Riot Games, Inc. v rema rinker

WIPO Case No. D2024-3060

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Riot Games, Inc. v. rema rinker

Case No. D2024-3060

1. The Parties

The Complainant is Riot Games, Inc., United States of America (“United States”), represented by Marq

Vision Inc., the Republic of Korea.

The Respondent is rema rinker, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <esport-valorant.com> is registered with Hostinger Operations, UAB (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2024. On connection with the disputed domain name. On July 29, 2024, 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 (Unknown / Domain Admin, Privacy Protect, LLC (PrivacyProtect.org)) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 29, 2024, 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 July 30, 2024.

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 5, 2024. In accordance with the Rules, paragraph 5,
the due date for Response was August 25, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on August 28, 2024.

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The Center appointed Marilena Comanescu as the sole panelist in this matter on September 3, 2024. 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.

Upon reviewing the case file, the Panel issued the Procedural Order No. 1 and invited the Center to communicate the Complaint to the Parties together with its annexes, allowing the Respondent a five-day period in which it may indicate whether it wishes to submit a response. The Respondent did not submit any response.

4. Further Procedural Considerations

Under paragraph 10 of the Rules, the Panel is required to ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case, and also that the administrative proceeding takes place with due expedition.

Since the Respondent’s mailing address is stated to be in Ukraine which is subject to an international conflict at the date of this Decision that may impact case notification, it is appropriate for the Panel to consider, in accordance with its discretion under paragraph 10 of the Rules, whether the proceeding should continue.

Having considered all the circumstances of the case, the Panel is of the view that it should. The Panel notes that the Respondent’s reported mailing address includes a street name and a building number in Kyiv which does not seem to exist. The Panel further notes, however, that the Center also sent the written notice of the Complaint to the Respondent’s facsimile number provided by the Registrar, and Notification of Complaint by email to the Respondent at its email address as registered with the Registrar and to a postmaster email

address as specified by the Rules. There is no evidence that the case notification email to the first email
address was not successfully delivered.

It is moreover noted that, for the reasons which are set out later in this Decision, the Panel has no serious doubt (albeit in the absence of any Response) that the Respondent registered and has used the disputed domain name in bad faith and with the intention of unfairly targeting the Complainant’s goodwill in its

trademark. The Panel concludes that the Parties have been given a fair opportunity to present their case,
and so that the administrative proceeding takes place with due expedition the Panel will proceed to a

Decision accordingly.

5. Factual Background

The Complainant, a United States company incorporated on May 9, 2006, is recognized for its production, development, and distribution of online games under the brand name “Riot Games”.

The Complainant owns registered trademarks for VALORANT, such as the following:

- the European Union trademark registration number 018199063 for VALORANT (word), filed on February
20, 2020, registered on July 7, 2020, covering goods and services in International classes 9, 16, 18, 20, 25,

28, 38, and 41; and

- the United States trademark registration number 6450143 for VALORANT (word), filed on February 20,
2020, registered on August 10, 2021, covering services in International class 41.

The game under the trademark VALORANT is a free-to-play multiplayer tactical first-person shooter game developed and published by the Complainant. Since its release, the game has gained a large and dedicated player base, with regular updates and new content released by the Complainant.

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The Complainant actively promotes its trademark through its official website linked to the domain name
<playvalorant.com>.

The disputed domain name was registered on April 29, 2024, and, at the time of filing of the Complaint, it was not actively used.

6. 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.

Notably, the Complainant contends that it is well known in the online gaming industry with popular games like “League of Legends” and “Valorant” and that it has significantly impacted the esports industry by organizing and promoting major esports tournaments and leagues; the disputed domain name is confusingly similar to its trademark since it incorporates it with the additional term “esport”, a term recognized by dictionaries as being an abbreviation for the words “electronic sports” and, therefore, the disputed domain name effectively translates to “Valorant Electronic Sports”, thus creating a notable and confusing resemblance to the Complainant’s trademark and identity; the Respondent has no rights or legitimate interests in the disputed domain name; the Respondent is not an affiliated company or licensee of the Complainant; the Respondent has registered and is using the disputed domain name in bad faith, the apparent lack of so called use of a domain name (passive holding), does not, as such, prevent a finding of bad faith; it is challenging to find a plausible explanation for the Respondent’s choice of the disputed domain name other than to attract gamers and mislead Internet users in a deliberate attempt to impersonate the Complainant and deceive users, demonstrating bad faith registration and use.

Between July 17, 2024 and July 26, 2024 the Complainant contacted the Registrar to request the transfer of the disputed domain name. No response was received.

B. Respondent

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

7. Discussion and Findings

Under the Policy, the Complainant is required to prove on the balance of probabilities that:

(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 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

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.

Based on the available record, the Panel finds 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.

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The Panel finds the mark VALORANT is recognizable 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.

While the addition of other term, here “esport” and a hyphen, 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.

The Panel notes that the composition of the disputed domain name, which incorporates the Complainant’s mark together with a term associated with the Complainant’s goods and services related to competitive gaming under the mark VALORANT, carries a risk of implied affiliation. UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. WIPO Overview 3.0, section 2.5.1.

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 disputed domain name was registered in bad faith, likely with knowledge of the Complainant, its trademark and business particularly because the disputed domain name incorporates the Complainant’s trademark preceded by a term describing the core activities of the

Complainant, i.e., “esport” which is an abbreviation for “electronic sports”, and the trademark VALORANT predates the registration of the disputed domain name by about four years.

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.

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At the time of filing of the Complaint, according to the Complaint, the disputed domain name was not actively used.

Panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not the combination of the Complainant’s trademark and the term “esports” coming from “electronic sports”, descriptive for the Complainant’s core activity); the Respondent’s failure to respond to the present proceedings; provision of incomplete or inaccurate contact details in the WhoIs ; and the implausibility of any good faith use to which the disputed domain name may be put, and finds that, in the circumstances of this case, the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.

prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3.

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

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 <esport-valorant.com> be transferred to the Complainant.

/Marilena Comanescu /
Marilena Comanescu
Sole Panelist
Date: September 29, 2024