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ADMINISTRATIVE PANEL DECISION
inXile Entertainment, Inc. v. Wietse de Vries
Case No. D2007-0232
1. The Parties
The Complainant is inXile Entertainment, Inc., of Newport Beach, CA, United States of America, represented by Rutan & Tucker, LLP, United States of America.
The Respondent is Wietse de Vries, of Houten, Netherlands, represented by Bosselaar & Strengers Advocaten,
2. The Domain Name and Registrar
The disputed domain name, <linerider.org>, (the “Domain Name”)
is registered with Go Daddy Software (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2007. On February 20, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 20, 2007, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 27, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 19, 2007. The Response was filed with the Center on March 19, 2007.
The Center appointed Tony Willoughby as the sole panelist in this matter on April 2, 2007. 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.
On April 5, 2007, the Panel issued a Procedural Order seeking further information from the parties. The Complainant responded on April 11, 2007, and the Respondent responded on April 13, 2007. The further information provided is set out below.
The issuance of the Procedural Order and consideration of the responses rendered
the Panel unable to provide the decision by the projected decision date (April 16, 2007),
hence the delay until to-day (April 20, 2007).
4. Factual Background
On September 23, 2006, a Slovenian designer, Bostjan Cadez, first published online at the website, “www.deviantart.com”, an online game which he had created and named “Line Rider”. The Complainant claims (without evidentiary support) that Mr. Cadez had been using the name for the game since May 2006.
On October 11, 2006, the Respondent registered the Domain Name and shortly thereafter connected it to a website which he designed as a site for devotees of the game.
On November 8, 2006, the Complainant filed a trademark and service mark application with the USPTO for the word mark LINE RIDER in classes 9, 28 and 42 for video and computer game software and related goods and services.
On November 9, 2006, Mr. Cadez entered into an “Exclusive License Agreement” with the Complainant whereby Mr. Cadez granted to the Complainant “the exclusive (even as to licensor), perpetual, irrevocable, worldwide license to fully exploit [a beta interactive software art program currently known as ‘Line Rider’]”. The Agreement also included the following provisions:
1. “Licensor also hereby grants [the Complainant] the right to seek trademark registrations anywhere in the world for LINE RIDER”;
2. “Licensor shall retain his ownership rights, including the copyright, in and to the [game]”;
3. “[Complainant] shall have all rights to any and all LINE RIDER trademarks;
4. “Licensor represents and warrants that: … (ii) Licensor has not previously granted, assigned or licensed any right, title or interest in the [game] or the LINE RIDER name to any third party.
On December 22, 2006, one of the Respondent’s friends, acting on the Respondent’s behalf, approached the Complainant by email seeking permission to feature the “Line Rider” game on the Respondent’s website. The email exchanges continued through to January 2, 2007. The Complainant insisted that anyone wishing to play the game had to do so via the Complainant’s website. Nonetheless, the Complainant was prepared to do a deal with the Respondent involving traffic emanating from the Respondent’s website and made the Respondent a commercial proposal. The last message in the papers before the Panel is a request from the Respondent seeking further information.
The Domain Name is connected to a website, which is broadly a fan site, but
which from time to time has (a) enabled visitors to download the game and (b)
offered for sale “Line Rider” t-shirts and other merchandise.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to a trademark or service mark in which it has rights. It points to its US trademark application and to the terms of its Exclusive License Agreement with Mr. Cadez. It also relies upon the use that it states that Mr. Cadez made of the “Line Rider” name since May 2006.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. It contends that the Respondent owns no relevant trademark or service mark rights. It contends that the Respondent is using the “Line Rider” name and the Domain Name in association with an offering of the game, which infringes Mr. Cadez’s copyrights, being copyrights in respect of which the Complainant is the exclusive licensee, and is not therefore using the Domain Name in respect of a bona fide offering of goods or services. The Complainant asserts that the Respondent has no licence to use the name whether for the Domain Name or otherwise and is not using it for a purpose covered by Paragraph 4(c)(iii) of the Policy.
The Complainant contends that the Respondent registered the Domain Name in bad faith on the back of the fame of the Complainant’s LINE RIDER trademark and service mark and the “Line Rider” game.
The Complaint contends that the Respondent is using the Domain Name to divert traffic from the Complainant to the Respondent and is using the Domain Name to attract click-per-view revenue and in so doing is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Finally, the Complainant contends that the Respondent is holding the Domain Name to prevent the Complainant from owning the Domain Name.
The Respondent denies that the Complainant has any trademark or service mark rights in respect of the name “Line Rider”. The Respondent denies that the Exclusive License Agreement gives to the Complainant any trademark rights. The Respondent contends that the Complainant’s trademark and service mark application gives to the Complainant no relevant rights insofar as the Policy is concerned and was in any event a bad faith application in that it was made with knowledge of the Respondent’s previous successful exploitation of the name.
The Respondent contends that the Complainant cannot invoke its claimed trademark or service mark rights against the Respondent. The Respondent asserts that he registered the Domain Name with the permission of Mr. Cadez and developed the website in consultation with Mr. Cadez weeks before the Complainant arrived on the scene. He asserts that the development of the website involved significant effort and became an immediate success, now generating 125,000 hits per day.
The Respondent contends that throughout he has acted in good faith. He exhibits to the Response what he claims are a series of email exchanges with Mr. Cadez in October/November 2006. [The Panel comments on this material in the next section].
The Respondent contends that his use of the Domain Name constitutes a bona fide offering of goods and services within the meaning of paragraph 4(c)(i) of the Policy. He claims that for the purposes of this proceeding the Complainant’s allegations of copyright infringement should be ignored in that the Complainant has based its complaint solely on the alleged trademark and service mark rights.
The Respondent denies that the Domain Name was registered or is being used in bad faith and refers to the matters set out above.
Finally, the Respondent exhibits the series of email exchanges between the
parties referred to in section 4 above.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) The 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 Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant contends that the Domain Name is identical or confusingly similar to a trademark or service mark in which it has rights, namely LINE RIDER. The Respondent does not deny that the Domain Name is identical or confusingly similar to the name “Line Rider”, but denies that the Complainant has any trademark or service mark rights in the name.
The Complainant has produced in evidence the Exclusive License Agreement, which is more particularly described in section 4 above. While it is expressed to be a licence agreement, insofar as the name “Line Rider” is concerned, as can be seen from the extracts quoted in section 4 above, it has all the hallmarks of an assignment.
There are no relevant registered rights and, as the Respondent correctly observes, the Complainant’s US trade/service mark application is irrelevant for the purpose of establishing rights under the first element. It confers no rights.
There is very little before the Panel to indicate what, if any, unregistered trademark rights Mr. Cadez had to license or assign in November 2006. Moreover, the Complainant produces no evidence at all as to its goodwill developed under and by reference to the “Line Rider” name. Ironically, the best evidence as to Mr. Cadez’s unregistered rights is the Respondent’s evidence as to the success of his website devoted to the game and connected to and accessible via the Domain Name. The Panel concludes that that success probably occurred on the back of an identifiable goodwill under the “Line Rider” name.
Accordingly, the Panel finds that the Domain Name is identical to a trademark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
In light of the Panel’s finding under the next succeeding heading of bad faith it is unnecessary for the Panel to make a finding on this topic.
C. Registered and Used in Bad Faith
At the time of registration of the Domain Name all rights in respect of the “Line Rider” game and name were apparently owned by Mr. Cadez.
The Respondent claims that he registered the Domain Name with the permission of Mr. Cadez and developed the website in consultation with Mr. Cadez. In support of these claims he produces in evidence what purport to be email exchanges between him and Mr. Cadez, the earliest of which is dated October 20, 2006. These emails have been produced in a form, which makes it difficult for the Panel to be wholly satisfied as to their authenticity. However, even assuming that they are authentic (and they may be authentic), while they contain references to the Domain Name and to the content of the Respondent’s website, they do not support the claim that the Respondent registered the Domain Name with Mr. Cadez’s permission and to say that the website was developed in consultation with him is somewhat stretching it. However, those exchanges, if authentic, certainly show that Mr. Cadez was aware of the Domain Name and the use that the Respondent was making of it and did not object.
If the factual background had been simpler and it had been the Complainant who had created and developed the game and given it its name and the Respondent who had taken the name for the Domain Name without authority and had used it without authority to attract business from devotees of his game to his site, the Panel would have had little difficulty in coming to a finding of bad faith registration and use.
As it is, it is possible that Mr. Cadez did (as the Respondent asserts) give permission to the Respondent to register the Domain Name and it seems to be the case that two or three weeks later the Respondent and Mr. Cadez were in email contact discussing the website connected to the Domain Name, yet Mr. Cadez made no objection to the Domain Name or its use.
The Panel notes the warranty given by Mr. Cadez to the Complainant in the Exclusive License Agreement that he had not previously licensed any right, title or interest in the “Line Rider” name to any third party, but in the absence of any direct evidence from Mr. Cadez, the Panel is not prepared in the circumstances to assume that Mr. Cadez had the Domain Name in mind when he gave that warranty.
The Panel is surprised that the Complainant made no mention in the Complaint of the email exchanges it had had with the Respondent over the content of the Respondent’s website and is surprised, given the allegations made in the Complaint, that in those exchanges the Complainant made no complaint about the Domain Name. In one of his emails the Complainant’s CEO stated: “We are happy for [the Respondent] to keep his web site up with forums, tips, downloads etc etc. But if the users want to actually play Line Rider they come to the official site where Bostjan [Mr. Cadez] makes his money from”.
At all events, the Panel is not satisfied that the Domain Name was registered
in bad faith.
For all the foregoing reasons, the Complaint is denied.
Dated: April 20, 2007