Activision Publishing, Inc. v. yahan valdivia
Claim Number: FA2009001912153
Complainant is Activision Publishing, Inc. (“Complainant”), represented by Adam D. Mandell of Millen, White, Zelano & Branigan, P.C., Virginia, United States. Respondent is yahan valdivia (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <callofdutychampions.com>, registered with Wix.com Ltd..
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 14, 2020. The Complaint was submitted in both Spanish and English; the Forum received payment on September 14, 2020.
On September 17, 2020, Wix.com Ltd. confirmed by e-mail to the Forum that the <callofdutychampions.com> domain name is registered with Wix.com Ltd. and that Respondent is the current registrant of the name. Wix.com Ltd. has verified that Respondent is bound by the Wix.com Ltd. registration agreement 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 September 29, 2020, the Forum served the Complaint and all Annexes, including a Spanish Written Notice of the Complaint, setting a deadline of October 19, 2020 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@callofdutychampions.com. Also on September 29, 2020, the 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, the Forum transmitted to the parties a Notification of Respondent Default.
On October 22, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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, the 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.
Panel Note: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Spanish, thereby making the language of the proceedings in Spanish.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Spanish language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
A. Complainant
Complainant made the following contentions.
Complainant develops and distributes video games and interactive entertainment throughout the world. Complainant has rights in the CALL OF DUTY mark through its multiple registrations with numerous trademark agencies throughout the world. (e.g. United States Patent and Trademark Office (“USPTO”), Reg. 2,925,780, registered Feb. 8, 2005; European Union’s Office for Harmonization in the Internal Market (“OHIM”), Reg. 3,993,912, registered Dec. 7, 2005). See Compl. Ex. 5. Respondent’s <callofdutychampions.com> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and adds the term “champions” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the mark. Respondent is not commonly known by the <callofdutychampions.com> domain name, nor has Complainant authorized or licensed Respondent to use its CALL OF DUTY mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead attempts to divert internet users seeking Complainant’s services to the disputed domain name’s resolving website, where Respondent offers similar and competing services.
Respondent registered and uses the <callofdutychampions.com> domain name in bad faith. Respondent disrupts Complainant’s business for commercial gain by attempting to divert internet users seeking Complainant’s services to the disputed domain name’s resolving website, where Respondent hosts similar and competing services. Respondent registered the disputed domain name with knowledge of Complainant’s rights in the CALL OF DUTY mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that develops and distributes video games and interactive entertainment throughout the world.
2. Complainant has established its trademark rights in the CALL OF DUTY mark through its multiple registrations with numerous trademark agencies throughout the world. (e.g. United States Patent and Trademark Office (“USPTO”), Reg. 2,925,780, registered Feb. 8, 2005; European Union’s Office for Harmonization in the Internal Market (“OHIM”), Reg. 3,993,912, registered Dec. 7, 2005).
3. Respondent registered the <callofdutychampions.com> domain name on July 21, 2020.
4. Respondent has used the domain name to attempt to divert internet users seeking Complainant’s services to the disputed domain name’s resolving website, where Respondent offers similar and competing services to those of Complainant.
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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the CALL OF DUTY mark through its multiple registrations with numerous trademark agencies throughout the world. (e.g. USPTO, Reg. 2,925,780, registered Feb. 8, 2005; OHIM, Reg. 3,993,912, registered Dec. 7, 2005). See Compl. Ex. 5. Registration with multiple trademark agencies is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) (“The Panel finds that complainant has rights in BLOOMBERG mark under Policy ¶ 4(a)(i) based upon its registration with multiple trademark agencies, including the USPTO.”). Therefore, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s CALL OF DUTY mark. Complainant argues that Respondent’s <callofdutychampions.com> domain name is identical and/or confusingly similar to Complainant’s CALL OF DUTY mark, as it incorporates the mark in its entirety and adds the word “champions”, along with the “.com” gTLD. Adding a descriptive word that relates to a Complainant’s products or services, along with the “.com” gTLD are generally insufficient changes in differentiating a disputed domain name from the mark it incorporates under Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”); see also Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). The disputed domain name incorporates Complainant’s mark in its entirety and adds the word “champions”, which appears to relate to Complainant’s esports competition, along with the “.com” gTLD. Therefore, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s CALL OF DUTY trademark and to use it in its domain name in its entirety, adding the generic word “champions”;
(b) Respondent registered the <callofdutychampions.com> domain name on July 21, 2020;
(c) Respondent has used the domain name to attempt to divert internet users seekingComplainant’s services to the disputed domain name’s resolving website, where Respondent offers similar and competing services to those of Complainant;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent is not commonly known by the <callofdutychampions.com> domain name, nor has Complainant authorized or licensed Respondent to use its CALL OF DUTY mark in the disputed domain names. Where a response is lacking, relevant WHOIS information can demonstrate that a Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS of record identifies Respondent as “yahan valdivia”, and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its mark in the disputed domain name. See Compl. Ex. 1; see also Registrar Verification Email. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the <callofdutychampions.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead attempts to divert internet users seeking Complainant’s services to the disputed domain name’s resolving website, where Respondent offers services that compete with Complainant’s business. Attempting to divert internet users seeking Complainant’s services to a disputed domain name’s resolving website, where Respondent hosts competing services is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Diners Club Int’l Ltd. v. Car in Won Australia pty Ltd, FA 338427 (Forum Nov. 10, 2004) (“Since Complainant and Respondent both offer credit card accounts for sale, the Panel finds that Respondent is using the domain names to offer strictly competing services with Complainant, which would be legitimate had Respondent not incorporated Complainant’s mark in a confusingly similar domain name to accomplish this end.”); see Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”). Complainant provides screenshots of the disputed domain name’s resolving website, which until recently, appeared to organize gaming services and presumably profited from entry fees. See Compl. Exs. 10 and 11. Complainant argues this use competes with its own gaming tournament business. As the Panel agrees, it finds Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <callofdutychampions.com> domain name in bad faith by disrupting Complainant’s business for commercial gain. Attempting to divert internet users seeking Complainant’s services to a disputed domain name’s resolving website, where Respondent hosts competing services is generally considered bad faith disruption for commercial gain under Policy ¶¶ 4(b)(iii) and (iv). See Disney Enters., Inc. v. Noel, FA 198805 (Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum Apr. 26, 2015) (holding that the respondent’s use of the disputed domain name to direct Internet users to a website which competed with the complainant was evidence of bad faith pursuant to Policy ¶ 4(b)(iv)). The Panel recalls Complainant’s screenshots of the disputed domain name’s resolving website, which featured a gaming tournament service that arguably competes with Complainant’s own gaming and tournament services. See Compl. Exs. 10 and 11. Moreover, Complainant argues that Respondent must have been aware that its use of Complainant’s well known and recognized marks would divert internet users away from Complainant’s own website to the disputed domain name. As the Panel agrees, it finds Respondent uses the disputed domain name for bad faith disruption for commercial gain under Policy ¶¶ 4(b)(iii) and (iv).
Secondly, Complainant argues that Respondent registered the <callofdutychampions.com> domain name in bad faith as it had knowledge of Complainant’s rights in the CALL OF DUTY mark. Under Policy ¶ 4(a)(iii), while constructive knowledge is generally insufficient to support a finding of bad faith, actual knowledge may be enough, and can be demonstrated by Respondent’s registration of a domain name that is identical or confusingly similar to a Complainant’s well known mark, as well as its similar use of the disputed domain name’s resolving website. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum January 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). The Panel recalls that the disputed domain name is confusingly similar to Complainant’s registered CALL OF DUTY mark. Complainant provides screenshots of various new articles and search results for technology related websites to demonstrate the widespread recognition of its CALL OF DUTY mark. See Compl. Exs. 7 through 9. Finally, the Panel recalls that the disputed domain name’s resolving website features Complainant’s mark and hosts an arguably similar and competing gaming tournament. See Compl. Exs. 10 and 11. Therefore, the Panel finds Respondent registered the disputed domain name in bad faith as it had actual knowledge of Complainant’s rights in the mark under Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the CALL OF DUTY mark and in view of the conduct of Respondent in using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <callofdutychampions.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 23, 2020
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