WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

White Wolf Entertainment AB v. Domain Administrator, Domainmarket.com

Case No. D2018-0496

1. The Parties

The Complainant is White Wolf Entertainment AB of Stockholm, Sweden, represented by Paradox Interactive AB, Sweden.

The Respondent is Domain Administrator, Domainmarket.com of Potomac, Maryland, United States of America (“United States”), represented by Brian H. Leventhal, United States.

2. The Domain Name and Registrar

The disputed domain name <theworldofdarkness.com> is registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2018. On March 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 6, 2018, 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.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 2, 2018. Upon request of the Respondent, the due date for Response was extended to April 6, 2018, in accordance with the Rules paragraph 5(b). The Response was filed with the Center on April 6, 2018.

The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on April 19, 2018. 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 states that it is a wholly owned subsidiary, part of the Paradox Interactive Group which is engaged in the business of games, music and book publishing. The Complainant says that its group’s game portfolio includes more than 75 titles of which WORLD OF DARKNESS is one of the most important brands. The Complainant provides a hyperlink to the URL “www.worldofdarkness.com” which when visited by the Panel appeared to be a website associated with a game named “World of Darkness”. The Complainant claims to have a strong presence in the United States where the Respondent is based. The Complainant provides no evidence to support these contentions.

The Complainant is the owner of a variety of registered trademarks including United States registered trademark no. 2144698 for the word mark WORLD OF DARKNESS, registered on March 17, 1998 in international class 16 in respect of “role playing game in the nature of game book manuals”.

The disputed domain name was created on April 18, 2012. The Respondent is a corporation which is in the business of buying and selling domain names. The disputed domain name points to a website at which a business named “DomainMarket.com” is promoted. On such website, the disputed domain name is offered for sale in the sum of USD 24,888.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which it has rights, that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the disputed domain name was registered and is being used in bad faith.

The Complainant asserts that its parent company is a game developer and publisher of a world-renowned game catalog, the history of which stretches back to the 1990s. The Complainant adds that its parent works with renowned distributors worldwide, is present in all major digital download platforms and from 2006 has been digitally using its own publishing arm. The Complainant asserts that one million gamers play one of its or its parent’s titles each month and that it benefits from a growing community of some five million gamers.

The Complainant notes the terms of its registered WORLD OF DARKNESS trademark and submits that when this is compared side by side with the disputed domain name the latter is all but identical to the mark, noting that the mark is reproduced in its entirety with the generic word “the” prefixed thereto. The Complainant asserts that the difference is insufficient to differentiate the disputed domain name from the trademark.

The Complainant asserts that neither it or its agents have authorized the Respondent to use the disputed domain name, that the Respondent is not affiliated with it or its agents, that the disputed domain name is not derived from the Respondent’s name, intellectual property or activities, and that the Respondent’s website is not a good faith use of the disputed domain name. The Complainant contends that the Respondent registered the disputed domain name with the sole intention of reselling it and has during the past five years made no effort to use it in connection with any genuine offering of goods or services. The Complainant adds that the content of the Respondent’s website shows no real investment of time or money and is merely a standardized interface advertising the sale of the disputed domain name and information regarding the seller without any real connection to the disputed domain name. The Complainant provides screenshots dating from 2013 and 2014 and asserts that these demonstrate that disputed domain name has since registration been dominated by advertisements offering the sale of the disputed domain name and the Respondent’s other domain names. The Complainant notes that this use of the disputed domain name could not be described as a noncommercial use.

The Complainant notes that its trademark predates the creation date of the disputed domain name and asserts that such mark has been commonly known and associated with the Complainant since the early 1990s. The Complainant notes that “a rudimentary search” for the phrase in its mark will showcase such association. The Complainant asserts that it is impossible for the Respondent to have registered the disputed domain name without knowledge of such prior association and adds that the Respondent’s claim that the disputed domain name is a “super premium domain” valued at USD 24,888 can only come from the fact that it corresponds to a well-known trademark.

The Complainant contends that the Respondent registered the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name to the Complainant or to a competitor thereof for valuable consideration far in excess of its out-of-pocket costs directly related to its registration and that the high price is a consequence of the Complainant’s trademark and is evidence of registration and use in bad faith. The Complainant asserts that the Respondent and its alleged predecessor Domain Asset Holdings LLC have been held in a large number of cases to be a cybersquatter, citing some nine cases under the Policy, namely Facebook, Inc. v. Domain Asset Holding, WIPO Case No. D2011-0516; Training Channel, S.A v. Domain Asset Holdings, WIPO Case No. D2011-0875; Lifetime Assistance, Inc. v. Domain Asset Holdings, LLC, WIPO Case No. D2011-2137; Universal Assistance S.A. v. Domain Asset Holdings, LLC, WIPO Case No. D2012-2547; Tracy Anderson Mind and Body LLC v. Domain Asset Holdings, WIPO Case No. D2013-0699; Take-Two Interactive Software, Inc. v. Domain Asset Holdings, WIPO Case No. D2013-1434; WesTrac Pty Ltd v. Domain Asset Holdings, LLC, WIPO Case No. D2014-2032; Pullmantur, S.A. v. Domain Asset Holdings, LLC, Domain Administrator, WIPO Case No. D2015-0053; and Arne Jacobsen Design I/S v. Domain Administrator, DomainMarket.com, WIPO Case No. D2017-0552.

B. Respondent

The Respondent requests that the Complaint be denied. The Respondent asserts that the onus is on the Complainant to make out its case, that it must show that all three elements in paragraph 4(a) of the Policy have been established on the balance of probabilities and that it has failed to meet its burden of proof. The Respondent asserts that it has a legitimate interest in the disputed domain name, registered it in good faith and has used it in good faith in connection with its business of buying and selling domain names consisting of descriptive and generic terms and combinations thereof.

The Respondent concedes that the second level of the disputed domain name would be identical to the Complainant’s trademark but for the addition of the word “the”, although it states that it takes no position as to the validity or enforceability of such mark.

The Respondent refers to the Declaration of Michael Mann which it produces with the Response. This document notes that Mr. Mann is the owner of the Respondent’s company and sets out the Respondent’s business activities including that it operates in the field of buying what it describes as “premium domain names” and selling these via a secondary marketplace website located at “www.domainmarket.com”, through which it claims to sell over 1,000 domain names per year.

The Respondent notes that it acquired the disputed domain name on or about April 16, 2012, that such domain name resolves to a landing page displaying its sale price and means to purchase, a search engine for browsing domain names on offer and links to other information. The Respondent adds that it has never used the disputed domain name to sell competitive goods or services to those of the Complainant or to display pay-per-click (“PPC”) advertising. The Respondent asserts that its business has an accepted place in the domain name industry and that this was recognized in a previous case under the Policy, namely Centroamerica Comercial, Sociedad Anonima de Capital Variable (CAMCO) v. Michael Mann, WIPO Case No. D2016-1709. The Respondent notes that other UDRP panels have similarly recognized that the practice of buying domain names which contain short phrases from the English language may constitute use of such domain names in connection with a bona fide offering of goods or services. The Respondent adds that there may be circumstances where a registrant of such a domain name has knowledge of the rights of the trademark owner in a way which could raise issues as to the good faith of such registrant but that it is incumbent upon a complainant to explain with appropriate supporting evidence why it is that such registrant should be considered to have actual knowledge of the complainant and/or the complainant’s rights. The Respondent submits that the Complainant has failed to establish that the Respondent lacks a right or legitimate interest in the disputed domain name.

The Respondent contends that it was not aware of the Complainant’s alleged rights in the WORLD OF DARKNESS mark when it registered the disputed domain name, nor did it do so with intent to profit or otherwise abuse the Complainant’s trademark rights. The Respondent asserts, with reference to Mr. Mann’s declaration, that it has purchased numerous domain names dating back to 2008 containing the word “darkness” or beginning “theworldof” with one or more other dictionary terms and provides a list of some 92 domain names including, for example, <theendofdarkness.com> and <theworldoflearning.com>. The Respondent states that the list price of such domain names has been “as high as” USD 50,000.

The Respondent asserts that it has not engaged in any of the behaviors associated with bad faith use or registration as listed in the Policy. The Respondent notes that the Complainant has claimed that its trademark has been commonly known since the early 1990s and that it is impossible for the Respondent to have registered the disputed domain name without knowledge of this and submits that the Complainant has not cited any evidence for either of these claims or that as of April 2012 when the Respondent registered the disputed domain name the Respondent was aware or should have been aware of the Complainant’s mark because it was famous or well-known at that time. The Respondent adds that the Complainant merely alleges this to be true and notes that panels under the Policy have typically required actual knowledge of a complainant’s rights.

The Respondent contends that the Complainant merely alleges without evidence that the Respondent registered the disputed domain name primarily for the purpose of reselling to the Complainant or a competitor, adding that these allegations are simply false as the Respondent was not aware of the Complainant when it acquired the disputed domain name. The Respondent notes that even if the Complainant’s mark is currently highly placed in natural search results this is not relevant to the question of whether or not in April 2012 the Respondent created the disputed domain name in bad faith.

The Respondent asserts that it never approached the Complainant or any of its competitors about selling the disputed domain name noting that it has been accepted in a previous case under the Policy that offering a domain name for sale is not by itself proof that the disputed domain name was registered with the primary purpose of selling it to the complainant or a competitor thereof.

The Respondent describes the Complainant’s citation of cases in which it or its affiliate have been involved as “a handful” of cases which does not establish a pattern of bad faith registrations in terms of the Policy and should be given limited weight adding that this is particularly true in view of the substantial number of domain names that the Respondent has dealt with in its business, namely some 350,000 in the past ten years. The Respondent contends that in this context nine such cases do not establish a pattern of bad faith conduct but rather that the Respondent conducts a legitimate business. The Respondent notes that it has been held in a previous case under the Policy that a respondent’s losses in at least ten prior proceedings under the Policy should be discounted because of the failure of the complainant in that case to produce evidence that the respondent was seeking to exploit the complainant’s mark.

The Respondent insists that as with the list of domain names which it provides, the disputed domain name is generic and descriptive, and weak from a trademark perspective, noting that there are many potential legitimate non-infringing uses for the disputed domain name. The Respondent adds that no reasonable person arriving at its landing page would believe there was any association with the Complainant or risk of confusion. The Respondent adds that it has previously been found in a case under the Policy that unless a complainant can provide specific proof that a domain name was not acquired because of its generic or descriptive nature as part of a respondent’s bona fide business, there is no bad faith.

The Respondent notes that where a respondent makes a plausible claim of descriptive use, the dispositive question is not necessarily limited to whether the respondent was aware of the complainant’s trademark rights, although this may be a relevant consideration, but rather whether in light of all the facts and circumstances of the case it has been demonstrated that the respondent’s real aim was to exploit and profit from another’s mark, adding that the Complainant in the present case has not demonstrated this.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain name is 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 name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has rights in its registered mark WORLD OF DARKNESS in terms of the first element of the Policy. The second level of the disputed domain name reproduces this mark in its entirety and prefixes it with the word “the”. It is well recognized in cases under the Policy that the addition of a generic word to a trademark in a domain name is insufficient to avoid a finding of confusing similarity between the mark concerned and the domain name. The generic Top-Level Domain (“gTLD”) “.com” is typically disregarded for the purposes of comparison on the grounds that this is wholly generic and required for technical reasons only.

In these circumstances, the Panel finds that the disputed domain name is confusingly similar to a mark in which the Complainant has rights and accordingly that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.

B. Rights or Legitimate Interests

In light of the Panel’s finding in respect of bad faith registration and use below, there is no need for the Panel to address the issue of whether the Respondent has rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location”.

The Panel accepts that the registration of a domain name in order to resell this for a profit and the subsequent listing thereof for such sale is not, in and of itself, evidence of registration and use in bad faith. The wording of the non-exhaustive example in paragraph 4(b)(i) of the Policy is instructive in this regard given that it calls for circumstances indicating that such registration was primarily for the purpose of selling the domain name to the complainant or to a competitor of the complainant for valuable consideration in excess of out of pocket costs. In other words, for a finding of registration and use in bad faith under paragraph 4(b)(i) of the Policy, the Complainant, on whom the burden of proof lies, must provide evidence sufficient to prove on the balance of probabilities that this was the Respondent’s primary purpose and also in effect that the trademark value of the disputed domain name was in the Respondent’s contemplation at the point of registration.

In the present case, the Complainant’s assertions regarding the fame of its mark, if true, should have provided it with a straightforward path which may have led towards a demonstration of registration and use in bad faith. That is, however, a path which the Complainant has failed to follow. It is a key plank of the Complainant’s case that its WORLD OF DARKNESS mark is globally well-known with a history long pre-dating the registration date of the disputed domain name. Despite this, the Complainant has entirely failed to provide any evidence whatsoever to support those assertions. There is thus no evidence before the Panel which would allow it whether expressly or by inference to make a finding that, as the Complainant asserts, “it is impossible for the Respondent to have registered the disputed domain name without knowledge of the disputed domain name’s prior affiliation [with the Complainant’s trademark]”.

The Respondent for its part puts forward a case which, in the absence of such supporting evidence from the Complainant, appears to be a reasonably plausible explanation for its selection of the phrase “theworldofdarkness” in the disputed domain name. The Respondent evidently has a business offering domain names consisting of generic words and phrases for sale. Its evidence of multiple registrations of generic phrases incorporating the word “darkness” or “theworldof”, which are similar to the disputed domain name, is compelling and suggests that there may be a good faith motivation in the Respondent’s registration of the disputed domain name as part of the portfolio of generic domain names of a similar appearance and style.

There is nevertheless some evidence before the Panel which might have suggested a less than good faith motivation on the Respondent’s part. It is notable that the Respondent is seeking to charge a very large amount for the disputed domain name. Might that be a consequence of the trademark value of the term (and of the Complainant’s trademark value in particular) rather than of its value as a generic phrase? The Panel does not know and, what is more, the Panel certainly could not make such a finding without there being at least a modicum of evidence supporting the Complainant’s presently bare assertions of the extent of the renown of its mark.

Furthermore, the Panel accepts the Complainant’s contention that findings of registration and use in bad faith against the Respondent and its affiliates in previous cases under the Policy should not be overlooked. These do suggest that the Respondent’s selection of domain names for its business has in the past crossed the line into a pattern of bad faith registrations. While the Respondent argues that the case of Centroamerica Comercial, Sociedad Anonima de Capital Variable (CAMCO) v. Michael Mann, WIPO Case No. D2016-1709 demonstrates that its business has an accepted place in the domain name industry, it neglects to add what for the Panel is an important footnote. A central feature of the UDRP panel’s decision in the respondent’s favor in that case was that the domain name pre-dated the trademark relied upon by the complainant such that there could not have been any question that the mark had been targeted by the registration of the corresponding domain name. That is not the case here, as the disputed domain name was created in 2012 while the Complainant’s earliest trademarks date from 1998.

The Panel has however reached the view that neither the high asking price of the disputed domain name nor the Respondent’s past history are enough in and of themselves to demonstrate, on the balance of probabilities, that the Respondent had the Complainant’s mark in mind when it registered the disputed domain name, particularly in the face of the Respondent’s evidence showing the registration of a portfolio of similar domain names which could not in any circumstances be regarded as targeting the Complainant or its rights. The Respondent is correct in its assertion that it is for the Complainant to prove such targeting including in the present case at least the fact that in April 2012 when the disputed domain name was registered the Respondent is more likely than not to have been aware of the Complainant’s mark and to have intended to target it. There is no evidence whatsoever on the present record to demonstrate this and for this reason the Panel finds that the Complainant has not carried its burden of proving that Respondent registered and used the disputed domain name in bad faith within the meaning of the Policy.

7. Decision

For the foregoing reasons, the Complaint is denied.

Andrew D. S. Lothian
Sole Panelist
Date: May 3, 2018