Riot Games, Inc. / Samuel A. Park v Kartunenko Mykola

WIPO Case No. D2024-0868

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Riot Games, Inc. / Samuel A. Park v. Kartunenko Mykola

Case No. D2024-0868

1. The Parties

The Complainant is Riot Games, Inc. / Samuel A. Park, United States of America (“United States” or “US”), represented by JK Hyungjun Kim, Republic of Korea.

The Respondent is Kartunenko Mykola, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <lecesports.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com

(the “Registrar”).

3. Procedural History

The Complaint was f iled with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2024. On March 1, 2024, the Center transmitted by email to the Registrar a request for registrar verif ication in connection with the disputed domain name. On March 2, 2024, the Registrar transmitted by email to the Center its verif ication response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verif ied that the Complaint satisf ied 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 notif ied the Respondent of the Complaint, and the proceedings commenced on March 6, 2024. In accordance with the Rules, paragraph 5, the due date for Response was March 26, 2024. The Respondent submitted email communications which were received by the Center on March 6, 2024, March 9, 2024 and March 20, 2024. Following receipt of this third email, the Complainant submitted an unsolicited supplemental filing on March 26, 2024. Also, on March 26, 2024, the Respondent submitted a further email. Accordingly, the Center notif ied Commencement of Panel Appointment Process on March 28, 2024.

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The Center appointed Warwick A. Rothnie as the sole panelist in this matter on April 8, 2024. The Panel f inds 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 produces, manufactures, and distributes globally a range of electronic games. One of these games is “League of Legends”.

The Complainant also organizes and runs a professional esports league in Europe under the name “League of Legends European Championship”. Games or competitions in this League are viewed by a live audience but are also streamed online to a worldwide audience. According to the Complaint, this league has been promoted under the trademark LEC since 2011 – although the Complaint does not include evidence in support of this claim.

The Complaint does include evidence, however, that the Complainant has a number of registered trademarks. These include:

(a)	United Kingdom Registered Trademark No UK00003783840, LEC, which was registered on September 5, 2011 (with effect from April 14, 2011) in respect of games sof tware and amusements, shows, film production and rental of f ilms and sporting activities in International Classes 9 and 41;
(b)	European Union Registered Trademark (“EUTM”) No 018664722, LEC, which was registered on September 5, 2011 in respect of the same goods and services; and
(c)	United States Registered Trademark No 6,563,238, LEC and device, which was registered in the Principal Register on November 16, 2021 in respect of a range of services in International Class 41 including arranging and conducting live competitions featuring video games – amongst many other things. According to the details recorded on the Register, the Complainant claims that this trademark was f irst used in commerce in January 2019.

The disputed domain name was registered on August 17, 2022.

It resolves to a website headed “LEC European Circuit”. According to the “About Us” page, which the Panel has visited, “THE LEC EUROPEAN CIRCUIT - is an esports league in the, [sic] the purpose of which is to develop and popularize the gaming industry in Europe. The tournament will be attended by 16 teams that compete for a prize fund of $15,000.”

5. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the
Complainant must demonstrate each of the following:

(i)        the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.

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

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Apart f rom documents requested by the Panel pursuant to paragraph 12 of the Rules, neither the Policy nor the Rules expressly provide for supplemental filings. Their admissibility is therefore in the discretion of the Panel bearing in mind the requirements under paragraph 10 of the Rules to ensure that the proceeding is conducted with due expedition and both parties are treated equally, with each party being given a fair opportunity to present its case.

Although the Complaint does not refer expressly to the EUTM, it was included in the Annexes and, as noted above, the Respondent did respond following receipt of the unsolicited supplemental f iling.

In these circumstances, it is not clear to the Panel what the proposed supplemental filing adds but the Panel notes its submission did provide the Respondent with an opportunity to further explain its position. Solely on that basis, therefore, the Panel admits both unsolicited supplemental f ilings into the record.

A. Identical or Confusingly Similar

It is well accepted that the f irst 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. In particular, the Complainant has registrations for LEC in both the United Kingdom and the European Union.

The entirety of the mark is reproduced within the disputed domain name. Although the addition of other terms – here, “esports” – may bear on assessment of the second and third elements, the Panel f inds 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. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, sections 1.7 and 1.8.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the
Respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of , or demonstrable

preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in
connection with a bona f ide of fering of goods or services; or

(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or

(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name,

without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service
mark at issue.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

While 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 often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the

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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. 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.

The Respondent registered the disputed domain name well af ter the Complainant had registered its trademark and also well af ter the Complainant claims to have begun using its trademark.

The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent af f iliated with it.

The disputed domain name is not derived f rom the Respondent’s name. Nor is there any suggestion of some other name by which the Respondent is commonly known from which the disputed domain name could be derived. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name.

The Respondent contends that “lecesports” will not be confused with the trademark LEC, arguing that there is no more conflict between the disputed domain name and LEC than if the Complainant were seeking to block someone f rom using “lecture”.

“lecture”, however, is an ordinary dictionary word in English with a specific meaning unrelated to the field the Complainant and the Respondent operate in – esports and, in particular, a professional esports league.

Further, somewhat circuitously, the disputed domain name resolves to a webpage where the Respondent identif ies its competition as “LEC European Circuit”.

Further still, the Respondent has not sought to explain how it came to adopt LEC as either part of , and arguably, the distinctive component of the name of its esports competition or of the disputed domain name. As the Complainant contends, there is no suggestion that LEC is derived f rom the Respondent’s name in some fashion and, even allowing for the fact that LEC is or can be seen as a three letter acronym, it does not appear to be a natural or descriptive term for esports. Notwithstanding that LEC is a three letter acronym, therefore, the disputed domain name carries a very high risk of misrepresenting a connection or association with the Complainant in the present case which, as discussed in section 5A above, the addition of the descriptive term “esports” does nothing to dispel. Accordingly, the Panel does not accept the Respondent’s contention.

Further, the adoption of the disputed domain name so long af ter the Complainant registered its trademark and use of the disputed domain name directly in conflict with the Complainant’s trademark does not qualify as a good faith of fering of goods and services under the Policy.

The Respondent also alleges that the Complainant has been continuing to trade in the Russian Federation following the invasion of Ukraine. The Respondent further alleges that the Complainant is acting illegally under US law. These allegations appear to be directed to a contention that the Complainant has lost its rights or in some way confer rights or legitimate interests on the Respondent.

The Panel cannot accept this contention. Apart f rom the fact that the allegations are unsupported by evidence, the question of alleged illegality and, if so, its effects (if any) on the Complainant’s registered rights in the European Union and the United Kingdom are not matters a panel would usually be in a position to determine under the Policy. So far as the Panel is in a position to determine, the Complainant is the holder of the registered trademarks in the European Union and the United Kingdom identif ied in section 4 above and proceedings on the papers under the Policy are not an appropriate forum for the determination of the continuing validity of those registrations. That is something more appropriately dealt with under the laws and in accordance with the procedures of the relevant jurisdictions.

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Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.

C. Registered and Used in Bad Faith

Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.

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. These are example only and not an exhaustive listing of the circumstances in which registration and use in bad faith may be found.

For the reasons discussed in section 5B above, it appears that the Respondent has registered the disputed domain name and is using it in direct conflict with the Complainant’s rights. Such use carries a very high potential to misrepresent that the Respondent’s competition is the competition of the Complainant or in some way associated with the Complainant. Accordingly, the Panel considers the circumstances fall within at least the terms of paragraph 4(b)(iv):

“by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for
commercial gain, Internet users to [the Respondent’s] web site 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 [the Respondent’s] website or location or of a product or service on [the Respondent’s] web site or

location.”

The Panel, therefore, f inds that the Complainant has established the third element of the Policy.

6. 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 <lecesports.com> be transferred to the Complainant.

/Warwick A. Rothnie/
Warwick A. Rothnie
Sole Panelist
Date: April 22, 2024