Sky Mavis Pte Ltd. v Bradley Walters

WIPO Case No. D2024-4443

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Sky Mavis Pte Ltd. v. Bradley Walters

Case No. D2024-4443

1. The Parties

The Complainant is Sky Mavis Pte Ltd., Singapore, represented by Cooley LLP, United States of America

(“United States”).

The Respondent is Bradley Walters, Canada.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2024. connection with the disputed domain name. On November 1, 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 (On behalf of roninfarming.com owner, Identity Protection Service) and contact information in the Complaint. The Center sent an email communication to the Complainant on November 4, 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 November 12, 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 November 13, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 3, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 4, 2024.

page 2

The Center appointed Fabrizio Bedarida as the sole panelist in this matter on December 11, 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

The Complainant in this proceeding is a limited company registered in Singapore. Established in 2018, the (EVM) compatible sidechain, which the Complainant crafted specifically for developers building games with player-owned economies. The Ronin network has been available since at least December 23, 2020, and was built specifically to power Web3 games and to allow players to own and trade their in-game assets, including crypto tokens or coins. The Complainant has offered its Ronin wallet since at least February 1, 2021. The Ronin wallet supports multiple cryptocurrencies, including Ron, the native Ronin network token.

The Complainant affirms and documents that it is the owner of trademark registrations consisting of the terms “R RONIN”.

The Complainant is, inter alia, the owner of the following:

- United States trademark registration No. 7300187 for R RONIN (device) registered on February 6,

2024, first use in commerce February 1, 2021; and

- European Union trademark registration No. 018588975 for R RONIN (device) registered on May 15, The Complainant registered its <roninchain.com> domain name on June 30, 2020 and has declared that it has continuously hosted its website at “ since December 23, 2020.	2023.
The disputed domain name was registered on April 7, 2024.
The disputed domain name resolves to a website where the RONIN word trademark and an “R” logo that are purported similar to that of the Complainant’s trademark are prominently displayed. On this website a blockchain-based game under the “Ronin Farming” name, that allows users to “gather cosmic materials and convert them into crypto assets”, is presented.
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.
Notably, the Complainant contends that the disputed domain name is confusingly similar to the R RONIN trademark. In this sense, the Complainant claims: that the addition of the term “farming” does not prevent a finding of confusing similarity with the Complainant’s R RONIN trademark, which remains clearly recognizable in the disputed domain name; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; that the disputed domain name is used to misleadingly divert consumers to a game that appears to be authorized by the Complainant, appears to be built on the RONIN network, appears to offer yield farming for the Ron token, and appears to use the Ronin wallet, when this is simply not the case; and that such use does not constitute a bona fide offering of goods or services, nor does it give the Respondent rights or legitimate interests in the disputed domain name. Furthermore, the Complainant notes that its R logo and RONIN trademark were well-known in game development, blockchain,

page 3

and cryptocurrency circles at the time the disputed domain name was registered, and thus the registration of the disputed domain name (which contains a well-known trademark) amounts per se to a registration in bad faith. The Complainant claims that the Respondent is clearly intentionally attempting to attract Internet

users to its game and website, which uses the Complainant’s distinctive R logo and RONIN word trademark
in connection with a blockchain-based game, by creating a likelihood of confusion as to the source,
sponsorship, affiliation, or endorsement of its website.

In addition, the Complainant contends that the combination of the term “farming”, which is a descriptive term in the fields of blockchain and cryptocurrency, with the R RONIN trademark in the disputed domain name is likely to mislead consumers into believing that the website at the disputed domain name is associated with the Complainant or provides services related to the Complainant’s business, and that this deliberate attempt

to create confusion demonstrates bad faith use.

B. Respondent

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

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i)        the disputed domain name is identical or confusingly similar to a trademark in which the Complainant

has rights;

(ii)       the Respondent has no rights or legitimate interests in respect of 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.

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 Complainant’s trademark is reproduced almost in its entirety and is clearly 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.

Although the addition of the term “farming” in the disputed domain name may bear on an assessment of the second and third elements, the Panel finds the above 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. Moreover, the omission of an “r” in the disputed domain name does not prevent a finding of confusing similarity, and indeed, while typically disregarded, the Panel notes that the website associated with the disputed domain name uses the same style as the Complainant’s figurative trademark and resolves to a competing website, which shows a clear intent to target the Complainant’s trademark and affirms a finding of confusing similarity. WIPO Overview 3.0, section 1.15.

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

page 4

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.

Furthermore, the nature of the disputed domain name carries a risk of implied affiliation and cannot the specific choice of the additional term “farming” (commonly used in the cryptocurrency field, and unrelated to the dictionary meaning of “ronin”), as well as the content of the website at the disputed domain name, shows a clear intent to impersonate or otherwise falsely suggest a connection with the Complainant.

constitute a fair use as it effectively impersonates or suggests sponsorship or endorsement by the

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, as discussed below, it is highly likely that the Respondent was aware of the Complainant’s trademark registrations and rights to the R RONIN trademark when it registered the disputed domain name.

The disputed domain name contains, almost in its entirety, without any authorization or approval, the
Complainant’s registered R RONIN trademark.

Owing to the substantial presence established, worldwide and on the Internet, by the Complainant, it is at the least very unlikely that the Respondent, apparently operating in the same field of activity, was not aware of the existence of the Complainant, or of the Complainant’s trademark and domain name, when registering the disputed domain name.

In fact, the R RONIN trademark and the <roninchain.com> domain name, were registered several years before the Respondent registered the disputed domain name. They have since been intensively used and are therefore well-known, at least and specifically in the blockchain platform for gaming.

page 5

Noting also the composition of the disputed domain name, incorporating the Complainant’s well-known trademark with the additional term “farming”, which is a descriptive term in the fields of blockchain and cryptocurrency, and thus strictly related to the Complainant’s activities, it is more likely than not that the

Respondent, when registering the disputed domain name, had knowledge of the Complainant’s earlier rights to the R RONIN trademark. This is further affirmed by the use of a nearly identical style on the website resolving from the disputed domain name as the figurative element of the Complainant’s registered trademark.

Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4. The Panel is therefore satisfied that the Respondent registered the

disputed domain name in bad faith.

The bad faith registration and use of the disputed domain name are also affirmed by the fact that the
Respondent did not deny the assertions of bad faith made by the Complainant in this proceeding.

Finally, panels have held that the use of a domain name for illegitimate activity as here, claimed to be used to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and the products that it purports to offer on it, constitutes bad faith use of the disputed domain name for the purposes of the Policy.

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 <roninfarming.com> be transferred to the Complainant.

/Fabrizio Bedarida/
Fabrizio Bedarida
Sole Panelist
Date: December 23, 2024