The Complainant is NCsoft Corporation, a South Korea corporation, Austin, Texas, United States of America, represented by Cooley Godward Kronish LLP, United States of America.
The Respondent is Joy Johnson, Sedro-Wolley, Washington, United States of America, represented by Lathrop & Gage L.C., United States of America.
2. The Domain Name and Registrar
The disputed domain name <tabularasa.com> (the “Domain Name”) is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2007. On March 9, 2007, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On that same day, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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, and the proceedings commenced March 21, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response April 10, 2007. The Response was filed with the Center April 10, 2007.
The Center appointed Harrie R. Samaras, Debra J. Stanek and Richard G. Lyon as panelists in this matter on May 25, 2007. The Panel finds that it was properly constituted. Each member of 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
Complainant develops and markets “massively multiplayer online role playing games” including one known as TABULA RASA (“the Mark”). Complainant claims common law trademark rights in the TABULA RASA mark which it has used to promote its on-line game on its websites and in promotional e-mails, printed catalogs, CD-ROMs, third-party publications and at industry and fan-oriented trade shows. Complainant owns trademark registrations for the Mark in Australia, Canada, China, Hong Kong SAR of China, Japan, Taiwan Province of China and Thailand. It has four federal trademark applications for the Mark pending before the United States Patent and Trademark Office.
On February 14, 2003, Complainant registered the domain name <playtr.com>. According to Complainant, it launched a “Tabula Rasa” website at that address on May 11, 2004, and also incorporated web content about the TABULA RASA on-line game at its website located at “www.plaync.com.”
Respondent acquired the Domain Name at least by September 21, 2004. The website features news about the “Tabula Rasa” on-line game. In this regard, the header on the top of the home page of Respondent’s website states: “QJ.net presents TABULA RASA: 24/7 Coverage of the Latest Tabula Rasa News.” Respondent’s website appears to be affiliated with QJ.net (“quickjump network”) and Content Holdings, LLC. At the very top of Respondent’s homepage are links to similar “24/7 coverage” of news related to a variety of topics (science, photography) and other game products including, Nintendo DS, Playstation 3, Wii and XBOX 360.
5. Parties’ Contentions
A. Complainant
Complainant claims to have common law rights in the Mark that date back to at least December, 2001, and to have invested several million dollars yearly in advertising and promoting its goods and services under the Mark throughout the world such that it has built up substantial good will in the Mark. Complainant also asserts that the Domain Name is identical to the Mark.
Complainant represents that it “has not sponsored, endorsed, authorized, or consented to Respondent’s use or registration of the TABULA RASA mark or the <tabularasa.com> domain name. Moreover, Complainant has never had any business relationships or dealings with Respondent, nor has Respondent ever been an employee of Complainant.” Complainant also asserts that Respondent lacks any common law trademark rights that would predate its rights in the Mark and that Respondent has never been known by the Domain Name or the Mark. Complainant also claims that Respondent is not using the Domain Name in connection with any bona fide offering of goods or services.
Complainant alleges that Respondent acquired the registration for the Domain Name over two years after Complainant began using the Mark to promote its goods and services. Complainant claims that Respondent’s continued bad faith is evidenced by the fact that soon after acquiring the Domain Name in 2004, which was after Complainant had launched its website devoted to TABULA RASA products and services, Respondent listed the Domain Name for sale. And in April, 2006, Respondent offered to sell the domain name for $100,000 using an on-line auction service.
B. Respondent
Respondent claims to have legitimate interests in the Domain Name because of Complainant’s acquiescence to Respondent’s use of the Domain name by virtue of the following actions: (1) representatives and employees of Complainant knew of, authorized and encouraged Respondent to use the Domain Name as early as October 2006; (2) representatives of Complainant provided content for Respondent’s website on multiple occasions by providing graphics; (3) Complainant’s agents provided an interview to Respondent for posting on Respondent’s website; (4) representatives of Complainant promised to provide Respondent with promotional items to give away on Respondent’s website, namely user “ids” for a beta test of the “Tabula Rasa” game; and (5) Complainant previously included Respondent’s logo and a link to Respondent’s website (at the Domain Name) on its website (“www.playtr.com”).
Respondent claims that Complainant gave Respondent permission to use the Domain Name through the actions and representations of its agent, April Burba, such that no bad faith can be found.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that a Complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by the Respondent 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Because the Panel has determined that Complainant has failed to carry its burden to prove element (iii) under Paragraph 4(a) of the Policy, it has not addressed the other two elements.
The Panel’s decision in this case comes down to whether Respondent was using the Domain Name in bad faith. Complainant cannot, on this record, establish the requisite bad faith use of the Domain Name.1
Respondent has provided substantial evidence of Complainant’s active participation in and encouragement of Respondent’s website for a lengthy period of time. It appears undisputed that since September 21, 2004, Respondent has owned the Domain Name. There is no evidence in the record which establishes what Respondent did with the Domain Name after first obtaining it, but it appears that as of early fall, 2006 (September/October), QJ.net created and hosted the website at the Domain Name. Between the months of October, 2006 and January, 2007 Chris Coker, Editor/PR Director of QJ.net, had ongoing communications with April Burba, Chief Community Officer, Tabula Rasa regarding Respondent’s website. Those communications included the following e-mail exchanges: (1) Ms. Burba informed Mr. Coker that Tabula Rasa was “accepting Beta Test applications on the PlayTR website” and provided him with access to “the Beta page directly by visiting: http://www.playtr.com/beta/index.html”. She ended her e-mail stating: “We look forward to your enlistment in the AFS army!” See Exhibit A-4 to the Declaration of Chris Coker annexed to the Response; and (2) Ms. Burba confirmed with Mr. Coker that she would have Mr. Coker’s interview questions answered and that she had the list of persons from Mr. Coker who were interested in beta testing the Tabula Rasa game. See Exhibit A-3 to the Coker Declaration.
Also through e-mails, Ms. Burba complemented Mr. Coker on the website, stating: “The site looks great! Nice job.” See Exhibit A-2 to the Coker Declaration. Furthermore, she asked Mr. Coker to send her a “140x140 jpg of the QJ.Net logo for our [Complainant’s] site and I will get you added to the community page.” Id. In fact, Ms. Burba added the QJ.net logo, a link to Respondent’s “www.tabularasa.com” website and a one-sentence blurb about Respondent’s website to Complainant’s website in October, 2006. See Coker Declaration at paragraph 5; see also, Exhibit 1 of the Coker Declaration; and Exhibit B-1 to the Response (One-sentence blurb: “Q.J. Net. More than just reblogitation of other gaming sites news feeds. Q.J.net provides insightful commentary on game news and information -- and most importantly on Tabula Rasa!”) Moreover, Ms. Burba provided more complements about the site, stating: “Loving your stuff! You guys are first in line for more art as soon as the team gets me some!” Id and Exhibit A-1 to the Coker Declaration. Ms. Burba reviewed articles on Respondent’s website and provided feedback to Mr. Coker, including sending him a link that included the <tabularasa.com> domain name. See Coker Declaration at paragraph 6; see also, Exhibit 2 of the Coker Declaration. As evidence of bad faith use, Complainant alleges that Respondent twice offered for sale the Domain Name in 2004 and later in April, 2006. As an initial matter, Complainant’s submission does not support such an allegation, for example, it does not identify who was offering the Domain Name or when it may have been offered for sale. Notwithstanding that, Complainant has simply not carried its burden of showing bad faith use of the Domain Name in view of the substantial evidence Respondent has provided to the Panel. That evidence establishes Complainant, through its actions, acquiesced in Respondent’s use of the Domain Name and appears to have even encouraged that use, at least until the filing of the Complaint in this action. Cf. Rudy Rojas v. Gary Davis,
WIPO Case No. D2004-1081 (April 18, 2005) (Panel denied the complaint and found that the respondent had legitimate interests in using the mark at issue where respondent proffered substantial evidence showing that he was openly using the mark at issue and complainant did not object to that use.). Respondent’s evidence also demonstrates a symbiotic relationship between the parties insofar as they both benefited from Respondent’s use of the Domain Name and the associated website. It can hardly be said that Respondent’s use of the Domain Name was in bad faith when on the one hand, Respondent made the use known to Complainant and sought to have Complainant benefit by it, and on the other hand, Complainant knew about the use, supported the website and sought to benefit by it.
Respondent’s continued use of the Domain Name which, in view of Complainant’s filing of this proceeding apparently may no longer have Complainant’s ringing endorsement,2 might very well constitute actionable activity for a court to determine. That, however is a matter for another tribunal rather than this Panel.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Harrie R. Samaras
Presiding Panelist
Debra J. Stanek
Panelist
Richard G. Lyon
Panelist
Date: June 8, 2007
1 Complainant has emphatically denied, through both its counsel of record and its General Counsel, that it has “sponsored, endorsed, authorized, or consented to Respondent’s use” of the Marks or the Domain Name. Likewise, Complainant proffered a sworn statement that “Complainant has never had any business relationship or dealings with Respondent . . . “ See Declaration of Matthew Esber annexed to the Complaint at paragraph 9 (emphasis added). Such statements were surprising and even disingenuous to the Panel in view of the unequivocal evidence that Respondent proffered demonstrating facts to the contrary.
2 Respondent’s site still includes an interview with Complainant’s founder and considerable other statements from Complainant’s employees, however.
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