Vivendi Universal Games d/b/a Davidson
and Associates, Inc. v. Louis Chang d/b/a Domain543.com
Claim
Number: FA0310000206328
Complainant is Vivendi
Universal Games d/b/a Davidson and Associates, Inc., Los Angeles, CA
(“Complainant”) represented by David J.
Steele, of Christie, Parker & Hale LLP, 3501 Jamboree Road, Suite 6000, Newport
Beach, CA 92660. Respondent is Louis Chang d/b/a Domain543.com,
P.O. Box 2-98 Sanchung, Sanchung, Taipei 241, Taiwan (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <warcraft3.net>, registered with Enom,
Inc.
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 (the "Forum")
electronically on October 28, 2003; the Forum received a hard copy of the
Complaint on October 29, 2003.
On
November 3, 2003, Enom, Inc. confirmed to the Forum that the domain name <warcraft3.net>
is registered with Enom, Inc. and that Respondent is the current registrant of
the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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
November 3, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
November 24, 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@warcraft3.net by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
December 3, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Louis E. Condon 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."
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 makes the following assertions:
1. Respondent’s <warcraft3.net>
domain name is confusingly similar to Complainant’s WARCRAFT mark.
2. Respondent does not have any rights or
legitimate interests in the <warcraft3.net> domain name.
3. Respondent registered and used the <warcraft3.net>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant has
multiple registration applications of the WARCRAFT and WARCRAFT III: REIGN OF
CHAOS marks with the United States Patent and Trademark Office (“USPTO”) (Ser.
Nos. 78275015, 78274989,78274961, 78274955, 78267452, 78267448, 74523244,
78124339, 78124341, 78124347).
Complainant has used the WARCRAFT mark worldwide for its computer games
and online gaming since 1994.
Respondent
registered the disputed domain name, <warcraft3.net>, on January
21, 2003. Respondent uses the name to
direct Internet users to a website featuring pornographic images and
links.
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.
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
established rights in its WARCRAFT-related marks through continuous use since
1994 and applications with the USPTO. See
Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that the 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
assumption); 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”); see also Wal-Mart
Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the
failure of Complainant to register all possible domain names that surround its
substantive mark does not hinder Complainant’s rights in the mark. “Trademark
owners are not required to create ‘libraries’ of domain names in order to
protect themselves”).
Respondent’s
registered domain name, <warcraft3.net>, is confusingly similar to
Complainant’s WARCRAFT-related marks because Respondent’s name retains the
predominate word in Complainant’s mark and has merely cloaked the substance of
the remainder of the mark in a different form, specifically by substituting
Roman numerals with Arabic. In any event,
the domain name is phonetically identical to Complainant’s mark. See Hewlett-Packard Co. v.
Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a
domain name which is phonetically identical to Complainant’s mark satisfies ¶
4(a)(i) of the Policy); see also Ziegenfelder
Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding confusing
similarity between Respondent’s domain name, <budgetsaver.com> and
Complainant’s mark, Budget$aver); see also Am. Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31,
2000) (finding that the addition of the numeral 4 in the domain name
<4icq.com> does nothing to deflect the impact on the viewer of the mark
ICQ and is therefore confusingly similar).
Therefore,
Complainant has established Policy ¶ 4(a)(i).
Respondent has
not asserted any rights or legitimate interests in the domain name. Therefore, the Panel may accept all
reasonable inferences of fact in the allegations of Complainant, without the
benefit of a Response. See Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw
adverse inferences from Respondent’s failure to reply to the Complaint); see
also Vertical Solutions Mgmt., Inc. v. Webnet-marketing, Inc., FA 95095
(Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond
allows all reasonable inferences of fact in the allegations of Complainant to
be deemed true); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat.
Arb. Forum Oct. 1, 2002) (holding that, where Complainant has asserted that
Respondent has no rights or legitimate interests with respect to the domain
name, it is incumbent on Respondent to come forward with concrete evidence
rebutting this assertion because this information is “uniquely within the
knowledge and control of the respondent”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as
an admission that they have no legitimate interest in the domain names).
Moreover,
Respondent uses the disputed domain name to divert Internet users seeking
Complainant’s goods or services to pornographic material and links, while
presumably earning commission or referral fees from advertisers. The diversion of Internet users to
pornographic material is further evidence that Respondent lacks rights and
legitimate interests in the domain name.
Therefore, Respondent is not using the disputed domain name in
connection with a bona fide offering of goods or services, and is also not
making a legitimate noncommercial or fair use of the name, pursuant to Policy
¶¶ 4(c)(i) & (ii). See
WeddingChannel.com Inc. v. Vasiliev a/k/a NA and Free Domains Parking, FA
156716 (Nat. Arb. Forum June 12, 2003) (finding that Respondent’s use of the
disputed domain name to redirect Internet users to websites unrelated to
Complainant’s mark, websites where Respondent presumably receives a referral
fee for each misdirected Internet user, was not a bona fide offering of goods
or services as contemplated by the Policy); see
also Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb.
Forum Apr. 25, 2003) (finding that Respondent had no rights or legitimate
interests in a domain name that it used to redirect Internet users to an
Internet directory website that featured numerous pop-up advertisements for
commercial goods and sexually explicit websites); see also Sony Kabushiki
Kaisha a/k/a Sony Corp. v. Domain rajadomain@yahoo.com +1.415.0, FA 128701 (Nat. Arb. Forum Dec. 16,
2002) (finding that Respondent’s use of its domain name in order to divert
Internet users to a website that offers search engine services and links to
adult-oriented websites was not considered to be in connection with a bona fide
offering of goods or services or a legitimate noncommercial or fair use
pursuant to Policy); see also ABB Asea Brown Boveri Ltd. v. Quicknet,
D2003-0215 (WIPO May 26, 2003) (finding evidence that Respondent had no
rights or legitimate interests in the disputed domain name because the “use of
the disputed domain name in connection with pornographic images and links
tarnishes and dilutes [Complainant’s mark]”); see also Isleworth Land Co. v.
Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that
Respondent’s use of its domain name to link unsuspecting Internet
traffic to an adult orientated website, containing images of scantily clad
women in provocative poses, did not constitute a connection with a bona fide
offering of goods or services or a noncommercial or fair use); see also
Paws, Inc. v. Zuccarini a/k/a Country Walk, FA 125368 (Nat. Arb. Forum Nov.
15, 2002) (holding that the use of a domain name that is confusingly similar to
an established mark to divert Internet users to an adult-oriented website
“tarnishes Complainant’s mark and does not evidence noncommercial or fair use
of the domain name by a respondent”).
Additionaly,
there is no evidence that Respondent is commonly known by the disputed domain
name pursuant to Policy ¶ 4(c)(ii). The
WHOIS registration information fails to imply that Respondent is commonly known
by the name. See Tercent Inc.
v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (“nothing in Respondent’s
WHOIS information implies that Respondent is ‘commonly known by’ the disputed
domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not
apply); see also Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (Respondent does not have rights in a
domain name when Respondent is not known by the mark).
Therefore, Complainant has established Policy ¶ 4(a)(ii).
Pursuant to
Policy ¶ 4(b)(iv), Respondent has registered and used the disputed domain name
in bad faith by intentionally attracting Internet users to <warcraft3.net>,
presumably for the purpose of earning revenue through advertisers, and using
Complainant’s popular WARCRAFT-related marks as bait for its scheme. See H-D Michigan, Inc. v. Petersons Auto.
a/k/a Larry Petersons, FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding
that the disputed domain name was registered and used in bad faith pursuant to
Policy ¶ 4(b)(iv) through Respondent’s registration and use of the infringing
domain name to intentionally attempt to attract Internet users to its
fraudulent website by using Complainant’s famous marks and likeness); see
also Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that
if Respondent profits from its diversionary use of Complainant's mark when the
domain name resolves to commercial websites and Respondent fails to contest the
Complaint, it may be concluded that Respondent is using the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv)).
In addition,
Respondent reasonably should have been aware of Complainant’s marks since
Complainant has used its marks in commerce since 1994 and is known throughout
the world. The fact that Respondent
registered Complainant’s distinctive mark suggests actual knowledge of
Complainant’s rights in the WARCRAFT-related marks. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb.
Forum Oct. 24, 2002) (“there is a legal presumption of bad faith, when
Respondent reasonably should have been aware of Complainant’s trademarks,
actually or constructively”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration); see also Exxon Mobil Corp. v. Fisher, D2000-1412
(WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive
knowledge of Complainant’s EXXON mark given the worldwide prominence of the
mark and thus Respondent registered the domain name in bad faith).
Therefore,
Complainant has established Policy ¶ 4(a)(iii).
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 <warcraft3.net> domain name be TRANSFERRED
from Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
December 17, 2003
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