Gaijin Games Kft., the prominent video game developer and publisher, initiated a UDRP proceeding against Luong Van Thanh regarding the domain name activemattermerch.shop. The Complainant, known for its “Active Matter” intellectual property, argued that the registration was unauthorized and intended to exploit the reputation of its gaming franchise. Gaijin Games Kft. contended that the respondent had no connection to the brand and was using the domain specifically to lure customers by impersonating an official merchandise outlet.
Why the Domain Was Ordered for Transfer
- The domain name incorporates the entirety of the “Active Matter” trademark, merely adding the descriptive term “merch.” This addition does not distinguish the domain from the protected brand; rather, it reinforces the impression that the site is an official platform for purchasing game-related apparel or goods.
- The respondent lacked any permission or license to utilize the trademark. Furthermore, the website hosted at the domain was designed to mimic an authorized storefront, offering products that appeared to be official merchandise without any legal basis to do so.
- Evidence indicated that the respondent registered and used the domain with the intent to profit from the fame of the gaming title. By creating an association with the Complainant’s mark, the respondent sought to divert internet traffic for commercial gain.
Exploitation of Brand Reputation
The use of a “.shop” extension in conjunction with a specialized gaming trademark demonstrates a clear strategy to mislead consumers. By setting up a functional e-commerce site that targets fans of the “Active Matter” universe, the respondent actively traded on the goodwill established by Gaijin Games Kft., providing no disclaimer or indication that the site was unaffiliated with the trademark owner.
Protecting E-commerce Boundaries
This case highlights the risks brands face when niche intellectual property becomes a target for “merchandise” squatting. For companies in the digital entertainment space, monitoring generic top-level domains like “.shop” is essential, as these are often used by third parties to sell counterfeit or unauthorized goods. The decision confirms that even if a respondent sets up a seemingly functional business, they cannot do so by leveraging a brand name to which they have no legal claim.
If your brand assets are being diluted by unauthorized web stores, the ClaimOn team can help you navigate the recovery process and secure your digital presence through professional enforcement strategies.
