Vivendi Universal Games and Davidson & Associates, Inc. v. Ronald A. Ballard

Claim Number:  FA0302000146621



Complainant is Vivendi Universal Games and Davidson & Associates, Inc., Los Angeles, CA (“Complainant”) represented by David J. Steele, of Christie, Parker & Hale. Respondent is Ronald A. Ballard, Decatur, IN (“Respondent”).



The domain name at issue is <>, registered with Namesecure.Com.



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 (the "Forum") electronically on February 24, 2003; the Forum received a hard copy of the Complaint on February 26, 2003.


On February 26, 2003, Namesecure.Com confirmed by e-mail to the Forum that the domain name <> is registered with Namesecure.Com and that Respondent is the current registrant of the name.  Namesecure.Com has verified that Respondent is bound by the Namesecure.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 February 27, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 19, 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 by e-mail.


On February 27, 2003, in lieu of a formal Response, the Forum received an informal reply to the Complaint from the named Registrant of the <> domain name, expressing the desire to transfer the domain name registration to Complainant.


On March 7, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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").  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 formal Response from Respondent.



Complainant requests that the domain name be transferred from Respondent to Complainant.



A.  Complainant makes the following assertions:


1.      Respondent’s <> domain name is identical to Complainant’s BLIZZARD NORTH mark.


2.      Respondent does not have any rights or legitimate interests in the <> domain name.


3.      Respondent registered and used the <> domain name in bad faith.


B.  Respondent failed to submit a formal Response in this proceeding.

1.      In the informal submission, it is alleged that Mr. Ballard never registered the <> domain name, and that it is his wish that the disputed domain name be transferred to Complainant.



Complainant, Vivendi Universal Games and Davidson & Associates, Inc., holds numerous trademark registrations for the BLIZZARD mark (e.g. U.S. Reg. No. 2,410,749, registered on the Principal Register of the United States Patent and Trademark Office (“USPTO”) on December 5, 2000).  Complainant began operating under its BLIZZARD mark as early as 1996, and is in the business of marketing computer games and related goods worldwide.


On March 18, 1996, Complainant acquired Condor Interactive, Inc., and formed an entity known by the BLIZZARD NORTH mark.  Under this mark, Complainant developed and marketed several top-selling computer games, including Diablo and Diablo II.  Today, the top-selling games marketed by Complainant under the BLIZZARD NORTH mark are played by millions of users on Complainant’s free online game service located at <>.  Complainant’s registered BLIZZARD and common law BLIZZARD NORTH marks are associated with high quality computer games by consumers, and Complainant has generated considerable goodwill surrounding its family of marks.


Respondent, Ronald A. Ballard, is listed as registering the <> domain name on December 29, 2002.  All information in the domain name’s WHOIS contact information is his, with the exception of the e-mail address.  His credit card was used to pay for the registration.  However, in both a signed affidavit and an informal submission to the Panel, Mr. Ballard claims that he did not actually register the disputed domain name.


On or about December 29, 2002, Mr. Ballard was the victim of identity theft. His credit card number was stolen and was used along with his personal information to register the disputed domain name.  After its registration, the disputed domain name was used to host an exact duplicate of Complainant’s <> website, which facilitated the illegal interception of account names and passwords of Internet users who assumed they were accessing Complainant’s website.  Mr. Ballard claims no interest in maintaining the <> domain name, and in his informal submission to the Panel expresses his wish that the domain name registration be transferred to 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 formal 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.


Identical and/or Confusingly Similar

Complainant has established sufficient common law rights in the BLIZZARD NORTH mark to bring this dispute under the UDRP.  The UDRP is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy.  See McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000); see also British Broadcasting Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).


Respondent’s <> domain name is identical to Complainant’s BLIZZARD NORTH mark. Neither the elimination of the space in Complainant’s mark nor the addition of the top-level domain “.net” are of consequence for the purposes of Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Clerical Med. Inv. Group Ltd. v., D2000-1228 (WIPO Nov. 28, 2000) (finding that the domain name, <> is identical to various registered trademarks belonging to Clerical Medical).


Accordingly, the Panel finds that the <> domain name is identical to Complainant’s BLIZZARD NORTH mark under Policy ¶ 4(a)(i).


Rights or Legitimate Interests

Respondent has no rights or legitimate interests in the <> domain name.  The infringing domain name is used to illegally procure account names and passwords from Internet users who believe that they are accessing one of Complainant’s websites.  The wholesale copying of the source code underlying Complainant’s website at <>, including Complainant’s copyrighted works and registered trademarks, are all designed to foster the illusion that an Internet user is actually at Complainant’s website.  The Panel finds that this exploitation of the goodwill and consumer trust surrounding the BLIZZARD NORTH mark to aid in its illegal activities is prima facie evidence of a lack of rights and legitimate interests in the disputed domain name. See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (finding Respondent’s use of the confusingly similar domain name <> to sell counterfeit versions of Complainant’s HP products was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)); see also Oly Holigan, L.P. v. Private, FA 95940 (Nat. Arb. Forum Dec. 4, 2000) (finding no rights or legitimate interest in a misspelled domain name because Respondent did not provide any bona fide products in connection with the domain name).


Furthermore, Mr. Ballard denies any association with the website, asserts that he has no rights or legitimate interests in the disputed domain name and desires the transfer of the domain name to Complainant.  This is convincing evidence that Complainant has met its burden under Policy ¶ 4(a)(ii). See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that Respondent’s failure to submit a formal response combined with its agreement at the onset of the Complaint to transfer the disputed names satisfies all the requirements of 4(a)); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (finding that Respondent’s agreement to transfer and suggestion that a formal Complaint be initiated to confirm transfer are evidence of Respondent’s lack of legitimate interests).


Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <> domain name under Policy ¶ 4(a)(ii).


Registration and Use in Bad Faith

The <> domain name was registered and used in bad faith.  The infringing domain name is deliberately creating a liklihood of confusion as to the source or sponsorship of the domain name.  Complainant’s mark was appropriated at registration, and then a copy of Complainant’s website was used at the domain name.  This creation of a likelihood of confusion for the purposes of illegitimate commercial gain via theft not only runs afoul of Policy ¶ 4(b)(iv), but violates Paragraph 2(c) of the UDRP. This paragraph of the UDRP states that a domain name.  Registrant agrees that it is not registering a domain name “for any unlawful purpose.”  These violations of Policy ¶ 4(b)(iv) and ¶ 2(c) are evidence of bad faith use and registration of a domain name. See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the use of the <> domain name to misrepresent to Internet users some sponsorship by Complainant and to provide misleading information to the public supported a finding of bad faith); see also, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the <> domain name, which contains Complainant’s Dr. Math mark, was linked to a website unassociated with Complainant, creating confusion for Internet users regarding the endorsement, sponsorship, or affiliation of the website).


The Panel thus finds that the <> domain name was registered and used in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.



Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.


Accordingly, it is Ordered that the <> domain name be TRANSFERRED from Respondent to Complainant.



The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  March 13, 2002



Click Here to return to the main Domain Decisions Page.


Click Here to return to our Home Page