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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

2018120 Ontario Inc. dba BattleGoat Studios v. Port Media

Case No. D2006-0120

 

1. The Parties

The Complainant is 2018120 Ontario Inc. dba BattleGoat Studios, Lynden, Ontario, Canada.

The Respondent is Port Media, Vancouver, British Columbia, Canada, represented by ESQwire.com Law Firm, Cherry Hill, New Jersey, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <supremeruler.com> is registered with Nameview Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2006. On January 27, 2006, the Center transmitted by email to Nameview Inc. a request for registrar verification in connection with the domain name at issue. On February 8, 2006, Nameview Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient (as to the name of the Respondent), the Complainant filed an Amended Complaint on February 20, 2006. The Center verified that the Complaint, together with the Amended 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 3, 2006. In

accordance with the Rules, paragraph 5(a), the due date for Response was March 23, 2006. The Response was filed with the Center on March 23, 2006.

On April 4, 2006, the Complainant made a supplemental filing (the “Supplemental Filing”). The Center notified the parties on April 7, 2006 that it would be for the Panel to decide on whether to admit the Supplemental Filing.

The Center appointed Thomas Webster, Peter G. Nitter and David E. Sorkin as panelists in this matter on April 24, 2006. 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.

On May 3, 2006, the Panel issued Procedural Order No. 1, which admitted the Supplemental Filing; provided the Respondent with the possibility of filing a supplemental response (the “Supplemental Response”); and, provided that the due date for the decision was May 17, 2006.

The Respondent filed the Supplemental Response on May 10, 2006.

The Panel notes that the Supplemental Filing and the Supplemental Response were both of great assistance to it and would like to express its thanks to the parties for their clear arguments as to the issues in those documents.

 

4. Factual Background

The Complainant appears to be a small computer company. The Complainant developed a computer game called “Supreme Ruler”, “Supreme Ruler Plus” and “Supreme Ruler 2010”. Apparently, the first version of this game was brought out in 1982.

It is common ground that the term “Supreme Ruler” is widely used on the Internet to denote the Complainant’s computer game. However, as discussed below, the Respondent maintains that the terms are descriptive.

The Complainant did not register a trademark for SUPREME RULER. Nor was the Respondent the first party to register the domain name <supremeruler.com>, as the domain name was first registered to a third party.

 

5. Parties’ Contentions

A. Complainant

The Complainant maintains that it has common law trademark rights to the name SUPREME RULER. It does so based on the long-term use of the name in connection with its computer game. In support of that, it also states that the results of an unrestricted Google search for “Supreme Ruler” show:

- “The significant majority of all worldwide results to a Google search for ‘supreme ruler’ result in a match to our product (496,000 out of 724,000 hits, or about 69%)

- % of the top 100 Google results match for our product or website.”

As regards the issue of whether the term is descriptive, the Complainant notes in its Supplemental Filing:

(1) “The respondent also claims that ‘there are other parties with registered trademarks for this term.’ This statement is in fact false, and we enclose Annex S-2, results from a trademark search at the US Patent and Trademark Office, to demonstrate that there is in fact no registered trademark using this term.”

(2) “The Respondent is also not accurate in saying that ‘supreme ruler’ does not represent a proper or enforceable common law trademark for a product name, as trademarks using regular words are widespread, ranging from simple words such as “Apple” (US PTO Reg# 2808567, Apple Computer Co) to terms such as “Trivial Pursuit” (US PTO Reg# 2758701, Horn Abbot Ltd), and other common trademarks i.e. Burger King, General Motors, Pearl Jam, etc.”

(3) “The Respondent also makes a misleading claim regarding the results from a search at ‘dictionary.com’ – they provide a definition for ‘ruler’ as a separate word, yet do not mention that in fact dictionary.com contains no entry for the complete phrase ‘supreme ruler’ (see Annex S-3 for this search).”

The Complainant maintains that it diligently tried to register the domain name in question once it expired (and provides support for those statements) but that, unfortunately for the Complainant, the Respondent managed to acquire it first. In its supplementary filing, it noted in particular:

(1) “we had been monitoring the ownership of the Domain since before the Respondent’s stated original registration in 2002, and attempted to register it as soon as it expired from its previous owner – however, on the day it was released by the prior registrar, Network Solutions, it was immediately registered by another party, identified by Whois as ‘Domain Deluxe’ (see Annex S-4, historical Whois record cached by whois.sc on 2005-01-31), before we were able to register it ourselves.”

(2) “We were aware that the owners of the Domain prior to 2002 were no longer using the Domain, and let it expire on March 8^th 2002. We then monitored the availability on a daily basis, and in fact communicated with the Registrar, Network Solutions/VeriSign, on two occasions – May 10^th 2002 (to which VeriSign responded on May 13^th), and again on May 13^th 2002, to which they responded same day. (See Annex S-5.) Coincidentally, May 13^th was the date that the Domain was finally released and picked up by ‘Domain Deluxe’,…”

(3) “Since that time, we have made attempts to contact the Domain registrant at the contact email from the whois record, to inform them of our common law trademark of ‘Supreme Ruler’. We had never received any replies to our attempts to contact the Domain owner. …”

(4) “However, the primary reason we had not taken Domain Dispute action earlier is the prohibitive cost – I understand that for many companies, the $1500 fee is a minor expense.”

B. Respondent

The Respondent maintains that “Supreme Ruler” is a descriptive term and that it has not acquired a secondary meaning. In support of this, the Respondent refers to a Google search showing use by parties other than the Complainant of the term.

The Respondent also relies on the lapse of time between the date of initial registration (May 13, 2002) and the date of these proceedings.

The Respondent maintains that the Complainant has failed to show bad faith on its part and that its business consists – legitimately – in re-registering domain names that become available for “pay per click” services on the Internet.

In the Supplementary Response, the Respondent:

(1) accepts that there is no trademark registration for “Supreme Ruler”.

(2) states that “Respondent Did Not Allege that “Supreme Ruler” is Not a Proper Enforceable Common Law Trademark….Respondent simply argued that Complainant did not provide evidence of secondary meaning and could not do so because of the substantial third party use of this common term.”

(3) acknowledges that there is no Dictionary.com entry for “Supreme Ruler” but maintains that combinations of common words have a common meaning;

Respondent claims that it had no knowledge of Complainant or Complainant’s mark when it registered the disputed domain name, and has submitted an affidavit attesting to this claim.

 

6. Discussion and Findings

Under the Policy, paragraph 4(a), the Complainant must prove that each of the following three elements are present:

(i) the Domain Name is identical with or confusingly similar to a trademark in which the Complainant has rights; and

(ii) the Respondent has no right or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has been using the name SUPREME RULER for over twenty years. The Google searches by the Complainant and the Panel show that the term “Supreme Ruler” is very widely known on the Internet in connection with the Complainant’s computer games. Therefore, despite the fact that it is composed of two common words and that the term itself could, in some instances, be viewed as descriptive, the Panel is satisfied that, particularly with regard to Internet users, the term has acquired a secondary meaning. The domain name uses the exact name of the Complainant’s computer game. Therefore, the Panel holds that the Complainant’s rights are sufficient to satisfy the first element of paragraph 4(a) of the Policy.

In reaching this finding, the Panel rejects the Complainant’s argument that the Respondent was seeking to mislead the Panel with the results of the Google search in the Response. The Respondent stated clearly in that filing that it was excluding the references to the Complainant and moreover acknowledged that there was substantial reference to the Complainant’s computer game in the Supplemental Response.

B. Rights or Legitimate Interests

The Complainant’s case is that SUPREME RULER is not generic and that the Respondent is seeking to attract persons looking for its computer game to the Respondent’s website for gain. The Complainant also maintains that HitFarm is related to the Respondent and therefore the attempt to justify the links as being autogenerated fails.

The Respondent maintains that it has rights or legitimate interests in the domain name because it is using the descriptive term to attract Internet users for the posting of related advertising links. It does not appear to contest that the links did refer to computer games, but maintains that they were not selected by the Respondent but that they were “autogenerated pursuant to Respondent’s agreement with HitFarm.”

The Respondent notes, in the Supplementary Response, that:

“The links on supremeruler.com were auto-generated based on what terms users search for on the web site. Respondent does not deny that it communicated with HitFarm to remove the gaming links, just that there was no communication from Respondent to have the gaming links placed there.”

The Respondent also points out that the Complainant has failed to take action for over three years and that other domain name panels have found this a factor in dealing with claims.

For the Panel, there is nothing illicit, in principle, in using descriptive names to attract users to an Internet website for advertising links. However, the Panel was struck with the extent to which the “Supreme Ruler” name is known and is associated with the Complainant on the Internet. Given this strong presence, in this particular case the Respondent’s use of the domain name must generate very considerable traffic that is solely the result of the Complainant’s well-known computer games. Therefore, the Panel finds that the descriptive element is outweighed, in this instance, by the association that the name has with the Complainant in the same way as other common terms are now associated with well-known trademarks.

In reaching this decision, the Panel has noted the Respondent’s argument that the links are auto-generated. However, in the absence of more information and an explanation as to the exact role of HitFarm, this does not justify the links. The Panel fails to see how the automatic generation changes the matter. The issue is whether the domain name attracts consumers based on a common law or registered trademark whether the links are automatic or manually inserted.

Therefore, the Panel finds that Respondent does not have any rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

The Panel accepts the Complainant’s evidence that the Complainant’s computer game is well known. However, the basic issue, as in many cases under the Policy, is whether the Respondent has sought to take advantage of the Complainant’s reputation as embodied in the trademark for the Respondent’s commercial benefit.

Given the nature of these proceedings, the Panel’s ability to explore issues of bad faith is limited and it must operate based on the documents available and reasonable inferences from those documents. In the end, the Panel was not able to agree on the issue of bad faith.

For the majority, in its description of why it delayed its filing, the Complainant shows that it was very attentive to obtaining the domain name when it expired. The fact that, despite the Complainant’s efforts, the Respondent managed to register the domain name raises a reasonable inference that the Respondent was just as attentive or more so. For the Respondent to make such an effort to register the domain name belies the explanation that the words are simply descriptive. The Panel has great difficulty in accepting that a professional involved in the Internet would not have realized the value of a name that was identical to that of a well-known computer game. Further, the Panel finds that the combination of the words “supreme” and “ruler” is not very usual. On this background a majority of the Panel finds it likely that the Respondent was motivated by the Complainant’s name when registering the disputed domain name. Moreover, the Respondent did have an opportunity to deal in detail with how it managed to register the domain name despite the Complainant’s efforts in its Supplemental Response and it failed to do so. A majority of the Panel finds these factors as evidence of bad faith registration.

For the dissenting panelist, these factors, while relevant, do not show that the registration was in bad faith given the fact that there are various services that could have assisted the Respondent in registering the domain name. Although the expression “Supreme Ruler” is used in connection with the Complainant’s computer game, it may well be that the Respondent decided to register it based on superficial appeal rather than any desire to take advantage of the name of the Complainant’s computer game. Therefore, for the dissenting panelist, the Complainant failed to meet its burden of proof on this issue and there is no need to consider whether the Respondent used the domain name in bad faith.

A majority of the Panel also accepts that the use of the domain name is in bad faith as defined by the Policy. The Respondent does not appear to have invested in the site, but rather uses the traffic to generate income with advertising links. That is, in and of itself, not objectionable, but when the bulk of that traffic appears to originate with the name of the Complainant’s computer game, the use is improper. The Respondent also fails to explain the change in domain name holders when this was expressly referred to by the Complainant as one of the difficulties that it faced in following up against the domain name holder.

In reaching these decisions, the Panel has considered the Respondent’s arguments with respect to the Complainant’s delay in bringing the proceedings. However, the Complainant has sought and has successfully explained the delay in the context of its particular situation as a small-scale computer game company that developed what must be one of the early computer games.

Therefore, a majority of the Panel finds that the Respondent registered and used the domain name in bad faith within the meaning of the Policy.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, by majority decision, the Panel orders that the domain name, <supremeruler.com> be transferred to the Complainant.

Thomas Webster Presiding Panelist
Peter G. Nitter Panelist	David E. Sorkin Panelist

Date: May 17, 2006