The Complainant is a company founded in 2000, based in the United Kingdom and specialized in designing, developing, publishing and operating online video games and other electronic-based entertainment. <\/p>\n
The Complainant states that it is well-known internationally for its Massively Multiplayer Online Role-Playing Games (“MMORPG”) RuneScape and Old School RuneScape. The Complainant adds that 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 points out that its domain name <runescape.com> has resolved to an active website relating to online video games since 2000. The Complainant clarifies that in addition to <runescape.com>, the Complainant has acquired further domain names which incorporate the RUNE trade mark and which resolve to active websites.
The Complainant observes that it is also active on social media and has generated a significant level of endorsement.
The Complainant submits that it also uses a wide range of other marks which include the RUNE trade mark.
The Complainant underlines that a substantial quantity of user-generated content which relates to the RuneScape games, including blogs, articles, forums, videos, message boards, as well as a dedicated wiki are available online.<\/p>\n
The Complainant notes that its RUNE trade marks significantly pre-dates the registration of the disputed domain name.
The Complainant considers that the disputed domain name is identical or confusingly similar to its trademark \"RUNE\".<\/p>\n
The Complainant notes that the disputed domain name includes its trademark \"RUNE\" in its entirety.<\/p>\n
The Complainant observes that the addition of the generic term “METAVERSE” is not sufficient to escape the finding that the disputed domain name is confusingly similar to the trademark \"RUNE\".<\/p>\n
The Complainant contends that the top-level domain \".COM\" is a standard registration requirement and as such should be disregarded under the first element confusing similarity test.<\/p>\n
The Complainant submits that the Respondent does not have any rights or legitimate interests in the disputed domain name.
The Complainant considers that based on the reputation enjoyed by the Complainant in its RUNE and RUNESCAPE brands, there is no believable or realistic reason for registration or use of the disputed domain name, other than to take advantage of the Complainant’s rights and reputation. <\/p>\n
The Complainant submits that the Respondent is using the disputed domain name and the website it resolves to, which offers and\/or advertises goods and services overlapping with those protected by the Complainant’s trade marks, specifically in relation to online video games and entertainment services. The Complainant submits that the Respondent has chosen to use the RUNE brand to create the disputed domain name, in order to take advantage of the goodwill generated by the Complainant’s well-established and successful online video game business. The Complainant considers that this cannot constitute a bona fide offering of goods or services.
The Complainant argues that the intention behind the Respondent’s registration and use of the disputed domain name is to impersonate\/pass itself off as the Complainant or otherwise to take unfair advantage of the goodwill associated with the Complainant’s trade marks in order to promote its competing online video game offering, without the Respondent having to incur its own advertising or branding expenditure.
The Complainant confirms the Respondent does not have, and has never had, authorisation to use the RUNE brand in relation to online video games, nor any other goods and services protected by the Complainant's trade marks.
Upon information and belief, the Complainant submits that the Respondent has never legitimately been known as RUNE or any other similar name at any point in time. The Complainant concludes that the only reason the Respondent registered the disputed domain name was to take advantage of the Complainant’s goodwill and valuable reputation in the RUNE brand in relation to MMORPG style online games in order to promote a similarly styled game for the purpose of promoting NFTs and cryptoassets for financial gain.
The Complainant submits that nothing about the disputed domain name suggests that it is being used by the Respondent legitimately or for non-commercial and fair use. The Complainant recalls that the disputed domain name and the related website have been set-up to take advantage of the Complainant’s significant goodwill and valuable reputation in order to promote a similarly styled game for the purpose of promoting NFTs and cryptoassets for financial gain, as can be inferred from the content published on the website.
The Complainant submits that the disputed domain name has been registered and is being used in bad faith.<\/p>\n
The Complainant reiterates 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. Furthermore, the Complainant considers that the Respondent was unequivocally aware of the RUNE, RUNESCAPE and other brands which contain the \"RUNE\" mark, given the Respondent’s deliberate impersonation of the Complainant’s RUNE brand, the naming structure and the Complainant’s RuneScape in-game assets and mechanics, including the Grand Exchange trading system.<\/p>\n
The Complainant submits that the Respondent is using in its website several elements used also in the Complainant's games.
The Complainant argues that the only plausible explanation is that the Respondent impersonates the Complainant’s official service or otherwise intentionally adopts confusingly similar names and assets, with a view to diverting traffic from the Complainant’s websites in order to promote its own business of selling in-game NFTs.
The Complainant submits that the disputed domain name was registered with prior knowledge of the Complainant and their brands and is highly likely to be under the control of the respondent in CAC Case No. UDRP-105937, and in particular as regards the <rune.game> domain name.<\/p>\n
The Complainant clarifies that the disputed domain name was registered one day after <rune.game> was transferred to the Complainant’s corporate registrar and the infringing content was made disabled following the above-cited decision. The Complainant observes that the website content is identical to content previously found in the framework of the above-cited decision.<\/p>\n
The Complainant further submits that the Respondent is the same entity as the Respondent in the above-cited case, as can be seen from the disclosure of contact details by the Registrar, and this fact entails a pattern of bad faith conduct in accordance with the Policy.<\/p>\n
The Complainant further submits that the Respondent’s prior knowledge is 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 observes that actual knowledge of a complainant’s rights in a mark prior to registering a confusingly similar domain name is indication of bad faith under the Policy.
The Complainant points out that using a trade mark to divert traffic to the Respondent’s own website is consistently held to amount to bad faith registration and use under the Policy.<\/p>\n
The Complainant concludes that, in the light of the arguments submitted, all elements of the Policy are satisfied.<\/p>", "other_legal_proceedings": "
The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.<\/p>", "no_response_filed": "
The Complainant´s contentions are summarised above.<\/span><\/p>\n No administratively compliant Response has been filed. <\/p>",
"rights": " 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).<\/p>",
"no_rights_or_legitimate_interests": " 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).<\/p>",
"bad_faith": " 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).<\/p>",
"procedural_factors": " 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.<\/p>\n A non standard communication was sent from a third party, who clarified that, even if he owned the Respondent's company in the past, he was not affiliated with the disputed domain name in any way and currently he does not have anything to do with the Respondent's company. <\/p>\n In line with other similar UDRP cases (see for example WIPO Case No. D2009-1788), the Panel considers that this fact does not constitute an obstacle to provide a decision.<\/p>",
"decision": "Accepted",
"panelists": [
"Michele Antonini"
],
"date_of_panel_decision": "2024-03-26 00:00:00",
"informal_english_translation": " The Complainant is the registrant of some registered trademarks for the word “RUNE”, including:<\/p>\n - the EU trademark registration <\/span>No. 011161239,<\/span> registered on October 9, 2013, <\/span>for goods and services in classes<\/span> 16, 25, 36 <\/span>and 41<\/span>;
- the EU trademark registration <\/span>No. <\/span>018622946, registered on May 20, 2022, <\/span>for goods and services in classes<\/span> 9, 16, 25, 28, 36 and 41.<\/span>
The disputed domain name was registered by the Respondent on January 13, 2024.<\/span><\/p>\n<\/div>",
"decision_domains": {
"runemetaverse.com": "TRANSFERRED"
},
"panelist": null,
"panellists_text": null
}