The Complainant is Games Workshop Limited, of Nottingham, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
The Respondent is Admin, Domain, Admin, Domain of West Bay, Cayman Islands, Overseas Territory of the United Kingdom.
2. The Domain Name and Registrar
The disputed domain name, <forgeworld.com> (the “Domain Name”), is registered with Rebel.com Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2008. On September 8, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name.
On September 1, 2008, the Center sent an email communication to the Complainant drawing the Complainant's attention to substantial defects in the Complaint. The Center also drew the Complainant's attention to its resources and search facilities available on the WIPO website. The text of this email appears in full in section 6 below.
On September 9, 2008, 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. These details differed from those supplied in the Complaint.
The Center sent an email communication to the Complainant on September 17, 2008, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 18, 2008 (soft copy) and October 6, 2008 (hardcopy). In response to a further notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 13, 2008.
The Center verified that the Complaint together with the amendments to 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, and the proceedings commenced on October 13, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 2, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 3, 2008.
The Center appointed Tony Willoughby as the sole panelist in this matter on November 13, 2008. 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 the registered proprietor of Community and United States trade mark registrations of the mark, FORGEWORLD, in classes 2 and 28 for inter alia paints and games and playthings. The Community Trade Mark, which is the earlier of the two registrations, was applied for in July 1998 and proceeded to registration in October 1999.
The Domain Name was registered on December 8, 1998.
5. Parties' Contentions
A. Complainant
The Complainant contends that the Domain Name is confusingly similar to its FORGEWORLD registered trade mark.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant contends that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(i) of the Policy.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark 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.
B. Identical or Confusingly Similar
The Domain Name (absent the generic domain suffix “.com”) is identical to the Complainant's registered trade mark.
The Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
Under this head of the Complaint there is nothing other than the italicized guidance text addressed to complainants completing the online Model Complaint form on the WIPO website.
The Complaint contains no information about the Complainant's business, no information as to the fame of the Complainant's trade mark and no information as to the use being made of the Domain Name by the Respondent. The Complaint features no commentary dealing with the potential issue arising from the fact (see section 4 above) that the date of registration of the Domain Name (December 1998) pre-dates the date that the Complainant's earliest trade mark registration came through to registration.
The Panel has no information upon which to make an informed assessment as to whether or not the Respondent has any rights or legitimate interests in respect of the Domain Name.
The onus being on the Complainant to make good its claims under paragraph 4 of the Policy, the Complaint fails under this head.
D. Registered and Used in Bad Faith
Here again, the Complaint features nothing other than the italicized guidance text appearing on the WIPO online Model Complaint form. The Complainant has however deleted three of the bullet points. The surviving allegation is that the Respondent registered the Domain Name primarily for the purpose of selling at a profit within the meaning of paragraph 4(b)(i) of the Policy.
However, that is all that there is. There is nothing in the way of any additional text or argument (still less, evidence) to support the allegation. Accordingly, the Complaint fails under this head as well.
The Complaint fails on the present record, but the Panel confesses to some slight disquiet about the result. The Complainant's trade mark, FORGEWORLD, is an unusual word combination and the registration of the Domain Name followed the Complainant's earliest trade mark application in 1998 by only a few months. One would have thought that some very basic online investigation ought to have provided some supporting evidence for the Complainant's contentions.
Furthermore, it is worth noting that the Center, when it receives a manifestly deficient complaint does go to some lengths to draw the defects to the Complainant's attention (ref. paragraphs 3 and 4(b) of the Rules).
In this case, the original Complaint, which was received by the Center on August 28, 2008, insofar as Section V is concerned, featured nothing in the way of additional text beyond the italicized text appearing in the WIPO online Model Complaint form. On September 1, 2008, the Center sent to the Complainant an email communication reading as follows:
“Dear Sir,
Reference is made to the Complaint filed by you regarding the domain name <forgeworld.com> under the Uniform Domain Name Dispute Resolution Policy (UDRP).
Please note that the UDRP is solely intended to resolve disputes between trademark owners and holders of domain names registered and used in bad faith.
The UDRP Policy and Rules require that the complainant have rights in a trademark or service mark and that mark be identical or similar to the domain name at issue. Those rights can be in a mark that is registered or protected under common law. It is up to the complainant to demonstrate sufficient usage of the mark, where it is not registered, to convince the fact-finder that a common law mark exists.
After the above hurdle is over-come, it will be necessary to demonstrate that the registrant/respondent does not have rights or legitimate interests in regards to the domain name. The final criteria that must be demonstrated is that the registrant/respondent has registered the domain name in bad faith and is also using it in bad faith.
The Complaint filed does not appear to make the assertions required under the UDRP, in particular in relation to the trademark criterium. Unless the Complaint is amended to include such assertions, the Center is not in a position to take action regarding the Complaint filed.
With respect to the legal grounds, our Index of WIPO UDRP Panel Decisions is available at http://www.wipo.int/amc/en/domains/search/legalindex.jsp The WIPO Overview of WIPO Panel Views on Selected UDRP Questions can be consulted at http://www.wipo.int/amc/en/domains/search/overview/.
We also refer you to http://www.wipo.int/amc/en/domains/gtld/udrp/index.html where you can find the Uniform Domain Name Dispute Resolution Policy, Rules, and WIPO Supplemental Rules.
Please note that for a case filed with the WIPO Center involving between 1 and 5 domain names that is to be decided by a single Panelist, the fee is USD 1500. For a case that is to be decided by 3 Panelists, the fee is USD 4000.
The Center notes that Section XI of the Complaint fails to provide information on how the administrative fee (USD 1,500) is being paid. See http://www.wipo.int/amc/en/domains/fees/index.html.
The Center shall not be taking any action on your submission until it has received the required fee.
Sincerely,
WIPO Arbitration and Mediation Center”.
On September 17, 2008, the Center sent to the Complainant a Complaint Deficiency Notification drawing attention inter alia to the fact that “the Complaint does not describe the grounds on which it is made as required by the Rules, paragraph 3(b)(ix)”. The Notification goes on to highlight the absence in the Complaint of any information on the Complainant's trade marks, a defect which the Complainant subsequently rectified.
The Complainant was in the Panel's view given more than ample opportunity to file an appropriately detailed complaint, but failed to do so. In those circumstances it cannot be surprised at the result.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Tony Willoughby Sole Panelist
Dated: November 27, 2008
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