Activision Publishing, Inc. v. Anthony Abraham
Claim Number: FA1107001398954
Complainant is Activision Publishing, Inc. (“Complainant”), represented by Scott J. Major of Millen, White, Zelano & Branigan, P.C., Virginia, USA. Respondent is Anthony Abraham (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <modernwarfare3.com>, registered with GoDaddy.com, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge has no known conflict in serving as Panelists in this proceeding.
Judge Bruce Meyerson, Professor Darryl C. Wilson and Debrett G. Lyons as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 15, 2011; the National Arbitration Forum received payment on July 15, 2011.
On July 18, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <modernwarfare3.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 July 20, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 9, 2011 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@modernwarfare3.com. Also on July 20, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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.
A timely Response was received and determined to be complete on August 9, 2011. In time, both sides then made Additional Submissions which were compliant with Supplemental Rule 7.
On August 24, 2011, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Judge Bruce Meyerson, Professor Darryl C. Wilson and Debrett G. Lyons (chair) as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant alleges trademark rights in the term MODERN WARFARE and submits that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and is using the disputed domain name in bad faith.
B. Respondent
Respondent broadly denies those allegations and argues, in particular, that (i) the term “modern warfare” is generic and is not monopolized by Complainant; and (ii) Respondent has made fair use of the term prior to notice of the dispute.
C. Additional Submissions
As indicated, both parties made Additional Submissions. Further detail of the submissions of both sides is included where appropriate in the Discussion which follows.
The uncontested matters relevant to the Decision are that:
1. Complainant is a game and gaming software developer.
2. Complainant has, relevantly, since 2007, sold software products under the names MODERN WARFARE 1 and MODERN WARFARE 2.
3. Complainant is said to be releasing a game entitled CALL OF DUTY: MODERN WARFARE 3 in late 2011, advance promotion of which appears incontestable.
4. The disputed domain name was registered on March 26, 2009, soon after the announced launch of MODERN WARFARE 2.
5. The domain name has resolved to a website which evolved during this dispute but which has until at least the time of the Complaint promoted in one form or another the goods or services of third parties, some of which have been competitors of Complainant.
6. There has been no commercial or other relationship between the parties prior to this dispute.
7. Pre-Complaint correspondence between the parties failed to resolve the dispute.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry - a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the trademark and the disputed domain name are identical or confusingly similar.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is accepted that a trademark registered with a national authority is evidence of trademark rights for the purposes of the Policy[1].
Complainant holds, inter alia, federal trademark Registration No. 3,987,485 for MODERN WARFARE registered July 5, 2011 with the United States Patent and Trademark Office. Based on at least that registration, Panel finds that Complainant has trademark rights.
Complainant argues that the domain name <modernwarfare3.com> is confusingly similar to its registered trademark since the disputed domain name wholly incorporates the trademark and simply adds the numeral “3” which is said to reference Complainant’s newest game, “Modern Warfare 3”.
Respondent submits that the disputed domain name and the trademark are comprised entirely of descriptive terms and therefore are not and cannot be confusingly similar. Respondent additionally argues that the disputed domain name is not, in any event, similar at all to Complainant’s latest game which has, in fact, been promoted as “Call of Duty: MW3”.
The Panel notes first that, for the purposes of testing confusing similarity, the generic top-level domain “.com” can be ignored[2]. Ignoring also as trivial the necessary deletion of the spacing of the words “modern” and “welfare” in the disputed domain name, the domain name is then composed of the trademark suffixed by a single numeral. The Panel observes that the question of whether or not Complainant’s latest game is named “Call of Duty: MW3” is irrelevant to the comparison which must be made under paragraph 4(a)(i) of the Policy. The Panel also follows the consensus opinion of former panels that the generic character of terms comprising or contained by the disputed domain name and/or trademark under comparison is immaterial to the determination of paragraph 4(a)(i) of the Policy and should be considered, if at all, under paragraphs 4(a)(ii) or (iii)[3]. Finally, whether the Panel either regards the addition of the numeral “3” to Complainant’s trademark as suggestive of the third or “next” generation game made by Complainant[4], or regards the addition of the numeral “3” after the trademark as the addition of matter having no source distinguishing value[5], the Panel finds without hesitation the compared terms to be confusingly similar.
For reasons which emerge, the Panel also finds that on the evidence Complainant has substantial use and reputation in the words MODERN WARFARE and so finds that Complainant also enjoys common law trademark rights.
Accordingly, Complainant has satisfied paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests[6].
The publicly available WHOIS information identifies Respondent as “Anthony Abraham” and so there is no prima facie evidence that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has any trademark rights. Complainant has stated there to be no contractual relationship between it and Respondent, and Complainant has not authorized Respondent to use the trademark. Moreover, Complainant provides evidence that, prior to filing of the Complaint, a website corresponding with the disputed domain name prominently featured the words MODERN WARFARE. Complainant alleges that website mimicked the official site of Complainant’s latest game. In addition, that website promoted the products of a game developer in direct competition with Complainant as well as carrying other third-party links and advertisements for video game retailers. Complainant contends that after notice of this Complaint, the same website redirected Internet users to the official website of a direct competitor of Complainant.
The Panel finds that Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name.
For its part, Respondent claims that it adopted the disputed domain name because it referred generally to refer to concepts, methods, and technologies that have come into use during and after “World War 2” and that the number “3” was chosen for its symbolism in relation to a possible “World War 3”. Respondent asserts that prior to receiving notice of the dispute, it had made preparations to use the disputed domain name to establish a site for commentary, news, discussion, and criticism as part of a fan site and forum for video gamers. It claims to have contracted a third-party designer as part of that project. Respondent states that it “acknowledges that the <modernwarfare3.com> domain name was mistakenly and temporarily redirected to <battlefield.com>[7] for a short time”.
The evidence of those matters is uncompelling. Aside from the claim that the words “modern warfare” are descriptive, the evidence of a fan or social networking site are perfunctory and it is unclear on the evidence to what extent the small efforts in that direction predated Complainant’s demand letters. On the other hand, Respondent’s evidence makes it plain that it knew Complainant’s trademark and had it in mind at a time when the website corresponding with the disputed domain name was created. The Panel finds not credible the claim that this website then mistakenly redirected Internet users to a competitor of Complainant during a contentious period in the relationship between the parties.
On balance, the Panel finds that Respondent’s use of the disputed domain name was neither in relation to a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Accordingly the Panel finds that Complainant has established the second limb under the Policy.
Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
i. circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
ii. you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
iii. you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv. by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on‑line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
Complainant’s submissions rest on subparagraph 4(b)(iii) to the extent that it claims that a website controlled by Respondent not only supported a battle game sold by a third party competitor of Complainant, but also discouraged Internet users from purchasing Complainant’s games.
Complainant’s submissions rest on subparagraph 4(b)(iv) to the extent that it claims that a website corresponding with the disputed domain name was set to gain commercially from the likely confusion arising from the similarity of the trademark and the domain name and the fact that the site then linked itself to third party commercial enterprises.
Whilst it might be facile for the Panel to determine bad faith registration and bad faith use based on one or more of the set scenarios in paragraph 4(b) of the Policy, that might then neglect Respondent’s position to the extend that it cannot on the facts fairly be claimed, for the purposes of subparagraph 4(b)(iii), that Respondent is a competitor of Complainant, nor, for the purposes of subparagraph 4(b)(iv), can it comfortably be reasoned that Respondent itself stood to commercially gain from the use of the domain name.
That said, taken in their separate parts, it is more likely than not that Respondent both registered and then used the domain name in bad faith. There is a cluster of facts which, on the accepted standard of proof, supports those findings. Respondent knew Complainant’s business and its trademark prior to registration of the domain name. It adopted a domain name which the Panel has already found to be confusingly similar to Complainant’s trademark. It had no relevant goods of its own. It was not a re-seller of Complainant’s goods. It did not prove rights or another legitimate interest in the domain name. Instead, a website corresponding with the disputed domain name promoted goods sold in competition with Complainant’s goods. Given notice of the dispute, it reiterated that abuse by redirecting Internet users to the site of a direct competitor of Complainant.
The Panel therefore finds that Complainant has also established this third limb of its case.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <modernwarfare3.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons (chair)
Judge Bruce Meyerson
Professor Darryl C. Wilson
Panelists
Dated: September 7, 2011
[1] See State Farm Mut. Auto. Ins. Co. v. Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
[2] See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum June 27, 2003) (holding that: “The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
[3] See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
[4] An approach which presupposes Complainant’s reputation. Some say that reputation is not properly to be considered under paragraph 4(a)(i) of the Policy. See Red Bull GmbH v. Game, D2008-0253 (WIPO Apr. 14, 2008) (holding that “[t]he question is whether, in the abstract, which amongst other things means putting to one side the repute the trademark in question might enjoy, the domain name and the trademark have confusing similarity.”).
[5] Countless earlier decisions under this Policy have held that the addition of a non-distinctive integer to a complainant’s trademark does little or nothing to avoid confusion.
[6] See Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000); see also Hanna‑Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).
[7] Being the website of the third party competitor of Complainant.
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