Administrative panel decision ncsoft corporation V. G4P limited, Tao LI




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ARBITRATION
AND
MEDIATION CENTER




ADMINISTRATIVE PANEL DECISION

NCSOFT Corporation v. G4P Limited, Tao Li

Case No. D2014-1554



1. The Parties

The Complainant is NCSOFT Corporation of Seongnam-si, Gyeonggi-do, Republic of Korea, represented by Greenberg Traurig, LLP, United States of America.


The Respondent is G4P Limited, Tao Li of Changsha, Hunan, China.


2. The Domain Names and Registrar

The disputed domain names , , , , and are registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).




3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2014. On September 12, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 15, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On September 23, 2014, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceeding. On September 24, 2014, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.


The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint in both Chinese and English, and the proceedings commenced on October 2, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 22, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 23, 2014.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on November 11, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.


4. Factual Background

The Complainant is a premier global provider, developer, and publisher of online, video, and mobile games and related interactive entertainment and has been in the business of offering popular game titles such as Lineage, City of Heroes, WildStar, Guild Wars, Blade & Soul, and Aion since 1997.


The Complainant is the owner of registered trademarks BLADE&SOUL and WILDSTAR in the United States in connection with entertainment in the nature of online computer games, computer role-playing game software, interactive multimedia computer role-playing game programs, electronic publications featuring online computer games and other related multimedia products and services since at least as early as July 2009 (BLADE&SOUL) and August 2011 (WILDSTAR). It also enjoys registered trademark rights in BLADE&SOUL and WILDSTAR in China since 2010 and 2013 respectively.



The Complainant also owns and operates several websites at domain names incorporating its BLADE&SOUL and WILDSTAR marks, such as “www.wildstaronline.com” and “www.us.bladeandsoul.com”. These websites are used to promote and offer for sale its electronic games and other related products and services.


The disputed domain names were registered on the following dates:


- June 29, 2014

- January 12, 2013

- January 12, 2013

- January 12, 2013

- June 1, 2014

- December 16, 2013



5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The reasons are summarized as follows:


1. The Complainant has adduced evidence to show that it has rights in the marks BLADE&SOUL and WILDSTAR.
2. The disputed domain names are confusingly similar to the Complainant’s BLADE&SOUL and WILDSTAR trademarks.
3. Each of the disputed domain names wholly incorporate the Complainant’s BLADE&SOUL or WILDSTAR trademarks in their entirety or with only the minor difference of the deletion of the ampersand (i.e., “&,”) which is insufficient to avoid confusion.
4. The only difference being the addition of the generic Top-Level Domain (“gTLD”) “.com” and the generic or descriptive terms “store,” “golds,” or “sale,” or Complainant’s unique gaming terminology “AH,” and in some instances, the deletion of the ampersand in the Complainant’s marks for the disputed domain names.
5. It is well settled that the addition of the gTLD “.com” fails to distinguish the disputed domain names from the Complainant’s BLADE&SOUL and WILDSTAR trademarks.
6. Also, prior UDRP panels have consistently held that the addition of a generic or descriptive term such as “store,” “golds,” or “sale,” does not avoid the finding of confusing similarity. In fact, the mere addition to another’s trademark of a generic or descriptive term that describes the Complainant’s products or services may enhance such confusion because the Complainant’s games feature the ability for players to collect virtual “gold” and the term “AH” is an abbreviation of the wording “auction house” which is a feature of the Complainant’s Wildstar game.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names on the following grounds:
1. To the best of the Complainant’s knowledge and belief, the Respondent has no rights to any trademark consisting of the terms BLADE&SOUL or WILDSTAR in the United States or any country.
2. Nothing in the WhoIs records for the disputed domain names indicate that the Respondent is commonly known by the disputed domain names or the BLADE&SOUL or WILDSTAR marks. Moreover, no entity or person connected with the Respondent is named or identified by these disputed domain names or company name.
3. The Complainant has not granted the Respondent a license or any other authorization to use or register the BLADE&SOUL or WILDSTAR marks as part of a domain name or otherwise.
4. The Respondent has no affiliation or relationship with the Complainant, nor any legitimate reason or purpose for using the BLADE&SOUL or WILDSTAR marks in the disputed domain names.
5. The Complainant has never consented to the Respondent’s use of the BLADE&SOUL or WILDSTAR marks. Upon learning of the registration and use of the disputed domain names, the Complainant urged the Respondent to transfer the disputed domain names immediately.
6. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain names, and it cannot be implied that the Respondent registered the disputed domain names in good faith.
7. The Respondent’s use of the disputed domain names is improper. The Respondent is using the disputed domain name for commercial gain, i.e., in connection with selling products and services that are identical to and/or competing with the Complainant’s business and on a website that looks confusingly similar to the Complainant’s.
8. The Respondent uses the Complainant’s registered trademark and copyrighted images on the Respondent’s website to offer for sale online gaming software and related goods and services, diverting Internet traffic away from the Complainant’s website and falsely suggesting to the public that its actions are endorsed by the Complainant or that the Respondent’s website is the official website.
9. The Respondent chose to intentionally capitalize on the fame and goodwill of the Complainant’s WILDSTAR mark by registering and using the disputed domain name to sell online gaming software and related goods and services.
10. Moreover, the Respondent did not accurately disclose its relationship, or lack thereof, with the Complainant. Rather, the Respondent falsely suggested that it is the trademark owner or that the website is the official site, using the Complainant’s copyrighted images and text, or that it is somehow otherwise associated with the Complainant. With respect to the disputed domain names , , , , and , which appear to be currently inactive, based on the totality of the evidence, these disputed domain names are being used in bad faith.
11. It is not reasonably tenable that the Respondent has gone through the trouble and expense of purchasing and registering the inactive disputed domain names without intent to use these disputed domain names for commercial gain as it currently does with the disputed domain name .
The Complainant contends that the disputed domain names were registered and are being used in bad faith on the following grounds:
1. The Respondent registered the disputed domain names with actual or at least constructive knowledge of the Complainant’s famous BLADE&SOUL and WILDSTAR marks due to the Complainant’s registration of the marks in the US and in China. The Complainant’s trademark registrations serve as constructive notice to the Respondent of the Complainant’s rights in the BLADE&SOUL and WILDSTAR marks.
2. It is implausible that the Respondent did not have actual knowledge of the Complainant’s BLADE&SOUL and WILDSTAR marks at the time it registered the disputed domain names given the fact that the Respondent’s website to which the disputed domain name resolves contains the Complainant’s copyrighted game images and text and purports to offer goods and services for or in connection with the Complainant’s Wildstar branded online computer game.
3. The Respondent used the confusingly similar disputed domain names in order to intentionally attract Internet users to its website. The Respondent has intentionally attempted to attract Internet users to its websites, for commercial gain, by creating a likelihood of confusion with the BLADE&SOUL and WILDSTAR marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or products sold on the Respondent’s website.
4. By unlawfully capitalizing on the name recognition and goodwill of the BLADE&SOUL and WILDSTAR marks to divert Internet traffic to its websites, where the Respondent uses the Complainant’s registered trademarks, copyrighted images, a copyright notice, sells competing products and services, and requests user account and payment information, or, is otherwise passively holding the disputed domain names, the Respondent has registered and has used the disputed domain names in bad faith.
5. Moreover, the Respondent is confusing consumers and capitalizing on the Complainants’ goodwill in the WILDSTAR mark by operating a website at the disputed domain name that offers goods and services that are identical to or overlap with the Complainant’s goods and services.
6. The Respondent includes at the bottom of its website the copyright notice “Copyright 2013-2014, wildstarstore Inc. All Rights Reserved” to appear as though it is one of the Complainant’s official websites, which tarnishes the Complainant’s trademark and reputation and is likely to confuse Internet users.
7. It is irrelevant that the websites to which the disputed domain names , , , , and resolve are currently inactive. Prior UDRP panels have held that where there is evidence of bad faith registration, absence of use does not frustrate the requirements of showing bad faith registration and use.
8. The Respondent’s registration of a number of domain names incorporating the Complainant’s marks supports a conclusion that the Respondent registered and has used or will use the disputed domain names in bad faith to trade off the goodwill associated with the Complainant’s BLADE&SOUL and WILDSTAR marks.

9. The Respondent continues to maintain the disputed domain names despite the Complainant’s July 10, 2014 cease and desist letter demanding that the Respondent refrain from infringing the Complainant’s BLADE&SOUL and WILDSTAR marks and transfer the disputed domain names to the Complainant. The Respondent never responded to the Complainant’s July 10, 2014 correspondence. Previous UDRP panels have found that the failure to respond to complainant’s cease and desist letter constitutes evidence of bad faith.


B. Respondent

The Respondent did not reply to the Complainant’s contentions.




6. Discussion and Findings



6.1. Language of the Proceeding
According to the information received by the Center from the Registrar, the language of the Registration Agreement for the disputed domain names is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the case file, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be in English. Complying with the instructions from the Center, the Complainant has submitted a request that the proceeding should be in English. The Respondent did not respond.
After considering the circumstances of the present case and the submissions from the Complainant, the Panel is of the opinion that the language of the present proceeding shall be English and the decision will be rendered in English. The Panel based its decision on the following reasons:
(i) The Panel’s discretion under the Policy
Paragraph 11 of the Rules provides:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
Thus, the parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.
(ii) The circumstances of this proceeding
One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.
In particular, the Panel notes that the material facts of this proceeding are generated in the English language. On record, the Respondent appears to be Chinese and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence has been adduced by the Complainant to suggest in the interests of fairness, the language of the proceeding ought to be English. In particular, the Panel notes that:
(a) the disputed domain names are made up of letters in Ascii-Script and could be pronounced phonetically in English;
(b) there is evidence adduced by the Complainant that the website at one of the disputed domain names, is in the English language, which indicates that the Respondent is conversant with the English language;
(c) the Center has notified the Respondent of the proceeding in both Chinese and English. The Respondent had a choice to respond to the Complaint in either Chinese or English as the Panel who has been appointed by the Center is conversant in both languages. However, the Respondent has chosen not to respond to the Complainant’s allegations.
Considering these circumstances, the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.
In considering the circumstances of the present case, the Panel decides that the language of the proceeding shall be English and the decision will be rendered in English.
6.2. Substantive Elements of the Policy
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain names, the Complainant must establish that each of the three following elements is satisfied:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Complainant has adduced evidence to demonstrate that it has registered trademark rights and continues to have such rights in the BLADE&SOUL and WILDSTAR marks in connection with entertainment in the nature of online computer games, computer role-playing game software, interactive multimedia computer role-playing game programs, electronic publications featuring online computer games and other related multimedia products and services. The Panel finds that the Complainant’s BLADE&SOUL and WILDSTAR marks are widely known for online computer games, computer role-playing game software, interactive multimedia computer role-playing game programs, electronic publications featuring online computer games and other related multimedia products and services offered by the Complainant.


In assessing the degree of similarity between the Complainant’s trademarks and the disputed domain names, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s trademarks and the disputed domain names is to be considered from the perspective of the average Internet user.
In the disputed domain names such as , , , , the Respondent made a deletion of the ampersand in the Complainant’s marks but has otherwise incorporated in the entirety the Complainant’s registered marks with the addition of descriptive terms such as “store”, “golds,” or “sale,” which are insufficient to distinguish the disputed domain names from the Complainant’s marks. Whereas, in disputed domain names such as and , the Respondent has incorporated in the entirety the Complainant’s registered marks, with the addition of the descriptive terms such as “store” or the Complainant’s unique gaming terminology “AH”, which again are insufficient to distinguish the disputed domain names from the Complainant’s marks. Furthermore, it is a well-accepted principle that the addition of gTLDs such as “.org” and “.net” may typically be disregarded.
Bearing in mind the widespread reputation and high degree of recognition of the Complainant’s marks BLADE&SOUL and WILDSTAR, and the lack of distinguishing factors between the disputed domain names and the Complainant’s marks BLADE&SOUL and WILDSTAR, the Panel therefore finds that the disputed domain names are confusingly similar to the marks in which the Complainant has rights.
The Panel finds for the Complainant on the first part of the test.

B. Rights or Legitimate Interests

Based on the following reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names:


(1) there is no evidence of a legitimate use by the Respondent of the disputed domain names or reasons to justify the choice of the terms “bladeandsoul”, “bladesoul” and “wildstar” in the disputed domain names;
(2) there is no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademarks or to apply for or use any domain name incorporating the BLADE&SOUL and WILDSTAR marks;
(3) there is no indication whatsoever that the Respondent is commonly known by the disputed domain names and/or is using the disputed domain names in connection with a bona fide offering of goods or services;
(4) the Complainant and its BLADE&SOUL and WILDSTAR marks enjoy a widespread reputation and high degree of recognition in connection with entertainment in the nature of online computer games, computer role-playing game software, interactive multimedia computer role-playing game programs, electronic publications featuring online computer games and other related multimedia products and services and the BLADE&SOUL and WILDSTAR marks are registered in the United States and many countries all over the world, including China in which the Respondent appears to reside. Consequently, in the Panel’s view, in the absence of contrary evidence from the Respondent, the BLADE&SOUL and WILDSTAR marks are not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.

The Panel notes the overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1. Based on the above reasons, the Panel finds that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption.


According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to the respondent of the dispute, respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or evidence of any other circumstances giving rise to a right to or legitimate interest in the disputed domain names. The Panel further notes that the Respondent has failed to submit a Response to the Complaint filed against it. In particular, the Respondent has failed to make submissions to demonstrate that it has rights or legitimate interests in the disputed domain names.
In accordance with the Rules, paragraph 14, the Panel thus draws such inferences as it considers appropriate, which are that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the Respondent appears to be unable to adduce evidence of any rights to or legitimate interests in the disputed domain names.
The Panel finds for the Complainant on the second part of the test.

C. Registered and Used in Bad Faith




Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or


(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
The above circumstances are indicative of registration and use of a domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the panel can also constitute registration and use of a domain name in bad faith by a respondent in appropriate cases.
One important consideration in the Panel’s assessment of whether the Respondent has registered and is using the disputed domain names in bad faith is prior knowledge on the part of the Respondent of the Complainant’s rights in the trademark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcend national borders. Taking into account the wide spread reputation of the Complainant and its BLADE&SOUL and WILDSTAR marks, as well as the market presence of the Complainant in numerous countries including China, the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain names. A simple search on the Internet would reveal the presence of the Complainant’s trademarks and domain names. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain names. The Panel’s conclusion is buttressed by the fact that the website to which the disputed domain name resolves contains Complainant’s copyrighted game images and text and purports to offer goods and services for or in connection with Complainant’s Wildstar branded online computer game. Consequently, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain names, failing which the Panel draws the conclusion that the disputed domain names were registered in bad faith with intent to create an impression of association with the Complainant and its products.
The fact that the Respondent has chosen to register the six disputed domain names all incorporating the Complainant’s BLADE&SOUL and WILDSTAR marks in their entirety lends weight to the argument that the Respondent has prior knowledge of the Complainant’s business presence and its marks. This argument has not been rebutted by the Respondent.
Where the Respondent has chosen to register disputed domain names that are confusingly similar to the Complainant’s trademark and where the trademark in question has through substantial use acquired worldwide fame, reputation and notoriety, a reasonable conclusion is that the trademark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, the burden on the Respondent to show that the choice of the disputed domain names was made legitimately and in good faith for the genuine offering of goods or services on the Internet is a very heavy one. There is no evidence that the Respondent has used or intends to use the disputed domain names for purposes of bona fide offering of goods and services over the Internet. On the contrary, there is evidence which shows that the Respondent has used the disputed domain name for the purpose of offering goods and services that are identical to or overlap with the Complainant’s goods and services. In this regard, the Panel finds that the Respondent has not provided any plausible explanation of his/her use of the disputed domain name .
The Panel notes that the websites at the disputed domain names , , , , and appear to be inactive. In accordance with established precedent, the Panel finds that the passive holding of said disputed domain names does not as such prevent a finding of bad faith. See WIPO Overview 2.0, paragraph 3.2.
The Panel finds that the Complainant has adduced evidence and proved that by using confusingly similar disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s websites under paragraph 4(b)(iv) of the Policy (such as in the case of ). The Panel finds that given the widespread fame of the Complainant’s marks and a lack of plausible explanation for the choice of incorporating the Complainant’s well-known mark in the disputed domain names, the link by the Respondent of the disputed domain name to a website which sell goods and services that are identical to or overlap with the Complainant’s goods and services and to inactive websites is certainly a relevant factor indicating bad faith registration and use.
Thus, the Panel finds for the Complainant on the third part of the test.


7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names , , , , and be transferred to the Complainant.



Susanna H.S. Leong

Sole Panelist



Date: November 24, 2014



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