RPG Life Sciences Ltd. of Mumbai, India, represented by Anand & Anand, India has just been found Guilty of Reverse Domain Name Hijacking (RDNH) on the domain RpgLife.com by a one member UDRP Panel.
The domain name was registered back on October 28, 2005
Despite generating some $47 Million in revenue in 2012-2013 the company tried to grab the domain name away from its owner without compensation.
Here are the relevant facts and findings by the one member panel:
The Complainant operates a pharmaceuticals and biotech business with operations in India, distributing product more than 30 countries.
The Complainant holds registrations for the trademarks RPG and RPG LIFE in India which it uses to designate pharmaceutical, veterinary and sanitary preparations for medical purposes.
The Indian registration for the mark RPG has been in effect since 1999 and the registration for RPG LIFE since October 2012, the latter claiming use from 1999. Approximate global revenue for sales of RPG brand product in 2012-13 was around USD $47 million.
The Respondent uses the Disputed Domain Name to resolve to a social media platform for players of games involving “role-playing” where participants pretend to be imaginary characters in fictional settings.
The Panel finds that the Complainant has rights in the mark RPG pursuant to Indian Trademark Registration No. 850255 from April 8, 1999, which predates registration of the Disputed Domain Name.
Even so, the propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358). The Panel finds that the Complainant has rights in the mark RPG.
The Complainant has submitted no cogent evidence concerning the recognition of the word “RPG” as a trademark.
It has provided a number of copies of annual reports that do provide some evidence of the extent of advertising and sales and awards given to demonstrate recognition as a good employer but this Panel finds that there is no persuasive indicia of secondary meaning in the brand that might have occurred nor any evidence that it has been known in the trade or publicly as the source of any specific goods or services. Bald assertions are no substitute for evidence. UDRP panels have said on many occasions that allegations made in these proceedings must be supported by evidence and, indeed, the Policy makes it plain enough itself in paragraph 4(a) that “[…] the complainant must prove that each of these three elements are present.” This Panel finds the Complainant has not, for the purposes of the Policy, carried its burden of proving that it enjoys common law rights in “RPG” nor “RPG LIFE”.
Turning to whether the Disputed Domain Name is identical or confusingly similar to the RPG trademark, the Panel observes that the Disputed Domain Name <rpglife.com> comprises (a) an exact reproduction of the Complainant’s trademark (b) followed by the descriptive word “life” (c) followed by the generic top level domain suffix “.com”
This Panel finds that the descriptive word “life” after the Complainant’s registered trademark is an additional element that does not serve to adequately distinguish a disputed domain name and therefore the Disputed Domain Name in this matter remains confusingly similar to the registered trademark.
This is particularly so here as the Panel also declines to find the mark is well-known.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is misleadingly directing Internet users to a “gaming and gambling” webpage and thereby acting illegitimately for the purpose of “piggybacking on the reputation and goodwill of the Complainant in India and worldwide”. The Complainant also has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark. The Complainant asserts that the use of its trade mark is unlicensed.
In its Response, Respondent offers a fulsome explanation as to how it selected and used the Disputed Domain Name, stating:
“The term ‘RPG’ is a common abbreviation in the game industry for a “Role-Playing-Game” which dates back to as early as 1974. A definition of such a game has been provided below:
“A role-playing game (RPG and sometimes roleplaying game) is a game in which players assume the roles of characters in a fictional setting. Players take responsibility for acting out these roles within a narrative, either through literal acting or through a process of structured decision-making or character development. Actions taken within many games succeed or fail according to a formal system of rules and guidelines. There are several forms of RPG. The original form, sometimes called the tabletop RPG, is conducted through discussion, whereas in live action role-playing games (LARP) players physically perform their characters’ actions. In both of these forms, an arranger called a game master (GM) usually decides on the rules and setting to be used and acts as referee, while each of the other players plays the role of a single character.
Several varieties of RPG also exist in electronic media, such as multi-player text based MUDs and their graphics-based successors, massively multiplayer online roleplaying games (MMORPGs). Role-playing games also include single-player offline role-playing video games in which players control a character or team who undertake quests, and may include capabilities that advance using statistical mechanics. These games often share settings and rules with tabletop RPGs, but emphasize character advancement more than collaborative storytelling. Despite this variety of forms, some game forms such as trading card games and war games that are related to role-playing games may not be included. Role-playing activity may sometimes be present in such games, but it is not the primary focus. The term is also sometimes used to describe role play simulation games and exercises used in teaching, training, and academic research.”
“The Respondent registered the domain name in dispute for the purpose of running a social website for the RPG player community, providing them also with a platform to discuss their RPG experiences. An extract from an archive history page from 2008 demonstrates this fact with the tagline, [“RPG LIFE: It’s a gamer’s life”] and the statement: “Welcome to RPGLife.com where we host everything about and for paper and pen role-playing. Our front page will be dedicated to what our moderators feel are the important need to know happenings in the industry. While the inside this site you’ll find much more details, feeds, and more exclusive events and blogging.” Throughout the site could be found various articles offering RPG related gaming advice, reviews, publications and forums, with the site continually being developed up until September 2013. Such valid and consistent use of the domain name for over 6 years would give rise to a finding of Respondent’s legitimate rights and interest. (See Annex 4)”.
This Panel accepts this submission as its authenticity is supported by evidence and finds that the letters RPG are, in addition to being a trade mark registered in India, a widely recognized acronym for the words “role playing game”. In this Panel’s view, in adopting that acronym the Respondent is making a legitimate commercial use of the Disputed Domain Name.
In so finding, the Panel is conscious of the serious nature of conduct that misleads the Internet using public in a pharmaceutical context.
The Panel shall refer to as the “idiot in a hurry” test, not even an idiot in a hurry could be misled that neither the Respondent’s website, nor the website it resolves to, is in any way connected with the Complainant.
The Panel finds that the Disputed Domain Name was not registered in bad faith and has not been used in bad faith.
Essentially, this is for two reasons.
First, the Panel has already noted that although the Complainant’s trademark RPG is registered in India from 1999, and it has been decided that “the propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country”
The Respondent is simply using an established acronym for the words “role playing game” in conjunction with word “life” to resolve to a webpage directed to those Internet users who like that sort of thing. That being so, there is no evidence that the Respondent was motivated by bad faith towards the Complainant at the time the Disputed Domain Name was registered. There was therefore no registration of the Disputed Domain Name in bad faith.
Secondly, there has been no use of the Disputed Domain Name in bad faith as its use for the purpose, principally, of publishing articles and advertising goods and services applicable to “role playing games”, is entirely legitimate. The Panel finds that the Disputed Domain Name is a popular and commonly used acronym or phrase and this, in turn, is a defense to an allegation of bad faith
Moreover, there is no evidence that the Respondent pretended that it was the Complainant, advertised goods that the Complainant sells, tried to confuse Internet users, sought to damage the Complainant or its business or engaged in any other bad faith activities.
The Panel finds for the Respondent on the third element of the Policy.
Reverse Domain Name Hijacking
The Respondent requests a finding of reverse domain name hijacking.
In the present case, the Panel considers that the Complainant’s professional representative should have appreciated, even on a rudimentary examination of the Policy and its application in this area, that the Complaint could not succeed where the Respondent’s Disputed Domain Name is a widely recognized acronym and is being used to promote goods and services available for purchase in that field, as it had no reasonable hope of meeting the conjunctive requirement of paragraph 4(a) of the Policy.
Accordingly, the Panel accepts the Respondent’s allegation that the Complaint was filed in willful disregard of the requirements of the Policy. It is clear to the Panel that the Complainant knew or ought to have known that the Respondent’s registration and use of the Disputed Domain Name could not, under any fair interpretation of the reasonably available facts, have constituted registration and use in bad faith. The Panel therefore finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Initiating domain name dispute resolution proceedings necessarily involves putting the parties to a considerable expenditure of time and in many cases cost and the Policy must not be used unless the complainant has a reasonable and credible belief it is entitled to succeed. In particular, proceedings must not be commenced in an unjustifiable attempt to pressure a domain name owner into releasing a legitimately held domain name predating any trademark rights held by the complainant,
Further, the Complaint has misconceived the nature of UDRP proceedings in citing other domain names registered by the Complainant that contain the words “rpg life” including the following domains <rpglife.biz>, <rpglife.co.in>, <rpglife.in>, <rpglife.info> and <rpglife.org> as evidence that “clearly shows that our client has exclusive rights in domain names contained in the mark RPG LIFE”. UDRP proceedings are concerned with abusive registration of domain names and are not a test of who has the better rights to a disputed domain name nor who holds the most similar domain names.
Finally, it should also be said that it was the Complainant who, on no evidence at all, accused the Respondent of acting in bad faith and that there was “no plausible explanation” as to the Respondent’s use (and presumably choice) of the Disputed Domain Name.
That, itself, is an act of bad faith and is part of the reason why the Panel has made the finding of Reverse Domain Name Hijacking.
Such allegations should not be made lightly or without cogent evidence to support them and certainly not where, after obtaining instructions, it must have been apparent to the Complainant that no such allegation could properly be made against the Respondent. Indeed, in a curious inversion of the roles of the Complainant and the Respondent, it was the Complainant who tendered evidence that the Respondent’s website was ostensibly concerned with Role Playing Games and activities associated with it and hence entirely legitimate and in good faith.
The Panel therefore makes a finding of Reverse Domain Name Hijacking.