Wizards of the Coast, LLC v.
Claim Number: FA0908001281919
Complainant is Wizards of the Coast, LLC (“Complainant”), represented by Stephen
J. Jeffries, of Holland & Knight LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dungeonsanddragons.com>, registered with Moniker.
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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 27, 2009; the National Arbitration Forum received a hard copy of the Complaint on August 28, 2009.
On August 28, 2009, Moniker confirmed by e-mail to the National Arbitration Forum that the <dungeonsanddragons.com> domain name is registered with Moniker and that Respondent is the current registrant of the name. Moniker has verified that Respondent is bound by the Moniker 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 September 4, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 24, 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 firstname.lastname@example.org by e-mail.
Having received no response from
Respondent, the National Arbitration Forum transmitted to the parties a
Notification of Respondent Default. On
September 7, 2009,
On October 1, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 <dungeonsanddragons.com> domain name is identical to Complainant’s DUNGEONS AND DRAGONS mark.
2. Respondent does not have any rights or legitimate interests in the <dungeonsanddragons.com> domain name.
3. Respondent registered and used the <dungeonsanddragons.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Wizards of the Coast, LLC, is a leader in the fantasy role-playing game industry. Complainant owns a number of trademark registrations around the world, including a number of registrations with the United States Patent and Trademark Office (“USPTO”) for the DUNGEONS AND DRAGONS mark (e.g. Reg. No. 1,092,786 issued June 6, 1978).
Respondent registered the <dungeonsanddragons.com> domain name on January 19, 2005. Respondent’s disputed domain name resolves to a website displaying third party links to websites offering role-playing games in competition with 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."
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 owns a number of trademark registrations for the
DUNGEONS AND DRAGONS mark, including numerous registrations with the USPTO (e.g.
Reg. No. 1,092,786 issued June 6, 1978).
The Panel finds that Complainant has established rights in the DUNGEONS
AND DRAGONS mark for purposes of Policy ¶ 4(a)(i) through its trademark
registration with the USPTO. See Thermo Electron Corp. v. Xu, FA
713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had
established rights in marks where the marks were registered with a trademark
Complainant argues that Respondent’s disputed domain name is identical to Complainant’s DUNGEONS
AND DRAGONS mark
pursuant to Policy ¶ 4(a)(i).
Respondent’s disputed domain name contains Complainant’s mark in its
entirety, omits spacing, and adds the generic top-level domain (“gTLD”)
“.com.” The Panel finds that the
omission of spacing and the addition of a gTLD are irrelevant in distinguishing
a disputed domain name from an established mark. See Microsoft
Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain
name <microsoft.org> is identical to the complainant’s mark); see also
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks all rights and legitimate interests in the disputed domain name. If Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that rights and legitimate interests exist pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has established a prima facie case and Respondent has failed to submit a response in this proceeding. See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”); see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“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), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”).
Complainant contends that Respondent is neither commonly
known by, nor licensed to register, the disputed domain name.
Respondent’s WHOIS information identifies Respondent as “
Respondent registered the <dungeonsanddragons.com> domain name on January 19, 2005. Respondent is using the disputed domain name to display links advertising third-party websites offering role-playing games in competition with Complainant. The Panel infers that Respondent is using the disputed domain name to earn click-through fees, and thus finds that Respondent has not made 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 Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s use of the <dungeonsanddragons.com> domain name to disrupt the business of Complainant by offering links to competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. 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).”).
In addition, Respondent is using the <dungeonsanddragons.com> domain name to intentionally
divert Internet users to the associated website, which displays third-party
links to competing websites offering role-playing games. In cases such as this, the Panel assumes that
Respondent is collecting click-through fees and attempting to profit by
creating a likelihood of confusion between Complainant’s mark and the disputed
domain name. The Panel finds that
Respondent’s use of the disputed domain name is further evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See
Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18,
2006) (finding that the respondent engaged in bad faith registration and use by
using a domain name that was confusingly similar to the complainant’s mark to
offer links to third-party websites that offered services similar to those
offered by the complainant); see also
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dungeonsanddragons.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr., Panelist
Dated: October 13, 2009
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