Riot Games, Inc. v Thomas Morado

WIPO Case No. D2024-1083

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Riot Games, Inc. v. Thomas Morado

Case No. D2024-1083

1. The Parties

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

Vision Inc., Republic of Korea.

Respondent is Thomas Morado, United States.

2. The Domain Name and Registrar

The disputed domain name <leagueoflegends-airdrop.world> (the “Disputed Domain Name”) is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2024.
On March 13, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the Disputed Domain Name. On March 13, 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) and contact information in the Complaint. The
Center sent an email communication to Complainant on March 14, 2024, providing the registrant and contact
information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint.

Complainant filed an amendment to the Complaint on March 14, 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 Respondent of the Complaint, and the proceedings commenced on March 20, 2024. In accordance with the Rules, paragraph 5, the due date for Response was April 9, 2024. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 10, 2024.

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The Center appointed Douglas M. Isenberg as the sole panelist in this matter on April 15, 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.

4. Factual Background

Complainant states that it “produces, manufactures, and distributes online games and merchandise under
the trademark ‘LEAGUE OF LEGENDS’, which is a registered trademark in the USA and abroad.” In support
thereof, Complainant has provided evidence of the following registrations (the “LEAGUE OF LEGENDS
Trademark”):

- US Reg. No. 3,756,125 (registered March 2, 2010) for LEAGUE OF LEGENDS, for use in connection with, inter alia, computer game software and comic books;

- US Reg. No. 4,576,135 (registered July 29, 2014) for LEAGUE OF LEGENDS, for use in connection with, inter alia, figurines and clothing;
- US Reg. No. 6,782,216 (registered July 5, 2022) for LEAGUE OF LEGENDS, for use in connection with, inter alia, online computer games and video games;

- US Reg. No. 6,851,089 (registered September 20, 2022) for LEAGUE OF LEGENDS, for use in

connection with, inter alia, downloadable video game software.

The Disputed Domain Name was created on February 28, 2024. Complainant states that “access to the website is blocked at the current moment, however, the disputed domain name was previously utilized to deceive game players into purchasing fake ‘League of Legends’ game tokens, falsely presented as

cryptocurrency rewards for in-game challenges.”

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the

Disputed Domain Name.

Notably, Complainant contends that:

- Complainant has rights in the LEAGUE OF LEGENDS Trademark as a result of the registrations cited above, and the Disputed Domain Name is identical or confusingly similar to the LEAGUE OF LEGENDS Trademark because the Disputed Domain Name “incorporates the Complainant’s trademark ‘LEAGUE OF

LEGENDS’ in its entirety,” and “inclusion of the descriptive term ‘-airdrop’, along with the generic top-level domain extension ‘.world’… fails to mitigate the confusing similarity to the Complainant’s well-established trademark rights.”

- Respondent has no rights or legitimate interests in the Disputed Domain Name because “(i) the trademark or service mark rights; (iii) the Respondent has not been authorized by the Complainant to use its well-known mark; (iv) no actual or contemplated bona fide or legitimate use of the disputed domain name can be claimed since the Respondent is not licensed or permitted by the Complainant to use its mark; and (v) the disputed domain name is registered in a form that involves the identical incorporation of the registered trademark ‘LEAGUE OF LEGENDS’, with the mere addition of the term ‘-airdrop’ and the generic top-level domain extension ‘.world’.”

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- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “[g]iven the disputed domain name with the Complainant’s reputable platform” in an “attempt to deceive users into providing confidential information and purchasing fraudulent cryptocurrency under the guise of official affiliation with the Complainant,” causing “some ‘League of Legends’ game players [to] … fall[] victim to this deception, resulting in financial losses.”
renowned and distinctive nature of the ‘League of Legends’ trademarks, it is evident that at the time of
registration, the Respondent must have been aware of the Complainant and its trademarks”; “a simple
trademark search or internet query would have revealed the Complainant’s trademark registrations”; and

“the fact that the URL link associated with the disputed domain name was temporarily posted on the

B. Respondent

Respondent did not reply to 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
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.

Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy, namely, the LEAGUE OF LEGENDS Trademark. WIPO Overview 3.0, section 1.2.1.

The entirety of the LEAGUE OF LEGENDS Trademark 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, a hyphen and the words “air” and “drop”, may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the Disputed Domain Name and the LEAGUE OF LEGENDS Trademark 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 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.

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Having reviewed the available record, the Panel finds Complainant has established a prima facie case that rebutted 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 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. 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.

In the present case, the Panel notes that Complainant appears to have alleged bad faith pursuant to paragraph 4(b)(iv) of the Policy: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.” Specifically, Complainant has stated that Respondent used the Disputed Domain Name in an “attempt to deceive users into providing confidential information and purchasing fraudulent cryptocurrency under the guise of official affiliation with the Complainant,” causing “some ‘League of Legends’ game players [to] … fall[] victim to this deception, resulting in financial losses.” Although Complainant has provided no evidence of this deception, Complainant has provided a screen shot of Respondent’s post publishing a link related to the Disputed Domain Name “introducing the League of Legends Token ($LOL Token), and Respondent has done nothing to refute Complainant’s allegation.

Further, the Disputed Domain Name is no longer active. Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. Although panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement). WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel 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.

The Panel finds that 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 <leagueoflegends-airdrop.world> be transferred to the Complainant.

/Douglas M. Isenberg/
Douglas M. Isenberg
Sole Panelist
Date: April 24, 2024