Decision for dispute CAC-UDRP-107268

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

The Complainant owns several trademarks in various jurisdictions consisting of or including the term “RUNE“, such as the European Union trademark “RUNE” No. 018622946, registered on May 20, 2022, the United States trademark  “RUNE SCAPE” No. 3373023, registered on January 22, 2008, the European Union trademarks “RUNECOIN” No. 018613195, registered on July 14, 2022 and “RUNEFEST No. 018552117 registered on August 28, 2023. The Complainant owns several domain names including the term “RUNE,” such as <runescape.com>, <runemetrics.com> and <runefest.net>.

The Complainant offers the design, development, publication and operation of online video games and other electronic-based entertainment and is well-known for its Massively Multiplayer Online Role-Playing Games (“MMORPG”) RuneScape and Old School RuneScape. Collectively both Games average a total of more than 3 million active users per month. Old School RuneScape has been recognized by the Guinness World Records for being the largest free-to-play MMORPG with over 300 million accounts.

The disputed domain name <rune-saga.com> was registered on October 23, 2022 by a registrant, whose identity is not disclosed to the Panel. Since then, the registrant lost or has given up its ownership and the First Respondent (NameCheap, Inc.), who is the registrar for the disputed domain name, has transferred the disputed domain name to its “internal account”. The disputed domain name is not used and resolves to a blank page.

The Second Respondent (Isaiah Rogan) registered the disputed domain name <runesaga.net> on June 23, 2023. The disputed domain name resolves to a website, that offers a pirated version of the Complainant’s Old School RuneScape game.

The Complainant contends that it has satisfied each of the elements required under the Policy to transfer the disputed domain names.

I. Procedural

The Complainant submits that the disputed domain names are/were either (i) registered by the same domain name holder, or (ii) under the control of a common operator, based on similarities between the disputed domain names and the websites to which they resolve (or previously resolved). Therefore, the Complainant submits, it is fair and equitable to consolidate the complaints against both Respondents into a single complaint.

II. The Complainant states that the disputed domain names are confusingly similar to its trademark “RUNE” and its associated domain names.

The Complainant asserts that the registration of the “RUNE” trademarks significantly predates the registration of the disputed domain names and that these trademarks have been recognized as distinctive and well-known by other panels under the UDRP. The Complainant also states that the disputed domain names are confusingly similar to the Complainant’s trademarks, because the disputed domain names incorporate the trademark “RUNE” verbatim. The addition of the term “SAGA” does not alter the impression of similarity, as “SAGA” is a common term used in the Complainant’s games and follows the naming structure found in other RUNE-trademarks of the Complainant, such as RUNECOIN, RUNEMETRICS, and RUNEFEST. The Complainant states that the inclusion of the gTLD ".com" or “.net” should be omitted when assessing similarity.

III. The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

The Complainant claims that the Respondents do not use the disputed domain names in connection with a bona fide offering of goods or services, are not known to the Complainant and are not commonly associated with the disputed domain names and are not making a legitimate non-commercial or fair use of the disputed domain names, without intent or commercial gain to misleadingly divert consumers. Given the Complainant’s significant reputation at the time the Respondents registered the disputed domain names, there would be no credible or plausible reason for their registration other than to take advantage of the Complainant’s rights and reputation. The Respondents have not been granted any license or authorization to use the Complainant’s trademark or to apply for the registration of the disputed domain names.

IV. The Complainant states that the disputed domain names were registered and are being used in bad faith.

Regarding the disputed domain name <rune-saga.com>, the Complainant asserts that the passive holding of the disputed domain name supports the finding of registration and use in bad faith because of the distinctiveness and widespread recognition of the Complainant’s trademarks. The First Respondent has not provided any evidence of actual or intended good faith use.

Regarding the disputed domain name <runesaga.net>, the Complainant states that the similarity of in-game assets, naming structure and art style, and the fact that the disputed domain name resolves to a website, that offers a pirated version of the Complainant’s Old School RuneScape game, indicates that the Second Respondent registered and uses the disputed domain name to divert traffic to his own website by taking advantage of the Complainant’s reputation. The Complainant further argues that the Second Respondent disrupts the Complainant’s business by diverting potential customers to the Website which offers similar and competing goods and services.

V. The Complainant contends that the requirements of the Policy have been met and that the disputed domain names 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 <runesaga.net> 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 Second Respondent to have no rights or legitimate interests in respect of the disputed domain name <runesaga.net> (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 <runesaga.net> 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.

I. Procedural Factors

1. Consolidation of Multiple Respondents

The Complainant has not, to the satisfaction of the Panel, demonstrated the consolidation of multiple Respondents to be appropriate in this case. As a result, the Panel will give no further consideration to the first disputed domain name <rune-saga.com> within this proceeding.

Paragraph 3 lit. c of the Rules provides that the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. When a complaint is filed against multiple Respondents, Panels will take into account whether (i) the disputed domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties (Sec. 4.11.2 of the WIPO Jurisprudential Overview 3.0).

The Complainant submits

• that the disputed domain names are registered with the same domain registrar;

• resolve (or have historically resolved) to websites offering a private server for Old School RuneScape; and

• both use the Complainant’s trademark “RUNE” and the term “SAGA”.

The Complainant has failed to establish that the disputed domain names are registered by the same domain name holder/ are under common control to the satisfaction of the Panel.

The sole reason that both domain names are registered with the same registrar is „clearly insufficient“ to establish common control (WIPO Case No. D2014-1000 – VICINI S.P.A. vs. runs yao / delao dkeo).

The fact that both domain names previously resolved to similar websites does not suggest common control at the time of the proceedings. The two disputed domain names no longer resolve to websites providing private servers for Old School RuneScape. The first disputed domain name now resolves to a blank page.

Considering the popularity of the Complainant’s games, the mere use of the Complainant’s trademark “RUNE” and the term “SAGA” in both disputed domain names is not sufficient to establish common control.

2. The Panel decides to issue a full decision on the domain name <runesaga.net>, only, and to refuse issuing a decision on the other domain name, as the case regarding the domain name <runesaga.net> appears ready to be decided. 

3. Aside from this, the Panel is satisfied that all procedural requirements under the UDRP have been met, and there is no other reason why it would be inappropriate to provide a decision.

4. As the Second Respondent did not file an administratively compliant Response, pursuant to paragraph 14 (b) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), the Panel may draw such inferences therefrom as it considers appropriate. Thus, the Panel accepts the contentions of the Complainant as admitted by the Second Respondent. Taking the statements and documents submitted by the Complainant under careful consideration, the Panel concludes that the Complainant has established all the elements entitling it to claim the transfer of the disputed domain name <runesaga.net>.

II. Identical or Confusingly Similar

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name <runesaga.net> to be 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 Uniform Domain Name Dispute Resolution Policy (the “Policy”).

The disputed domain name <runesaga.net> contains the Complainant’s trademark “RUNE” in its entirety. For purposes of UDRP standing, in cases where a domain name incorporates the entirety of a trademark the domain name is usually considered confusingly similar to that mark (Sec. 1.7 Par. 3 WIPO Jurisprudential Overview 3.0; WIPO Case No. D2004-0206 – Covance, Inc. and Covance Laboratories Ltd. vs. The Covance Campaign). The addition of the term “SAGA” is not sufficient to overcome the finding that the disputed domain name is confusingly similar to the Complainant's trademark. “SAGA” is a common term used in the Complainant’s Games and, when added to the term “RUNE”, blends in with the naming structure found in the Complainant’s trademarks, such as RUNECOIN, RUNEMETRICS, and RUNEFEST. The applicable Top Level Domain (“TLD”) “.net” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (WIPO Case No. DTV2010-0012 – CANAL + FRANCE v. Franck Letourneau; WIPO Case No. D2014-1919 – Bentley Motors Limited v. Domain Admin vs. Kyle Rocheleau, Privacy Hero Inc.; WIPO Case No. D2015-0565 – SAP SE vs. Mohammed Aziz Sheikh, Sapteq Global Consulting Services). Therefore, the changes made do not alter the overall impression that the disputed domain name is closely associated with the Complainant's trademark.

III. Respondent’s Rights or Legitimate Interests

The Complainant has, to the satisfaction of the Panel, demonstrated that the Second Respondent has no rights or legitimate interests in respect of the disputed domain name <runesaga.net>, within the meaning of paragraph 4(a)(ii) of the Policy.

The Second Respondent has no rights or legitimate interests in the disputed domain name <runesaga.net>, the Second Respondent is neither licensee of the Complainant nor has the Complainant granted any permission or consent to use its trademark in a domain name. The disputed domain name <runesaga.net> does not correspond to the Second Respondent's name, nor is the Second Respondent commonly known by the disputed domain name either before or after their registration.

The foregoing circumstances sufficiently establish a prima facie case of “no rights or legitimate interests”, so the burden of proof shifts to the Respondent. As the Second Respondent has not filed a response, that burden has not been discharged, and, in the Panel’s view, the Complainant therefore succeeds in proving that the Second Respondent has no rights or legitimate interests in respect of the disputed domain name <runesaga.net>.

IV. Registration and Use in Bad Faith

The Second Respondent has also registered and is using the disputed domain name <runesaga.net> in bad faith within the meaning of Paragraph 4 (a) (iii) of the Policy by intentionally attempting to attract internet users to its websites by creating a likelihood of confusion with the Complainant's trademark for commercial gain.

The Second Respondent has registered the disputed domain name <runesaga.net> in bad faith.

The Complainant’s trademarks consisting of or containing the term "SAGA" are highly distinctive, well-established, and were already well known at the time the Second Respondent registered the disputed domain name. The mere registration of domain names that are confusingly similar to well-known trademarks by unaffiliated entities creates a presumption of bad faith (Sec. 3.1.4 of WIPO Jurisprudential Overview 3.0). This applies in this case, since the disputed domain name clearly references common terms used in the Complainant's games (“SAGA”) and mirrors the naming structure of the Complainant's trademarks. The Second Respondent was undoubtedly aware of the Complainant’s trademarks at the time of registration.

The Second Respondent is also using the disputed domain name <runesaga.net> in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

The disputed domain name resolves to a website offering an unauthorized (“pirated”) version of the Complainant’s Old School RuneScape game.

As determined by previous Panels, offering unauthorized or pirated versions of video games constitutes bad faith use within the meaning of in paragraphs 4(b)(iii) and/or 4(b)(iv) of the Policy (WIPO Case No. DIO2022-0051 – Scottgames, LLC vs. Tran Dai; WIPO Case No. DIO2022-0028 – EnchantedMob Inc. v. Privacy service provided by Withheld for Privacy ehf vs. Edge Lorde; WIPO Case No. D2021-2648 – Gravity Co., LTD. and Gravity Interactive, Inc. v. Domain Privacy Service FBO Registrant vs.  Junior Silva; WIPO Case No. D2022-0219 – Gravity Co., Ltd. and Gravity Interactive, Inc. vs. Andres Palomino Gonzalez Cortegoso).

The Second Respondent has not provided any evidence of actual or contemplated good faith registration or use of the disputed domain name that could refute this prima facie assessment.