Digital Extremes Ltd. v Piyush Roy

WIPO Case No. D2025-3269

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Digital Extremes Ltd. v. Piyush Roy

Case No. D2025-3269

1. The Parties

The Complainant is Digital Extremes Ltd., Canada, represented by Mitchell, Silberberg & Knupp, LLP, United

States of America (“US”).

The Respondent is Piyush Roy, India.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2025. connection with the disputed domain name. On August 15, 2025, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Redacted for Privacy, Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on August 18, 2025, 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 amendment to the Complaint on August 21, 2025.

The Center verified that the Complaint together with the amendment 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 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on August 26, 2025. In accordance with the Rules, paragraph
5, the due date for Response was September 15, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on September 16, 2025.

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The Center appointed David Stone as the sole panelist in this matter on October 1, 2025. 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 a Canadian corporation founded in 1993 that develops and publishes video games. One of the Complainant’s most popular games is “Warframe”, which was released in 2013 and has more than 50 million players worldwide today.

The Complainant owns the following trademarks (among others) for WARFRAME (the “Mark”):

- US Trademark Registration No. 4,419,480 registered on October 15, 2013, in international classes 9
and 41;

- US Trademark Registration No. 4,659,588 registered on December 23, 2014, in international classes
16, 20, and 25;

- European Union Trademark Registration No. 011792215 registered on September 25, 2013, in
international classes 9, 16, 41 and 42; and

- European Union Trademark Registration No. 015530678 registered on October 13, 2016, in
international classes 16, 20 and 28.

Since at least 2013, the Complainant has owned and operated its official website at “ merchandise) through its online store.
Since at least 2014, the Complainant has operated an online store at the sub-domain <store.warframe.com>.

On August 1, 2022, the Respondent registered the disputed domain name. The Complainant has provided evidence that the Respondent previously hosted at the disputed domain name a website which: (i) used the Mark prominently and repeatedly, including in the top left-hand corner where Internet users would expect to find the name of the website operator; (ii) used prominently and repeatedly the Complainant’s figurative device for its “Wargame” video game, in respect of which the Complainant has trademark registrations in the US and Canada; and (iii) claimed to be the official merchandise website of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Under the first element, the Complainant contends that the disputed domain name contains the entirety of the Mark and adds only the abbreviated word “merch”. The added word “merch” increases confusing similarity because it is similar to the subdomain on the Complainant’s website offering true official merchandise. The Complainant also contends that the “merchandise” offered by the Respondent consists of goods in categories that the Complainant itself offers through its own store, and which are covered by the Complainant’s trademark registrations, such as t-shirts displaying the Mark.

Under the second element, the Complainant contends that it has never authorized the Respondent to register the disputed domain name or any domain name containing the Mark. Nothing at the website hosted at the disputed domain name suggests that the Respondent is known by (or ever has been known by) the disputed domain name, beyond its attempts to create a false association with the Complainant. The Complainant also contends that the Respondent is not making legitimate noncommercial or fair use of the disputed domain name, through which it offers unauthorized merchandise under the Mark.

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Under the third element, the Complainant contends that the Respondent intentionally registered the disputed domain name in order to misappropriate and trade off the Mark, and to capitalize on consumer confusion by directing consumers to an unauthorized website claiming to sell “official” merchandise under the Mark. The Complainant also contends that the Respondent has actual knowledge of the Complainant’s rights in its Mark

because it expressly refers to the Complainant as the “developer and publisher” of the “Wargame” video

game on the website hosted at the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the Mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the Mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms (here “merch”) may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

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Further, the website to which the disputed domain name resolves does not appear to fall under the safeguards of fair use envisioned under section 2.8 of the WIPO Overview 3.0, given there is no accurate and prominent disclaimer on the website as to the lack of association with the Complainant. To the contrary, the website claims to be the official merchandise website of the Complainant.

Panels have held that the use of a domain name for illegitimate activity, here, impersonation/passing off, or other types of fraud can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the Respondent hosted at the disputed domain name a website which: (i) used the Mark prominently and repeatedly, including in the top left-hand corner where Internet users would expect to find the name of the website operator; (ii) used prominently and repeatedly the

Complainant’s figurative device for its WARGAME video game, in respect of which the Complainant has
trademark registrations in the US and Canada; and (iii) claimed to be the official merchandise website of the
Complainant.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

Panels have found that evidence of a respondent seeking to cause confusion supports a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark. WIPO Overview 3.0, section 3.1.4.

The Panel finds that the content of the website at the disputed domain name is suggestive of bad faith because it is evidence of the Respondent seeking to cause confusion. The statement on the Respondent’s website that it is the official merchandise website of the Complainant is false. That statement and the prominent and repeated uses by the Respondent of the Complainant’s marks (including the Mark) show an intention of the Respondent to confuse and thereby attract Internet users to its website for commercial gain.

Further, panels have held that the use of a domain name for illegitimate activity, here, claimed impersonation/passing off, or other types of fraud constitutes bad faith. WIPO Overview 3.0, section 3.4.

Furthermore, the Respondent has not attempted to refute any of the Complainant’s contentions, which casts additional doubt on the nature of its conduct. WIPO Overview 3.0, section 3.2.1.

Having reviewed the record, the Panel concludes that the actions of the Respondent in choosing the disputed domain name were aimed at attracting, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s Mark. The Panel therefore concludes that the disputed domain name was registered and is being used in bad faith

The Panel finds that the Complainant has established the third element of the Policy.

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7. Decision

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

/David Stone/ David Stone Sole Panelist Date: October 14, 2025