Decision for dispute CAC-UDRP-107039

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

EU Trademark Registration No. 018578070 RS GOLD registered from 30 October 2023.

The Complainant designs, develops, publishes and operates online video games and other electronic-based entertainment.  Since 2000 it has provided Massively Multiplayer Online Role-Playing Games ("MMORPG") under the title "RuneScape". One of the complainant's original RuneScape titled games, which it now refers to as "Old School RuneScape", has been recognised by the Guinness World Records as the largest ever free-to-play MMORPG with over 254 million user accounts.  Currently, RuneScape games are accessed by over 3 million active users per month.  Such games have won multiple awards and have been extensively promoted for many years through social media and other mediums.

For many years, RuneScape has been referred to by the shortened term "RS" by the Complainant and game users. Further, the term "RS GOLD" has similarly been regularly used to refer to an in-game currency used within the game to purchase equipment and materials.

The Complainant is the owner of registered trademarks containing or consisting of the words "RS" and "RS GOLD", including the registration referred to above.

The disputed domain name was registered in November 2021. It resolves to a webpage that lists the domain name as being for sale. Further, in November 2021 the Complainant received emails from an entity offering the disputed domain name for sale.

The registrant details for the disputed domain name were concealed via a privacy service. However, the Registrar for the disputed domain name has confirmed the registrant’s name as "Brandon Delija" with an address in the United States of America.

The Complainant contends that the requirements of the Policy have been met and that the disputed domain name should be transferred to it.
No administratively compliant Response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

Paragraph (4)(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name registered by the Respondent be transferred to the Complainant:

1) the disputed domain name is identical or confusingly similar to a trademark or service mark ("mark") in which the Complainant has rights; and
2) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
3) the disputed domain name has been registered and is being used in bad faith.

The Panel is satisfied the Complainant has satisfied all three elements for the principal reasons set out below.

RIGHTS IN AN IDENTICAL OR CONFUSINGLY SIMILAR TRADEMARK 

As mentioned above the Complainant asserts it has an EU trademark registration consisting of the words RS GOLD. 

To satisfy paragraph 4(a)(i) of the Policy it is enough that the Panel is satisfied that the Complainant has registered rights in a trademark in a single jurisdiction (even if that single jurisdiction is not one in which the Respondent resides or operates). (Koninklijke KPN N.V. v. Telepathy, Inc D2001-0217 (WIPO May 7, 2001); see also WIPO Case Nos. D2012-0141 and D2011-1436). Further, for the purpose of paragraph 4(a)(i) such registered rights may have accrued after the registration date of the disputed domain name (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Jurisprudential Overview") at paragraph 1.1.3). The Complainant has clearly satisfied such registered rights in relation to the trademark RS GOLD.

The next question is whether the disputed domain name is confusingly similar to the RS GOLD trademark.

The Panel disregards the gTLD suffix ".com" for the purpose of this comparison. 

Turning to the remaining elements of the disputed domain name, aside from completely reproducing RSGOLD, the disputed domain name merely adds the description element "buy". The resulting impression of this addition is that the disputed domain name concerns the purchase of "RS GOLD", which is a well-known in game currency used in the RuneScape games.

The disputed domain name is confusingly similar to the RS GOLD trademark.

NO RIGHTS OR LEGITIMATE INTERESTS

The Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests (Croatia Airlines d. d. v. Modern Empire Internet Ltd. WIPO Case No. D2003-0455). Once such prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a) (ii) of the Policy.

The Respondent has provided its registrant name as "Brandon Delija". There is no material on the webpage that lists the domain name for sale to which in anyway indicates the Respondent is known by the words making up the disputed domain name. There is no other evidence before the Panel which indicates why the Respondent would have any legitimate right or interest in the disputed domain name.

In such circumstances the Complainant has made out its prima facie case the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has no rights or interests in the disputed domain name.

BAD FAITH

The evidence before the Panel indicates that the Respondent knew of the Complainant's well-known "RS GOLD" trademark and offered the domain name for sale in order to benefit from this association. Indeed, the Panel infers from the evidence that the Respondent offered the domain name for sale to the Complainant itself.

Such opportunistic conduct indicates that the disputed domain name was registered, and used, in bad faith. The sole purpose of registration and use appears to be an attempt by the Respondent to sell a domain name to a trademark owner so that the trademark owner can prevent consumer confusion and misuse of the domain name that has, as its sole distinctive feature, the trademark owner´s trademark within it.