URS DEFAULT DETERMINATION


ZeniMax Media Inc. v.
Claim Number: FA2106001953301


DOMAIN NAME

<theelderscrolls.online>


PARTIES


   Complainant: ZeniMax Media Inc. of ROCKVILLE, MD, United States of America
  
Complainant Representative: DLA Piper LLP (US) Gregory C. Esau of Washington, DC, USA

   Respondent: Lucas Papadimitriu of Dilbeek, Vlaams Brabant, II, BE
  

REGISTRIES and REGISTRARS


   Registries: DotOnline Inc.
   Registrars: Go Daddy, LLC

EXAMINER


   The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
   Ms. Kateryna Oliinyk, as Examiner

PROCEDURAL HISTORY


   Complainant Submitted: June 29, 2021
   Commencement: June 30, 2021
   Default Date: July 15, 2021
   Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").

RELIEF SOUGHT


   Complainant requests that the domain name be suspended for the life of the registration.

STANDARD OF REVIEW


   Clear and convincing evidence.

FINDINGS and DISCUSSION



   Findings of Fact: Complainant owns the trademarks and service marks related to the computer and video game programs and franchise titled THE ELDER SCROLLS®, including, inter alia, the following U.S. trademarks: - THE ELNDER SCROLLS, U.S. Reg. no. 1,943,732, registration date: Dec. 26, 1995, for ‘computer games’ in International Class 28; First use: March 01, 1994; In Commerce: Feb. 16, 1994; - THE ELNDER SCROLLS, U.S. Reg. no. 2,634,683, registration date: Oct. 15, 2002, for ‘providing on-line forums for transmission of messages among computer users concerning computer games’ in International Class 28; First use: June 30, 1995; In Commerce: June 30, 1995; - THE ELNDER SCROLLS, U.S. Reg. no 3,375,520, registration date: January 29, 2008, for ‘Computer and video game user instruction manuals, books, and strategy guides’ in International Class 16; First use: April 2002; In Commerce: April 2002; - THE ELNDER SCROLLS, U.S. Reg. no 3,421,731, registration date: May 6, 2008, for ‘Clothing, namely, T-shirts, shirts, sweatshirts, fleece pullovers; headwear, namely, hats’ in International Class 25; First use: April 2005; In Commerce: April 2005; - THE ELNDER SCROLLS, U.S. Reg. no 3,584,564, registration date: March 3, 2009, for ‘ Pre-recorded CD's and DVD's featuring fantasy games’ in International Class 09; First use: March 20, 2006; In Commerce: March 20, 2006; - THE ELNDER SCROLLS, U.S. Reg. no 4,109,145, registration date: March 6, 2012, for ‘pre-recorded CDs and DVDs featuring music; Motion picture films featuring fantasy games’ in International Class 09; First use: May 01, 2002; In Commerce: May 01, 2002 (“TES Trademarks”) The first release in The Elder Scrolls series of games occurred in 1994 with major additional game releases in The Elder Scrolls series in 1996, 2002, 2006, 2011, as well as a massively multiplayer online role playing game (“MMORPG”) titled The Elder Scrolls Online, released in 2017. Complainant operates the official Internet web sites for The Elder Scrolls franchise at at <elderscrolls.bethesda.net> and for The Elder Scrolls Online MMORPG at <elderscrollsonline.com> (the “TES Websites”). Consumers can access information about The Elder Scrolls series of games via the TES Websites. The Registrant of the domain name <theelderscrolls.online> is an individual without any affiliation to the Complainant.

  

Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.


[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark:
  (i) for which the Complainant holds a valid national or regional registration and that is in current use; or
  (ii) that has been validated through court proceedings; or
  (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.

Determined: Finding for Complainant 


The Complainant provided documentary evidence that it is the registered owner of the word mark “THE ELDER SCROLLS” protected by a series of the U.S. trademark registrations, as well as documents to show that the trademark is in current use. The disputed domain name fully incorporates the Complainant’s trademark “THE ELDER SCROLLS”, written without spaces which are not allowed in domain names. The applicable Top Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. The disputed domain name <theelderscrolls.online> is identical to the Complainant’s TES Trademarks. Therefore, the Examiner finds that the Complaint meets URS requirement of 1.2.6.1.


[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.

Determined: Finding for Complainant 


The Examiner determines that the Respondent is not commonly known by the “THE ELDER SCROLLS” name and that the Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use Complainant’s TES Trademarks in a domain name or otherwise. The domain name <theelderscrolls.online> cannot be accessed because the following error occurred: Access Denied. Thus, the domain name <theelderscrolls.online> resolves to an inactive website which is not a case of bona fide offering goods or services. In the absence of any counter arguments and evidences in support of the Respondent’s rights and legitimate interest, the Examiner finds that the second element under URS Procedure 1.2.6.2 has been satisfied.


[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
  a. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the domain name; or
  b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
  c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
  d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant'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 Registrant's web site or location or of a product or service on that web site or location.

Determined: Finding for Complainant 


Registering a domain name identical to a registered trademark, and subsequent passive holding of such a domain is viewed by the Examiner as bad faith. The Respondent has not submitted any evidences confirming circumstances listed in URS Procedure 5.7. In the absence of any defense which might have affected the decision on this issue, it is found that the third element of the policy under URS Procedure 1.2.6.3 has been satisfied.


FINDING OF ABUSE or MATERIAL FALSEHOOD


The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.

The Examiner finds as follows:


  1. The Complaint was neither abusive nor contained material falsehoods. 

DETERMINATION


After reviewing the parties submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name(s) be SUSPENDED for the duration of the registration:

  1. theelderscrolls.online

 

Ms. Kateryna Oliinyk
Examiner
Dated: July 18, 2021

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page