Claim Number: FA0903001250885
Complainant is Bethesda
Softworks LLC (“Complainant”), represented by Ryan C. Compton, of DLA Piper LLP (US),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <pocketfallout.net>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 5, 2009; the National Arbitration Forum received a hard copy of the Complaint on March 6, 2009.
On March 9, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <pocketfallout.net> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On March 12, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 1, 2009 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@pocketfallout.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 10, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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.
A. Complainant makes the following assertions:
1. Respondent’s <pocketfallout.net> domain name is confusingly similar to Complainant’s FALLOUT mark.
2. Respondent does not have any rights or legitimate interests in the <pocketfallout.net> domain name.
3. Respondent registered and used the <pocketfallout.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Bethesda Softworks LLC, develops and publishes video games for numerous consoles. Complainant provides a video game series under the FALLOUT mark, which it has registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,181,084 issued Aug. 11, 1998).
Respondent registered the <pocketfallout.net> domain name on February 26, 2007. The disputed domain name resolves to a website offering for sale infringing computer software.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant has submitted evidence of its trademark registration with the USPTO for its FALLOUT mark. The Panel therefore finds that Complainant has sufficient rights in the mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Respondent’s <pocketfallout.net> domain name
includes Complainant’s mark, while adding the generic and descriptive term
“pocket” and the generic top-level domain “.net.” The Panel agrees with Complainant’s assertion
that the term “pocket” refers to video games played on mobile phones, and thus
the word describes Complainant’s video game business. Such inclusion of a descriptive and generic
word fails to thwart a confusingly similar finding. See
Constellation Wines
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has asserted that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant must successfully assert a sufficient prima facie case supporting its allegations before Respondent receives the burden of demonstrating its rights or legitimate interests. The Panel finds that Complainant has met its burden, and therefore Respondent must demonstrate its rights or legitimate interests under Policy ¶ 4(c). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
There is no evidence in the record, including the WHOIS information, to conclude that Respondent is commonly known by the disputed domain name. Moreover, Complainant contends that Respondent is not a licensee of Complainant, and that Respondent is not authorized to register or use the disputed domain name or the FALLOUT mark. Therefore, the Panel finds that Respondent lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent’s disputed domain name resolves to a website that
offers infringing computer software for sale.
Complainant asserts that this software infringes upon Complainant’s
FALLOUT mark due to the similar content in Respondent’s video game, and that
the usage of the website is inherently competitive. The Panel agrees, and therefore finds that
Respondent has failed to create a bona
fide offering of goods or services under Policy ¶ 4(c)(i)
or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb.
Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet
users seeking Complainant’s website to a website of Respondent and for
Respondent’s benefit is not a bona fide offering of goods or services under
Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Computerized Sec.
Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003)
(“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products
that compete with Complainant’s goods does not constitute a bona fide offering
of goods and services.”); see also Hewlett-Packard Co. v.
Inversiones HP Milenium
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent has engaged in bad faith
registration and use under Policy ¶ 4(b)(iii) by
disrupting Complainant’s business through the sale of competing and infringing
computer software products. See EBAY, Inc. v. MEOdesigns, D2000-1368
(WIPO
The Panel further finds that Respondent has engaged in bad
faith registration and use under Policy ¶ 4(b)(iv) by
intentionally creating a likelihood of confusion for commercial gain as to
Complainant’s affiliation with Respondent’s confusingly similar disputed domain
name and corresponding website. See
Allianz of Am. Corp. v. Bond,
FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith
registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting
Internet users searching for the complainant to its own website and likely
profiting); see also G.D. Searle & Co. v. Celebrex Drugstore,
FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent
registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)
because the respondent was using the confusingly similar domain name to attract
Internet users to its commercial website).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <pocketfallout.net> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: April 23, 2009
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