejected the offer, stating that the website "is predicted to bring in an unrivaled amount of traffic and will be highly competitive in search engines" and asked for a "transfer" fee of USD 200,000.00 based on his "traffic estimates."
Respondent did not formally reply to Complainant’s contentions.
Paragraph 15(a) of the Rules instructs 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.”
In view of Respondent’s failure to submit a formal Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules, and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Complainant has established that it owns prior rights in the LEAGUE OF LEGENDS mark and the disputed domain name is confusingly similar to Complainant’s LEAGUE OF LEGENDS mark.
Complainant owns at least one LEAGUE OF LEGENDS trademark registration in the United States. Specifically, Complainant owns United States Trademark Registration No. 3,756,125. The registration date for this trademark (i.e., March 2, 2010) precedes the date upon which the disputed domain name was registered (i.e., February 2, 2012).
Accordingly, Complainant has established rights in its LEAGUE OF LEGENDS mark pursuant to Policy, paragraph 4(a)(i). See Janus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201 (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. The respondent has the burden of refuting this assumption).
The disputed domain name, <leagueoflegendsporn.com>, is confusingly similar to Complainant’s LEAGUE OF LEGENDS trademark because the disputed domain name incorporates the entirety of Complainant’s LEAGUE OF LEGENDS trademark and merely adds a generic descriptive term (i.e., “porn”) and the top-level “.com” domain suffix. Neither the addition of a purely descriptive/generic term to a well-known mark nor the addition of a generic top-level domain suffix is sufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Limited v. Tim Healy/BOSTH, WIPO Case No. D2001-0026 (finding confusing similarity where the domain name contains the identical mark of the complainant combined with a generic word or term); see also, Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409 (finding that “[n]either the addition of an ordinary descriptive word […] nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy, paragraph 4(a)(i) is satisfied).
The addition of the word “porn” directly following Complainant's LEAGUE OF LEGENDS mark is insufficient to avoid a finding of confusing similarity.
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(i).
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent has failed to file a formal Response, which can suggest, in appropriate circumstances, that Respondent lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse., WIPO Case No. D2000-1221 (finding that the respondent’s failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no rights or legitimate interests in a domain name).
By not filing a formal Response, Respondent has not provided any evidence that it is commonly known by the disputed domain name, or that it is commonly known by the phrase "league of legends," "league of legends porn," or that it is commonly known by the names "league," "legends," or "porn," or any combination of these words. In Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interests could be found where: (1) the respondent is not a licensee of the complainant; (2) the complainant’s rights in its related trademarks precede the respondent’s registration of the domain name; and (3) the respondent is not commonly known by the domain name in question. The Panel notes that by not submitting a formal Response, Respondent also failed to provide any evidence that it is a licensee of Complainant or that its registration of the disputed domain name predates the establishment of Complainant’s rights in its LEAGUE OF LEGENDS mark.
Complainant has provided unrebutted evidence showing that Respondent is maintaining a passive and undeveloped website at “www.leagueoflegendsporn.com" to which the disputed domain name directs. In the Panel’s view, Respondent’s failure to develop an active website corresponding to the disputed domain name is evidence supporting the conclusion that Respondent has no right or legitimate interest in the disputed domain name. See Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273 (finding no rights or legitimate interests where respondent failed to submit a response to the Complaint and made no use of the domain name in question); see also Melbourne IT Limited v. Grant Matthew Stafford, WIPO Case No. D2000-1167 (finding no rights or legitimate interest in the disputed domain name where there is no proof that respondent made preparations to use the disputed domain name in connection with a bona fide offering of goods and services before notice of the domain name dispute, the disputed domain name did not resolve to a website and respondent is not commonly known by the disputed domain name).
Accordingly, the Panel concludes Respondent is not using the <leagueoflegendsporn.com> disputed domain name in association with a bona fide offering of goods and services pursuant to Policy, paragraph 4(c)(i) nor is he making a legitimate noncommercial or fair use of the domain name pursuant to Policy, paragraph 4(c)(iii).
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(ii).
The Panel finds that Respondent registered and is using the disputed domain name in bad faith.
The Panel finds that Respondent likely chose the disputed domain name with full knowledge of Complainant’s rights in the LEAGUE OF LEGENDS trademark. Complainant has alleged that Respondent was aware of the rights owned by Complainant in the LEAGUE OF LEGENDS mark when Respondent registered the disputed domain name. Complainant further alleges that Respondent was aware of the potential Internet traffic that could be routed through a properly developed website associated with the disputed domain name. The Panel finds these unrebutted allegations to be convincing and sufficient to establish the bad faith registration and use of the disputed domain name.
Respondent’s awareness of Complainant’s LEAGUE OF LEGENDS trademark may also be inferred because the mark was registered with the United States Patent and Trademark Office prior to Respondent’s registration of the disputed domain name. See Trip.com, Inc. v. Daniel Deamone, WIPO Case No. D2001-1066 (finding bad faith where the respondent had actual and constructive notice of the complainant’s trademarks registered in the United States); see also Kraft Foods (Norway) v. Fredrik Wide and Japp Fredrik Wide, WIPO Case No. D2000-0911 (“the fact that Respondent [chose] to register a well-known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”).
Respondent is maintaining the disputed domain name as a passive website. Given the circumstances of this case, this is further evidence that Respondent registered and is using the disputed domain name in bad faith. See Alitalia-Linee Aeree Italiane S.p.A v. Colour Digital, WIPO Case No. D2000-1260 (finding bad faith where respondent made no use of the domain name in question and there are no other indications that respondent could have registered and used the domain name in question for any non-infringing purpose). See also, Red Bull GmbH v. Harold Gutch, WIPO Case No. D2000-0766 (finding that respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with complainant, and thus is the equivalent to bad faith use).
Further evidence of bad faith registration and use is the attempt by Respondent to sell the <leagueoflegendsporn.com> disputed domain name to Complainant for USD 200,000.00. This attempt to sell a domain name, containing a well-known trademark of another, for profit in excess of costs associated with the registration of the domain name is sufficient evidence of bad faith registration and use under paragraph 4(b)(i) of the Policy. See Justin Kent Luhrs v. Steve Regan, WIPO Case No. D2002-0671 (finding bad faith in offering domain name for sale for USD 400.00).
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(iii).
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, <leagueoflegendsporn.com> be transferred to Complainant.
Gary J. Nelson
Sole Panelist
Date: September 21, 2012