Decision for dispute CAC-UDRP-107269

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

The Complainant is the registered proprietor of numerous trade marks and other intellectual property rights worldwide. The Complainant owns extensive rights covering RUNE, RUNESCAPE, and the RUNE-formative concatenations, including but not limited to the trade mark registrations mentioned here: 

• RUNE (word) - United Kingdom IPO UK00911161239, covering Nice Classifications 16, 25, 36, 41, registered since 9 October 2013
• RUNE (word) - European Union EUIPO 011161239, covering Nice Classifications 16, 25, 36, 41, registered since 9 October 2013
• RUNE (word) - European Union EUIPO 018622946, covering Nice Classifications 9, 16, 25, 28, 36, 41, registered since 20 May 2022

The Complainant was incorporated on 28 April 2000 as Jagex Limited, and since then has carried on the business of designing, developing, publishing, and operating online video games and other electronic-based entertainment.

The Complainant is well-known internationally for its Massively Multiplayer Online Role-Playing Games (“MMORPG”) RuneScape, and Old School RuneScape, (collectively, the “Games”). Together, the Games average a total of more than 3 million active users per month since October 2022 Old School RuneScape has been recognised by the Guinness World Records for being the largest free-to-play MMORPG with over 300 million accounts.

The Complainant owns the domain name <runescape.com>, which has resolved to an active website relating to online video games since at least as early as 17 August 2000. In addition to <runescape.com>, the Complainant has acquired various further domain names which incorporate the RUNE and RUNESCAPE trade marks and which resolve to active websites. Examples include <runefest.com>, <runescape.net>, and <runeservice.com>.

The Complainant is also active on social media and has generated a significant level of endorsement, as shown below:

The Complainant has also received public and critical praise for its Games. Old School RuneScape was awarded 2019 EE Mobile Game of the Year at the British Academy Games Awards, while maintaining a Metacritic score of 87, a 4.8 rating (out of 5) on the iOS App Store, and 14,252 “Very Positive” user ratings on Steam. 

In addition to its extensive use of the RUNE and RUNESCAPE trade marks in relation to video games, large player-base, significant level of endorsement on social media, and critical acclaim, the Complainant also uses a wide range of other RUNE-formative marks within and in association with RuneScape, including but not limited to the below:

The former of which, “RuneFest”, is the Complainant’s independent event promoting the RUNE brand and the Complainant’s Games. The event has been held nine times since its inception in 2010 and is being held for its upcoming tenth iteration in March 2025, for which, 1,500 tickets have been sold. 

The Complainant’s Games have also provided the stimulus for a substantial quantity of online user-generated content relating to the games, including blogs, online articles, forums, videos, message boards, as well dedicated wikis. 

Consequently, the RUNE and RUNESCAPE brands have achieved a high level of recognition worldwide. 

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 contends in further detail the following.

Rights in ‘RUNE’ and ‘RUNE-formative marks’:

The Complainant has registered trade marks for RUNE and other RUNE-formative marks as set out above. The Complainant’s Trade Marks significantly pre-date the registration of the disputed domain name.

The Complainant has a string of successful UDRP decisions including: Jagex Limited v. Hao Chen, et al. WIPO Case No. D2011-0958 (<runescapesell.com>, et al.); Jagex Limited v Adam McDonald CAC-UDRP-105937 (<rune.game>, et al.); Jagex Limited v Adam McDonald (Binzy, Inc.) CAC-UDRP-106272 (<runemetaverse.com>); and Jagex Limited v Redacted CAC-UDRP-106953 (<runewild.com>). These decisions recognise the Complainant’s substantial goodwill and reputation in the RUNE and RUNESCAPE brands.

Furthermore, the Complainant has built up substantial recognition in the public domain for their RUNE brand through consistent use of the Trade Marks (including RUNE-formative marks) in connection with its highly popular product over a sustained period of time. This is evidenced by public endorsement of the RUNE brand on social media and user-generated content relating to the goods and services offered by the Complainant under the Trade Marks.

Comparison with the disputed domain name:

The disputed domain name includes the Complainant’s Trade Mark as the dominant element, along with the term ‘GLORY’. The term ‘GLORY’ is a common term used in the Complainant’s Games. The Respondent has also adopted the same naming structure for the disputed domain name as is used in the Complainant’s RUNE-formative Trade Marks, such as RUNECOIN, RUNEMETRICS, RUNEFEST, and RUNEWIZARDS, as well as its use of RUNE-formative terms more broadly. The combination of ‘RUNE’ and ‘GLORY’ does nothing to alter the impression generated by the disputed domain name in the eyes of the average Internet user. As a user would associate the two terms ‘RUNE’ and ‘GLORY’ separately and combined to indicate the domain originates from the Complainant.

The Complainant submits that the Respondent does not have any rights or legitimate interests in the disputed domain name.

The Complainant submits that the disputed domain name has been registered and is being used in bad faith.

The Complainant reiterates the submissions made above that the Trade Marks significantly pre-date the registration of the disputed domain name and the Complainant enjoys a substantial reputation in the RUNE brand and associated RUNE-formative brands. Furthermore, it is clear that the Respondent was unequivocally aware of the RUNE, RUNESCAPE and RUNE-formative brands, given the Respondent’s deliberate impersonation of the Complainant’s RUNE brand, the RUNE-formative naming structure and the Complainant’s RuneScape and Old School RuneScape in-game assets and mechanics.

The Complainant submits below that the Respondent is free riding on the success of the RUNE and/or RUNESCAPE brand including by use of the Complainant’s well-known in-game assets and promotional material, including but not limited to the following:

• the Website is promoting a pirated copy of the Old School RuneScape game made available for download, the game is a direct copy of Old School RuneScape; and

• use of promotional imagery relating to the Games on the Website, including art relating to the character “Nomad” from the Games.

The Complainant submits that the only plausible explanation is the Respondent’s service impersonates the Complainant’s Games or otherwise intentionally uses the Complainant’s copyright-protected works and adopts confusingly similar names and assets, with a view to diverting traffic from the Complainant’s websites in order to promote a pirated copy of the Old School RuneScape game. The Complainant submits that the disputed domain name was registered with prior knowledge of the Complainant and their RUNE and RUNE-formative brands as evidenced by the substantial similarity of in-game assets, naming conventions, and art style, with a view to taking advantage of the attractive power of those brands to consumers of online video games.

The Complainant submits based on the Respondent’s use of the RUNE mark, RUNE-formative naming structure and RuneScape assets to sell similar and competing goods and services, the Respondent has actual knowledge of the Complainant’s rights in the RUNE brand at the time of registering the disputed domain name, as evidenced above. Actual knowledge of the Complainant’s rights in a mark prior to registering a confusingly similar domain name evidences bad faith.

The Complainant further submits that the Respondent disrupts the Complainant’s business by diverting potential customers to the Website which offer similar and competing goods and services. Using a confusingly similar domain name in a manner disruptive of a Complainant’s business by trading upon the goodwill of a Complainant for the commercial gain evidences bad faith.  

In view of the distinctive nature of the RUNE brand, the colossal scope of the Complainant’s business, and the substantial evidence of the Respondent copying/impersonating the Complainant, the Complainant submits that the Respondent’s actual knowledge of the RUNE brand at the time of registration of the disputed domain name is unequivocal, and there is no plausible reason why the Respondent registered the disputed domain name in question other than to target the Complainant and its RUNE Trade Marks.

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).

This is a case of adding a generic term - in this case "glory" a to a well-known trademark and in respect of the well-established practice that the specific top level of a domain name such as “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar, it is found that the disputed domain name is confusingly similar to Complainant´s well-known trademark RUNE and RUNE formative trademarks.

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).

Given the circumstances of the case, including the provided information of the use and reputation of the Complainant’s trademark RUNE and RUNE formative trademarks and the distinctive nature of this mark, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant’s mark.

The Panel therefore finds that the disputed domain name was registered in bad faith.

The disputed domain name is linked to a website offering an unauthorized copy of Complainant's Old School RuneScape game and furthermore uses imagery related to the character "Nomad" in Complainants games. The Panel finds that it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate, such as being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law. The Panel finds that the mere registration of a domain name that is identical or confusingly similar to a well-known or widely-known trademark by an unaffiliated entity is sufficient to create a presumption of bad faith. Furthermore, that the Respondent disrupts the Complainant’s business by diverting potential customers to the website on the disputed domain name which offers similar and competing goods and services. Using a confusingly similar domain name in a manner disruptive of a Complainant’s business by trading upon the goodwill of a Complainant for commercial gain is use in bad faith.

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.

The three essential issues under the paragraph 4(a) of the Policy are whether: