Roblox Corporation v. Lin Zong Xing
Claim Number: FA2302002032423
Complainant is Roblox Corporation (“Complainant”), represented by John L. Slafsky of Wilson Sonsini Goodrich & Rosati, California, USA. Respondent is Lin Zong Xing (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <robloxeducation.com>, registered with DNSPod, Inc.
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to Forum electronically on February 17, 2023. Forum received payment on February 17, 2023.
On February 22, 2023, DNSPod, Inc. confirmed by e-mail to Forum that the <robloxeducation.com> domain name is registered with DNSPod, Inc. and that Respondent is the current registrant of the name. DNSPod, Inc. has verified that Respondent is bound by the DNSPod, Inc. registration agreement, which is in Chinese, and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 27, 2023, Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of March 20, 2023 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@robloxeducation.com. Also on February 27, 2023, the Chinese and English language Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On March 29, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDINGS
As noted, the DNSPod, Inc. registration agreement is in Chinese. Pursuant to Rule 11(a), the language of the proceeding in relation to the <robloxeducation.com> domain name shall be Chinese unless otherwise determined by the Panel, having regard to the circumstances of the proceeding.
Complainant requests that the proceeding be conducted in English, stating that it is a U.S. Company, does not speak Chinese and requiring the proceeding to be conducted in Chinese would unduly burden Complainant by requiring it to translate the Complaint and proceeding documents, which would be costly and would delay the proceedings unnecessarily. See Costco Wholesale Membership Inc., Costco Wholesale Corporation v. Guo Xiaobao / Guoxiaobao, Case No. D2014-1456 (WIPO Oct. 31, 2014). On information and belief, Complainant submits that Respondent is capable of understanding English.
The Panel notes that the <robloxeducation.com> domain name is in English and accepts that to conduct the proceeding in Chinese would unnecessarily burden Complainant. In the absence of any Response, these circumstances satisfy the Panel that Respondent understands English and that there would be no undue prejudice to Respondent if English were the language of the proceeding.
Further, pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the English and Chinese language Written Notice of the Complaint and, absent a Response, determines that the proceedings may be conducted in English.
A. Complainant
Complainant is the creator of the internationally well-known ROBLOX platform for online gaming and experiences. Since the company’s launch in 2006, Complainant’s platform has grown in popularity dramatically, particularly with younger people and now has almost 60 million daily active users.
In 2018, Complainant began offering an education platform called Roblox Education which offers free resources to teach students coding, game design, digital citizenship and entrepreneurial skills. Complainant operates websites at <roblox.com> and <education.roblox.com>.
Complainant has trademark registrations for the coined and inherently distinctive ROBLOX mark in over 30 countries, including with the United States Patent and Trademark Office (“USPTO”). Respondent’s <robloxeducation.com> domain name is virtually identical and confusingly similar to Complainant’s mark.
Respondent has no legitimate interests in the <robloxeducation.com> domain name. Respondent is not commonly known by the domain name and Complainant has not authorized or licensed to Respondent any rights in the ROBLOX mark.
Respondent registered the <robloxeducation.com> domain name in bad faith with actual knowledge of Complainant’s rights in the ROBLOX mark and inactively holds the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has shown that it has rights in the ROBLOX mark through registration of the mark with the USPTO (e.g., Reg. No. 5,466,424 registered on May 8, 2018). The Panel finds Respondent’s <robloxeducation.com> domain name to be confusingly similar to Complainant’s mark because it incorporates the ROBLOX mark in its entirety and adds the term “education”, which does not suffice to distinguish the domain name from the mark, and the inconsequential “.com” generic top-level domain (“gTLD”), which may be ignored.
Complainant has established this element.
Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Complainant’s ROBLOX mark is a coined term with no meaning other than to distinguish Complainant and its business. The <robloxeducation.com> domain name was registered on June 20, 2019, many years after Complainant has shown that its ROBLOX mark and its <roblox.com> and <education.roblox.com> websites had become very well-known worldwide. The <robloxeducation.com> domain name resolves to a webpage that indicates that the domain name has been “parked”.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <robloxeducation.com> domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019). Respondent has made no attempt to do so.
Paragraph 4(b) of the Policy sets out some circumstances which shall be evidence of the registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy. As noted in the WIPO Jurisprudential Overview 3.0, Section 3.1, those circumstances are not exclusive and a complainant may demonstrate bad faith under paragraph 4(a)(iii) by showing that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to the complainant’s trademark.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant’s very well-known ROBLOX mark when Respondent registered the <robloxeducation.com> domain name and that Respondent did so in bad faith with intent to take unfair advantage of Complainant’s mark.
Although the <robloxeducation.com> domain name does not resolve to an active website, as in the leading case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, there is no conceivable active use that could be made of the domain name that would not amount to an infringement of Complainant’s rights in its ROBLOX mark. Accordingly, the Panel finds that Respondent’s passive use of the domain name demonstrates registration and use in bad faith.
Complainant has established this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <robloxeducation.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: March 31, 2023
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