ZeniMax Media Inc. v. Ravi Patnam
Claim Number: FA1601001658767
Complainant is ZeniMax Media Inc. (“Complainant”), represented by David M. Kramer of DLA Piper LLP, District of Columbia, USA. Respondent is Ravi Patnam (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dishonored2.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 29, 2016; the Forum received payment on January 29, 2016.
On January 29, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <dishonored2.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 February 1, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 2016 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@dishonored2.com. Also on February 1, 2016, 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 February 25, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.
A. Complainant:
1. Complainant has rights in the DISHONORED mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) and other international trademark agencies (e.g., Reg. No. 4,262,096, registered Dec. 18, 2012). Respondent’s domain <dishonored2.com> is confusingly similar to the DISHONORED mark as it includes the entire mark and merely adds the generic top-level domain “.com” and the number “2.”
2. Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been licensed or otherwise permitted to use the DISHONORED marks in any manner. Further, Respondent’s inactive use of the disputed domain name for a period of two years is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
3. Respondent registered and is using the disputed domain name in bad faith. Complainant’s DISHONORED mark is famous and Respondent likely had knowledge of Complainant’s rights in the mark at the time of registration which could demonstrate bad faith.
B. Respondent:
1. Respondent has not entered a Response in this proceeding.
1. Respondent’s <dishonored2.com> domain name is confusingly similar to Complainant’s DISHONORED mark.
2. Respondent does not have any rights or legitimate interests in the <dishonored2.com> domain name.
3. Respondent registered or used the <dishonored.com> domain name in bad faith.
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 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.”).
Complainant claims that its rights in the DISHONORED mark stem from registration of the mark with the USPTO (e.g., Reg. No. 4,262,096, registered Dec. 18, 2012) and other trademark agencies throughout the world. See Compl., at Attached Annex B. Panels routinely find, and this Panel also finds, that registration of a mark with the USPTO demonstrates a registrant’s rights in the mark. See Metro. Life Ins. Co. v. Glu, FA 874496 (Nat. Arb. Forum Feb. 13, 2007) (finding that the complainant had rights in the METLIFE mark as a result of its registration of the mark with the United States federal trademark authority).
Complainant next claims that Respondent’s <dishonored2.com> domain is confusingly similar to the DISHONORED mark in which Complainant asserts rights. The domain appears to differ from the DISHONORED mark through the addition of the gTLD “.com” and the number “2.” Adding the gTLD “.com” has not been seen as a distinguishing or relevant feature when added to a mark. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant’s RED HAT mark because the mere addition of gTLD was insufficient to differentiate the disputed domain name from the mark). Similarly, adding numbers or a letter to a mark in a domain name has not been construed as something that could prevent a finding of confusing similarity. See Am. Online, Inc. v. Oxford Univ., FA 104132 (Nat. Arb. Forum Mar. 19, 2002) (finding several domain names that added the numeral “7” or the term “seven” to the complainant’s AOL mark were confusingly similar to the mark under Policy ¶ 4(a)(i)). Taken together, this Panel concludes that Respondent’s <dishonored2.com> domain is confusingly similar to the DISHONORED mark under Policy ¶ 4(a)(i).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain based on the contention that Respondent not been licensed or otherwise permitted to use the DISHONORED marks in any manner. Panels have held that a lack of license or permission to use a mark can indicate lack of rights or legitimate interests in a mark when coupled with a respondent not being commonly known by a disputed domain name. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name). Respondents have been found to be not commonly known by a disputed domain name based on WHOIS information and a lack of evidence in the record to the contrary. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). While Respondent has not rebutted Complainant’s contentions under Policy ¶ 4(c)(ii), it may agree that Complainant has made a prima facie case and has succeeded under this element.
Complainant also claims that Respondent’s inactive use of the disputed domain name for a period of two years is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. As stated in the WHOIS information Respondent registered the disputed domain on August 5, 2015. See Compl., at Attached Annex D. The disputed domain resolves to a website being parked by the registrar. See Compl., at Attached Annex E. Panels have held that inactively holding a domain for an extended period of time is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Accordingly, this Panel finds that Respondent’s use does not fall within the parameters of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Complainant argues that Respondent has attempted to sell the disputed domain name in bad faith in excess of out-of-pocket costs. The record indicates that Respondent requested, as Complainant argues, an “exorbitant” amount of money in consideration for transfer of the domain. However, Respondent ultimately requests nothing from Complainant, stating, “I would be very happy to transfer the domain free of cost to the cheap sect you represent.” Correspondence—Respondent, February 3, 2016. Complainant argues that Respondent’s initial request for monetary compensation evinces bad faith, citing Bondy Way Development Corporation and Ashburn Village Development Corporation v. Re/Max Premier, WIPO Case No. D2000-0322 (“Under the UDRP Policy, offering [] domain names for sale is sufficient to constitute bad faith; an actual sale is not necessary. This alone would be sufficient evidence that the domain names were registered and are being used in bad faith”). Annex L. The Panel agrees that Respondent acted in bad faith to effectuate transfer of the disputed domain in excess of out-of-pocket costs, and it agrees that Policy ¶ 4(b)(i) has been embodied by Respondent.
As Respondent has apparently not competed with Complainant, Policy ¶ 4(b)(iii) will not be assessed. See, e.g., Tribeca Film Ctr., Inc. v. Brusasco-Mackenzie, D2000-1772 (WIPO Apr. 10, 2001) (rejecting the Mission KwaSizabantu approach and holding that “a respondent can ‘disrupt the business of a competitor’ only if it offers goods or services that can compete with or rival the goods or services offered by the trademark owner”).
Complainant contends that in light of the fame and notoriety of Complainant's DISHONORED mark, it is inconceivable that Respondent could have registered the <dishonored2.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dishonored2.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: March 7, 2016
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