Decision for dispute CAC-UDRP-107965

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 proprietor of numerous trademark registrations covering numerous countries and including inter alia:

• RUNE (word) - UK00911161239, Nice Classes 16, 25, 36, 41, registered since 9 October 2013
• RUNE (word) - EUTM 011161239, Nice Classes 16, 25, 36, 41, registered since 9 October 2013
• RUNE (word) - EUTM 018622946, Nice Classes 9, 16, 25, 28, 36, 41, registered since 20 May 2022
• RUNE SCAPE (word) - CA TMA771 782, Nice Class 41, registered since 13 July 2010
• RUNE SCAPE (word) - EUTM 007223662, Nice Classes 9, 16, 25, 28, 41, registered since 20 May 2009
• RUNESCAPE (word) - EUTM 006613889, Nice Class 28, registered since 20 January 2009
• RUNEFEST (word) - CA TMA 813 156, Nice Classes 35, 41, registered since 01 December 2011
• RUNEFEST (word) - EUTM 018552117, Nice Classes 9, 16, 25, 28, 38, 41, 45, registered since 23 February 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. Together, these 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.

“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 has been held for its upcoming tenth iteration in March 2025, for which, 1,500 tickets were 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. As shown by the number of high reviews the games have received.

The disputed domain name was registered on 18 May 2025 and is younger than the rights of the Complainant. 

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.

According to Paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements to obtain an order that the disputed domain name should be transferred or cancelled:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(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 has examined the evidence available to it and has come to the following conclusion concerning the satisfaction of the three elements of paragraph 4(a) of the Policy in these proceedings:

EARLIER RIGHTS

The Complainant has registered trade marks for RUNE and other RUNE-formative marks which significantly pre-date the registration of the disputed domain name.

The Complainant has obtained a number 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.

Decision CAC-UDRP-106953 relates to a domain name comprising of the RUNE brand, with additional elements. In CAC-UDRP-106953, the Panel held that the evidence submitted by Complainant confirmed that its “RUNE” trademark is distinctive and has a strong reputation in the videogame industry.

Decisions CAC-UDRP-105937 and CAC-UDRP-106272 relate to domain names comprising of the RUNE brand, sometimes with or without additional elements. In CAC-UDRP-105937, the Panel found that the RUNE brand had generated good will through the Complainant’s well-established and successful online video game business.

Furthermore, the Complainant has built up substantial recognition in the public domain for their RUNE brand through consistent use of the trademarks (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 trademarks.

COMPARISON WITH THE DISPUTED DOMAIN NAME

In accordance with Paragraph 4(a)(i), the Panel holds that the disputed domain name is confusingly similar to the Complainant’s trademarks. 

The finding is based on the settled practice in evaluating the existence of a likelihood of confusion of:

1. disregarding the top-level suffix in the domain names (i.e. “.COM") in the comparison; and
2. finding that the simple combination of a trademark (i.e. RUNE) and a generic or geographic term or abbreviation would not be considered sufficient to distinguish a domain name from a trademark. The disputed domain name incorporates the RUNE trade mark in its entirety as the distinctive and dominant element of the domain name. Internet users would regard the RUNE element as the recognisable source of identification within the disputed domain name. In this case, the addition of the generic term “FURY”, which is a generic term shown to be commonly used in the Complainant's games, does not prevent a finding of confusing similarity. The domain name is confusingly similar to the rights of the Complainant. 

The disputed domain name is therefore found to be confusingly similar to the earlier rights in the name RUSSELL STOVER, and the Panel concludes that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.

NO RIGHTS OR LEGITIMATE INTERESTS

The onus to make out a prima facie case that the Respondent lacks rights or legitimate interests is placed on the Complainant. However, once such a prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the disputed 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 no rights or legitimate interests in the disputed domain name. The Complainant and the Respondent have not had any previous relationship. The Complainant has never granted the Respondent any rights to use the RUNE trademark in any form, including in the disputed domain name. There is no evidence before the Panel indicating that the Respondent is commonly known by the disputed domain name.

There is no available evidence that the Respondent engages in, or has engaged in any activity or work, i.e., legitimate or fair use of the disputed domain name, or that would demonstrate a legitimate interest in the disputed domain name, so that there is nothing that could be interpreted as rights or legitimate interests of the Respondent. Since the Respondent has not responded, the Respondent has also failed to put forward any arguments at all which could change this finding.

On the contrary, the disputed domain name resolves to a website which offers a pirated version of the Complainant’s Old School RuneScape game. The creation and use of the pirated version of the game constitutes a violation of the Complainant’s EULA and applicable copyright laws. Prior panels have consistently held use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorised account access/hacking, impersonating/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.

In the absence of legitimate or fair use of the disputed domain name in connection with a bona fide offering of goods and services, the above demonstrates the Respondent’s absence of rights or legitimate interests in respect of the disputed domain name.

The Panel therefore concludes that the Respondent did not refute the Complainant’s prima facie case and has not established any rights or legitimate interest in the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy). The Complainant has therefore also satisfied the requirement under paragraph 4(a)(ii) of the Policy.

BAD FAITH

The Panel finds that the Complainant has established that the disputed domain name was registered by the Respondent and is being used by the Respondent in bad faith.

The trademarks 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 beyond doubt that the Respondent was 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 Panel finds 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;
• The Website refers to itself as “The ultimate Old School RuneScape private server experience.”; and
• Use of in-game icons taken from Old School RuneScape.  

The Panel holds that the only plausible explanation for the registration and use of the disputed domain name is the Respondent’s service impersonating the Complainant’s Games or otherwise intentionally using the Complainant’s copyright-protected works by adopting 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 Panel finds that the Respondent disrupts the Complainant’s business by diverting potential customers to a website 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 evidences bad faith, as does using a trade mark to divert traffic to the Respondent’s own website. In view of the distinctive nature of the RUNE brand, the scope of the Complainant’s business, and the substantial evidence of the Respondent copying/impersonating the Complainant, there is no other plausible explanation than the Respondent’s actual knowledge of the RUNE brand at the time of registration of the disputed domain name for the purposes of using that name in bad faith.

The Panel therefore finds that the disputed domain name was registered and is being used 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.

Based on the above, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy). The Complainant has therefore also satisfied the requirements under paragraph 4(a)(iii) of the Policy.