16 January 2014Americas

RPG domain name challenge backfires in WIPO ruling

Mumbai-based pharmaceutical company RPG Life Sciences Ltd has been found guilty of reverse domain name hijacking in a dispute fought at the World Intellectual Property Organisation (WIPO)’s Arbitration and Mediation Center.

Reverse domain name hijacking is the practice of misusing the rules of the Uniform Domain Name Dispute Resolution policy to deprive a registered domain name holder of a domain name.

The disputed domain name rpglife.com was registered in October 2005. Wisconsin resident James Mathe has been using the domain name as a social media platform for people who play role-playing games. Examples of role-playing games include Dungeons and Dragons and World of Warcraft.

In December 2013, RPG filed a complaint with the WIPO Arbitration and Mediation Center, claiming the domain name is “confusingly similar” to its Indian trademarks RPG and RPG LIFE, which cover pharmaceutical, veterinary and sanitary preparations for medical purposes.

It said that Mathe has “has no rights or legitimate interests” to use the domain, as he has not registered any trademarks covering “RPG” or “RPGLIFE”, and argued the domain name was registered in bad faith.

Mathe said consumers are not likely to be confused as the domain name comprises the word “RPG”, a widely used abbreviation for the term “role-playing game” said to have been coined in 1974. RPG’s marks do not grant it exclusive rights to the word, he added.

He argued that he has a legitimate interest in the domain because he has used it since 2008 “for bona fide offerings of goods or services”, and added that the domain name’s use as a retail site is “entirely unrelated” to the trade channels RPG uses as a pharmaceutical and biotech business.

Writing in the decision, panellist Nicholas Weston said: “The complainant’s professional representative should have appreciated, even on a rudimentary examination of the policy and its application in this area, that the complaint could not succeed where the respondent’s disputed domain name is a widely recognised acronym and is being used to promote goods and services available for purchase in that field.”

The panel granted Mathe’s request for a finding of reverse domain name hijacking, and denied RPG’s complaint, finding it to be made in bad faith.

According to reverse domain name hijacking case database rdnh.com, 26 complainants were found guilty of the practice in 2013, up from 14 in 2012.

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