Vivendi Universal Games and Davidson
& Associates, Inc. v. XBNetVentures Inc.
Claim Number: FA0309000198803
PARTIES
Complainant
is Vivendi Universal Games and Davidson & Associates, Inc., Los Angeles, CA (collectively,
“Complainant”) represented by David J.
Steele of Christie, Parker & Hale LLP, 3501 Jamboree Road, Suite 6000, Newport
Beach, CA 95660. Respondent is XBNetVentures Inc., PO Box 22109,
Phoenix, AZ 85028 (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <blizzardgames.com>
registered with Iholdings.com, Inc. d/b/a Dotregistrar.com.
PANEL
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.
Judge
Irving H. Perluss (Retired) is the Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on September 29, 2003; the Forum received a hard copy of the
Complaint on September 30, 2003.
On
September 30, 2003, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by
e-mail to the Forum that the domain name <blizzardgames.com>
is registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that
Respondent is the current registrant of the name. Iholdings.com, Inc. d/b/a
Dotregistrar.com has verified that Respondent is bound by the Iholdings.com,
Inc. d/b/a Dotregistrar.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
October 2, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of October 22,
2003 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@blizzardgames.com by e-mail.
A
timely Response was received on October 22, 2003. However, the Response does not conclude with this statement expressed in
Rule 3(b)(viii):
Respondent certifies that the information contained in this
Response is to the best of Respondent’s knowledge complete and accurate, that
this Response is not being presented for any improper purpose, such as to
harass, and that the assertions in this Response are warranted under these
Rules and under applicable law, as it now exists or as it may be extended by a
good-faith and reasonable argument.
Moreover, the Response does not contain a signature,
which is also required under Rule 3(b)(viii).
Complainant and Respondent each made a timely
Additional Submission in compliance with the Forum’s Supplemental Rule No. 7.
On October 29, 2003, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Judge Irving H.
Perluss (Retired) as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
1. Complainant,
Vivendi Universal Games, Inc. and its affiliate Davidson & Associates,
Inc., is a worldwide computer gaming company, creating its best-selling computer
games at its famous Blizzard Studios, and marketing its games and related goods
and services under its well-known family of BLIZZARD trademarks. The disputed domain name, <blizzardgames.com>,
is confusingly similar to Complainant’s BLIZZARD mark, merely adding the
generic word “games” that is very closely associated with Complainant and its
BLIZZARD mark.
2. Complainant
owns valuable trademark and service mark rights for its BLIZZARD family of
marks, including its BLIZZARD and BLIZZARD ENTERTAINMENT marks for computer
games and related online gaming/goods and services. The following are United States Federal registrations for
BLIZZARD and BLIZZARD ENTERTAINMENT, which are owned by Complainant, Vivendi
Universal Games, Inc., through its subsidiary, Davidson & Associates, Inc.
|
MARK |
REG.
NO. |
GOODS
DESCRIPTION |
|
BLIZZARD Trademark |
Reg.
No.: 2410748 First
Use: 3/1995 Filed:
1/7/2000 |
Books
in field of computer games. |
|
BLIZZARD Service
mark |
Reg.
No.: 2410749 First
Use: 11/13/1996 Filed:
1/7/2000 |
Entertainment
services, namely, providing on-line computer games, tips and strategies for
computer games, and news concerning computer games; arranging and conducting
computer game competitions. |
|
BLIZZARD Trademark |
Reg.
No.: 2433353 First
Use: 12/1995 Filed:
1/7/2000 |
Clothing,
namely, hats and shirts. |
|
BLIZZARD Trademark |
Reg.
No.: 2490187 First
Use: 5/17/1994 Filed:
1/7/2000 |
Computer
game software and instruction manuals sold as a unit; mouse pads. |
|
BLIZZARD Trademark |
Reg.
No.: 2490188 First
Use: 12/4/1998 Filed:
1/7/2000 |
Toys
and games, namely, action figures and action figure accessories. |
|
BLIZZARD
ENTERTAINMENT Trademark |
Reg.
No.: 1993894 First
Use: 11/15/94 Filed:
5/5/1994 |
Computer
programs for video and computer games and instruction manuals sold as a unit
with the programs. |
|
BLIZZARD
ENTERTAINMENT Trademark |
Reg.
No.: 2440620 First
Use: 12/1995 Filed:
1/7/2000 |
Clothing,
namely, hats and shirts. |
|
BLIZZARD
ENTERTAINMENT Trademark |
Reg.
No.: 2490189 First
Use: 3/1995 Filed:
1/7/2000 |
Books
in the field of computer games. |
|
BLIZZARD
ENTERTAINMENT Trademark |
Reg.
No.: 2492072 First
Use: 11/15/1994 Filed:
1/7/2000 |
Computer
game software and instruction manuals sold as a unit; mouse pads. |
|
BLIZZARD
ENTERTAINMENT Trademark |
Reg.
No.: 2494000 First
Use: 12/4/1998 Filed:
1/7/2000 |
Toys
and games, namely, action figures and action figure accessories. |
|
BLIZZARD
ENTERTAINMENT Service
mark |
Reg.
No.: 2548929 First
Use: 11/13/1996 Filed:
1/7/2000 |
Entertainment
services, namely, providing on-line computer games, tips and strategies for
computer games, and news concerning computer games; arranging and conducting
computer game competitions. |
3. Complainant
markets its goods and services under the BLIZZARD and BLIZZARD ENTERTAINMENT
marks, and has invested significant capital in its marks through ongoing
promotions, advertising and extensive Internet presence. Complainant operates numerous websites
including its <blizzard.com> and <battle.net> websites, which
promote its family of BLIZZARD marks and generate substantial sales
annually. The BLIZZARD and BLIZZARD
ENTERTAINMENT marks have become synonymous with Complainant’s goods and
services. As a result of the continuous
use of the mark in relation to computer games and online gaming and related
goods and services, Complainant has created tremendous goodwill in its BLIZZARD
family of marks.
4. The
disputed domain name <blizzardgames.com> is confusingly similar to
Complainant’s registered BLIZZARD trademarks and service marks. The “blizzard” portion of the domain name is
identical to the famous BLIZZARD family of marks. That Respondent added “games” to the end of Complainant’s mark
further increases the likelihood of confusion because Complainant and the
BLIZZARD marks are closely connected with Complainant’s use of the mark in
relation to computer games and online gaming.
The registration of a domain name that merely appends a term or word to
a well-known or famous trademark does not avoid likely confusion with respect
to the incorporated mark.
5. Respondent
is known as “XBNetVentures, Inc.”
Respondent has no affiliation or relationship with Complainant and has
no legitimate reason for using the BLIZZARD family of marks as a prominent
portion of its domain name. Further,
Respondent is not making a legitimate noncommercial or fair use of the domain
name, nor may it be implied that Respondent registered the domain name in good
faith. Instead, Respondent’s only use
of the domain name is to unlawfully misdirect web surfers searching for
Complainant’s website to Respondent’s own commercial gaming site.
6. Respondent
has made no demonstrable preparations to use the disputed domain name, or a
name corresponding to the disputed domain name, in connection with a legitimate
and bona fide offering of goods or services.
7. Respondent
registered the disputed domain name with the intention of attracting users
seeking Complainant’s goods and services, or information about
Complainant. Respondent derives
economic benefit driving traffic to websites, which offer commercial products,
banner ads and links to other commercial content. Respondent’s conduct constitutes bad faith registration and use
as defined by Section 4(b)(iv).
Respondent knew, or reasonably should have known, that potential
customers seeking information about the goods and services of Complainant are
likely to access Respondent’s domain name, and Respondent intentionally
redirects those users to promote its own games. Additionally, some of the redirected customers looking for
Complainant’s online site may associate the linked sites with Complainant’s
BLIZZARD family of marks, thereby tarnishing the mark.
8. Because
the BLIZZARD and BLIZZARD ENTERTAINMENT trademarks are so obviously connected
with Complainant, Respondent’s use of a confusingly similar domain without a
connection to Complainant suggests bad faith.
B.
Respondent
1. Complainant
did not comply with the Forum’s rules relating to communications with
Respondent, specifically e-mail notification.
2. Complainant
has had ample time and opportunity to register any or all domain names it felt
would protect its mark. This is not an
issue of a company who registered a mark years ago and is just entering the
online Internet world. In fact,
Complainant has only recently registered <blizzardgames.net> (June 15,
2003). That is almost nine years after
registering <blizzard.com>, seven years after the first public archive of
<blizzard.com> showing a game-based site, five years after promoting <blizzardgames.com>
on their own website <blizzard.com>, and almost four years after registering a trademark for Blizzard with a
description of online gaming. If
Complainant cannot think and plan accordingly for the future development of its
business focus, it should not be allowed to take domain names registered by
others when they finally get around to deciding what they want. Complainant should not be considered a naïve
victim. It should be looked at as an
expert in its field. The system should
not reward poor planning and management.
3. There
are 413 domain names registered with Blizzard in them, most of which are not
owned by Complainant. Complainant owns
the mark “BLIZZARD” not “Blizzard Games,” etc.
Owning the mark “Blizzard” does not give Complainant the right to claims
on any domain name that contains the English and generic word “Blizzard.”
4. In
the past, Complainant’s mark was used by another unrelated party without
objection by Complainant.
5. The
disputed domain name was pointed to one of Respondent XBNetVentures, Inc.’s
servers nameserver that will map any domain name in which a website is not
explicitly created to the first website created on that server. In this case, it was
<xboxcheats.com>. Respondent was
unaware that this domain name inadvertently mapped to <xboxcheats.com> as
a result of an explicit website not having been created for it. Upon notification, Respondent took
appropriate action explicitly to map the domain name to a parking page so it
would not infringe on Complainant’s claims.
Respondent will not use the disputed domain name in a manner that
infringes on Complainant’s trademark claims, thereby eliminating all issues of
confusion of Complainant’s marks.
6. Respondent
owns and operates many game fan sites across many platforms and has picked up
some other game domain names to develop websites. Respondent registered the
domain name to restore it back into a game site related to its past
history. The disputed domain name was
registered in good faith and was never listed for sale. Respondent’s intent was to develop the
disputed domain name. Based on Complainant’s
past acceptance and promotion of <blizzardgames.com>, Respondent
should be allowed to keep the domain name since it is in the game promotion
market provided that the domain name is not used to infringe on any claims made
by Complainant’s registered trademarks.
C.
Complainant’s Additional Submissions
1. Complainant
has not violated the Uniform Domain Name Dispute Resolution Policy. Complainant has fully complied with the UDRP
Policy, Policy Rules, and the Forum’s Supplemental Rules. UPDR Rules, Paragraph 2(b), controls the
communication, including the transmission of the Complaint, by Complainant to
Respondent. It reads in pertinent part,
that :
any
written communication to Complainant or Respondent provided for under these
Rules shall be made by the preferred means stated by the Complainant or
Respondent, respectively (see Paragraphs 3(b)(iii) and 5(b)(iii), or in the
absence of such specification
(i)
by telecopy
or facsimile transmission, with a confirmation of transmission; or
(ii)
by postal
or courier service, postage pre-paid and return receipt requested; or
(iii)
electronically
via the Internet, provided a record of its transmission is available.
Because
Respondent did not provide any “preferred means” of communication, Complainant
sent the Complaint, evidence and other supporting documentation, under cover of
the Complaint Transmittal Cover Sheet, to the address listed by Respondent in
the whois information at the time the Complaint was filed. The package was sent via Certified United
States Mail, postage pre-paid, with a return receipt requested.
2. Respondent
correctly notes that in the past Complainant had authorized another
party to use its mark and the subject domain name. But this does not give rights to an unrelated, unauthorized third
party such as Respondent.
3. Respondent
contends that it “registered the domain name to restore it back into a game
site related to it’s [sic] past history.”
However, the only evidence of Respondent’s intent is its actual and
unlawful use of the subject domain name.
Respondent has owned the subject domain name for over one year and has
yet to use the domain name in any lawful manner. Further, Respondent has not provided, before any notice of the
dispute, any demonstrable preparations to use the domain name in connection
with a bona fide offering of good or services.
4. Respondent
asserts that, “Claimant has had plenty of time and opportunity to register any
or all domain name if [sic] felt would protect their brand.” Respondent continues, “If claimant can not
think and plan accordingly for the future development of it’s [sic] business
focus they should not be allowed to take domain names registered by others when
they finally get around to deciding what they want . . . . The system should
not reward poor planning and management.”
Respondent’s view is inconsistent with settled law and logically flawed.
5. A
service mark owner need not register every domain name that could possibly
infringe its service mark rights.
6. Complainant’s
domain name prior to expiration was registered and used by an authorized third
party in accord with Complainant’s well-established business plan. That use was authorized by Complainant. It was only recently that the domain name
expired and, without Complainant’s knowledge or approval, was registered by
Respondent and used in a manner that creates a likelihood of confusion and
dilution of Complainant’s mark.
7. The
burden to ensure that a domain name’s registration and use does not infringe
another party’s rights must be carried by the registrant. In this way, the system does not reward
unlawful trademark infringement, dilution, or cybersquatting.
D.
Respondent’s Additional Submissions
1. The
disputed domain name was registered in good faith to restore the site.
2. The
disputed domain unintentionally pointed to <xboxcheats.com>. It was originally set to a parking page on
the server when it was registered.
About one year ago a worm virus infected the machine and began eating up
all the hard drive space. In an emergency
situation, the DNS information was saved (“named” director) and all active
sites were tar’d and saved to another served.
An emergency restore was done on the machine. Over the next several days all active sites were restored however
parking pages were not. This left the
domain name <blizzardgames.com> in the Nameserver but without a
parking page to point to (i.e., web
path to an index.html file) which caused the server to default the first site
that was set up on that server. Because
<xboxcheats.com> is one of Respondent’s biggest sites, it was restored
first.
3. It
would be expected that a Complainant would send a Cease and Desist notice upon
learning of a trademark violation. In
this case, this case has served as such notice and the infringement issue was
removed upon notice.
4. Respondent
has for years assisted novice website developers, with an interest in games, to
develop game fan sites. Many of these
novice developers have contacted Respondent and Respondent has assisted them
directly by providing help from more experienced developers, funding their site
development, providing the domain name for them to develop, and donating
servers to use for their site hosting.
Respondent’s development teams have established relationships with
Microsoft and dozens of other game development companies.
5. The
burden of proof of bad faith is on Complainant. Complainant has failed to prove that the disputed domain name was
registered in bad faith. In fact,
Respondent believes that Complainant’s current actions represent an act of bad
faith since Respondent is promoting its products in good faith. The disputed domain name was registered in
good faith with the intention of restoring the site.
FINDINGS AND DETERMINATIONS
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
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.
Preliminarily,
there are procedural issues to be determined.
Respondent
submitted a timely Response in this proceeding. The Response, however, does not conclude with this statement
required by Rule 3(b)(viii):
Respondent certifies that the information contained in this
Response is to the best of Respondent’s knowledge complete and accurate, that
this Response is not being presented for any improper purpose, such as to
harass, and that the assertions in this Response are warranted under these
Rules and under applicable law, as it now exists or as it may be extended by a
good-faith and reasonable argument.
Moreover,
the Response does not contain a signature, which is also required by Rule
3(b)(viii). While Respondent has not
warranted, accordingly, that the information in its Response is complete or
accurate, the Panelist believes it appropriate to consider Respondent’s
contentions on their merits.
The
Panelist finds and determines that Complainant has complied with the UDRP
Policy, UDRP Rules, and the Forum’s Supplemental Rules with respect to
communications to Respondent.
As above demonstrated in its contentions,
Complainant is the owner of numerous trademark registrations with the United
States Patent and Trademark Office (“USPTO”) for the BLIZZARD mark, most of
which relate to entertainment services, online computer games, tips and
strategies for computer games, and news concerning computer games. Thus, Complainant’s federal trademark registrations
establish Complainant’s rights in the BLIZZARD mark. See Janus Int’l Holding Co. v. Rademacher, D2002-0201
(WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration
of a mark is prima facie evidence of
validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this presumption); see also Men’s Wearhouse, Inc. v. Wick,
FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law,
registered marks hold a presumption that they are inherently distinctive and
have acquired secondary meaning”).
Accordingly, the Panelist finds and
determines that the disputed domain name, <blizzardgames.com>, is
confusingly similar to Complainant’s BLIZZARD mark because the domain name
appropriates the entire mark and simply adds the generic term “games” to the
end of the mark.
The addition of a generic term does not
serve sufficiently to distinguish the disputed domain name from the mark for
purposes of Policy Paragraph 4(a)(i), especially since the generic term
directly relates to Complainant’s business involving computer games. See Space Imaging LLC v. Brownwell,
AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where
Respondent’s domain name combines Complainant’s mark with a generic term that
has an obvious relationship to Complainant’s business). That others may be infringing on
Complainant’s marks does not provide a defense to Respondent in this matter.
The first prong of the three requisites
for transfer of the disputed domain name is established.
It is found and determined that
Respondent has no affiliation or relationship with Complainant. Moreover, it is found and determine that
Respondent is not commonly known by BLIZZARD GAMES or <blizzardgames.com>. Thus, Respondent has failed to establish any
rights to or legitimate interests in the disputed domain name under Policy
Paragraph 4(c)(ii). See Compagnie de
Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding
no rights or legitimate interest where Respondent was not commonly known by the
mark and never applied for a license or permission from Complainant to use the
trademarked name); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb.
Forum May 16, 2001) (interpreting Policy Paragraph 4(c)(ii) “to require a
showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail”).
The second prong of the three requisites
for transfer of the disputed domain name is established.
The Panelist is prepared to accept
Respondent’s assertion that it always has acted with good intentions, and it
will not infringe on Complainant’s marks.
Nevertheless, the Panelist is required to
find and determine that Respondent registered and used the disputed domain name
in bad faith.
This is because not only did Respondent
here have actual knowledge of Complainant’s marks, there is a legal presumption
of bad faith, when, Respondent reasonably should have been aware of Complainant’s
famous and distinctive trademark. This
is “constructive bad faith.”
In Interstellar Starship Services, Ltd. v. Epix,
Inc., 184 F.3d 1107, 1111 (CA 9th
1999), it was said:
“However, ISS became aware of the ‘EPIX’ trademark when it applied for its
own registration of ‘EPIX.’ Adopting a designation with knowledge of its
trademark status permits a presumption of intention to deceive. See Brookfield,
174 F.3d at 1059 (citing Official Airline
Guides, Inc. v. Goss, 6 F.3d 1385 (9th Cir. 1993)). In turn, intent to deceive is strong
evidence of a likelihood of confusion. Sleekcraft,
559 F.2d at 354.
The “bad faith” prong of the three
requisites for transfer of the disputed domain name has been established.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <blizzardgames.com>
domain name be TRANSFERRED from Respondent to Complainant.
JUDGE IRVING H. PERLUSS
(Retired), Panelist
Dated: November 11, 2003