Activision Publishing, Inc. v. Junore Payoute / Active Vision
Claim Number: FA2011001920708
Complainant is Activision Publishing, Inc. (“Complainant”), represented by Adam D. Mandell of Millen, White, Zelano & Branigan, P.C., Virginia, USA. Respondent is Junore Payoute / Active Vision (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <activesvisions.com> (“Domain Name”), registered with Tucows Domains 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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 14, 2020; the Forum received payment on November 14, 2020.
On November 16, 2020, Tucows Domains Inc. confirmed by e-mail to the Forum that the <activesvisions.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 November 18, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 8, 2020 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 firstname.lastname@example.org. Also on November 18, 2020, 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.
Respondent submitted a response on December 6, 2020.
On December 8, 2020, Complainant submitted to the Forum an additional unsolicited submission.
On December 11, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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.
Paragraph 12 of the Rules does not contemplate unsolicited submissions after the Complaint and Response and gives the Panel the "sole discretion" as to acceptance and consideration of additional submissions that comply (which is the case in the current proceeding) with the Forum’s Supplemental Rule 7. See Darice, Inc. v. Texas International Property Associates - NA NA, FA1082320, (Forum 16 November, 2007).
Complainant’s additional submission responds to certain factual statements made in the Response that Complainant could not have been made aware of prior to the receipt of the Response. Under these circumstances the Panel has taken the additional submission into consideration.
Complainant is a leading global developer and publisher of interactive software products and entertainment content. Since 1980, Complainant has used the mark ACTIVISION to identify and distinguish in commerce all of its interactive video games, online gaming services and various other related goods and services. Complainant has rights in the ACTIVISION mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,183,958, registered December 29, 1981). Respondent’s <activesvisions.com> is identical or confusingly similar to Complainant’s ACTIVISION mark as the disputed domain name consists of the words “active” and “vision,” merely adding the letter “s” to both.
Respondent lacks rights or legitimate interests in the <activesvisions.com> domain name. Respondent is not commonly known by the Domain Name nor has Respondent been authorized by Complainant to use the ACTIVISION mark. Respondent has not used the Domain Name in connection with a bona fide offering of goods or services as Respondent uses the Domain Name to divert Internet users to a website (“Respondent’s Website”) that offers various goods and services including games controllers that compete with Complainant
Respondent registered and uses the <activesvisions.com> domain name in bad faith. Respondent uses the Domain Name to attract Internet users to Respondent’s competing website for commercial gain. Furthermore, Respondent had actual knowledge of Complainant’s rights to the ACTIVISION mark prior to registering the Domain Name by virtue of the famous nature of Complainant’s mark.
Respondent concedes that the <activesvisions.com> domain name is similar to the ACTIVISION mark, but notes that the Domain Name is <ActivesVisions.com> whereas the Complainant’s website is at is www.activision.com. The Respondent’s Website is no longer accessible.
Respondent has rights to the <activesvisions.com> domain name because of Respondent’s harmless intent; Respondent was unaware of Complainant’s website and Respondent has agreed to take the website down. Additionally, the Respondent’s Website did not make any sales so there is no way the website prevented Complainant from making sales.
C. Additional Submissions
Complainant’s additional submission responds to a number of factual claims made in the Response, most notably confirming that on the date the Complaint was filed the Domain Name resolved to the Respondent’s Website.
Complainant holds trademark rights for the ACTIVISION mark. The Domain Name is confusingly similar to Complainant’s ACTIVISION mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the 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.
Complainant asserts rights in the ACTIVISION mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,183,958, registered December 29, 1981). Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel may find Complainant has demonstrated rights in the ACTIVISION mark per Policy ¶ 4(a)(i).
The Panel finds that the <activesvisions.com> domain name is confusingly similar to the ACTIVISION mark as it simply adds the letters “ves” and “s” to the ACTIVISION mark, resulting in a minor misspelling. Adding a gTLD to a misspelled mark fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Bittrex, Inc. v. Sergey Valerievich Kireev / Kireev, FA 1784651 (Forum June 5, 2018) (holding that the domain name consists of the BITTREX mark and adds “the letters ‘btc’ and the gTLD .com which do not distinguish the Domain Name from Complainant’s mark.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the 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 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (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.”). The Panel holds that Complainant has made out a prima facie case
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the ACTIVISION mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Junore Payoute / Active Vision” as registrant of record and Respondent does not make any argument or provide any evidence to suggest that it was commonly known by the Active Vision name (as opposed to simply listing it as a registrant name). Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name resolves to the Respondent’s Website, which as at the date of the decision is essentially inactive (it resolves to a mock-up retail website with no products available), but prior to the commencement of the proceeding resolved to a website selling a variety of goods including consumer electronic products such as video game controllers. Respondent, aside from asserting harmless intent, does not explain its business model, including why it sought to register the Domain Name and use it for selling products that complement Complainant’s computer games products. Respondent’s use of the Domain Name for a commercial website selling goods (or advertising products for sale by third parties, for which it is likely to receive revenue) under Complainant’s ACTIVISION mark does not amount a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use per Policy ¶ 4(c)(iii). See American International Group, Inc. v. Walter Busby d/b/a AIG Mergers and Acquisitions, FA0304000156251 (Forum May 30, 2003) and CliC Goggles, Inc. v. Ernesto Duarte, FA1006001327834 (Forum July 13, 2010) (“The Panel finds that using a variation on Complainant’s mark to redirect Internet users to a site not affiliated with Complainant but offering similar competing products is not a bona fide offering of goods or services or a legitimate non-commercial or fair use under Policy ¶ 4(c)(i) or ¶ 4(c)(iii).”)
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that, at the time of registration of the Domain Name, October 12, 2020, Respondent had actual knowledge of Complainant’s ACTIVISION mark given the fame of the ACTIVISION mark and the fact that the Respondent’s Website sold products (under the Active Vision name) that complemented Complainant’s computer game products. Furthermore, there is no obvious explanation, nor has one been provided in the Response, for an entity to register a domain name that contains a misspelling of the ACTIVISION mark and use it for a retail website. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Name in bad faith to by using Complainant’s ACTIVISION mark to attract Internet users to Respondent’s Website for commercial gain. Respondent asserts that it made no sales from its website, but provides no evidence to support this assertion (which is not determinative, since regardless of actual sales, there is a clear intent to attract Internet users to Respondent’s Website for commercial gain). Using a confusingly similar domain name to divert internet users to a respondent’s website can demonstrate bad faith per Policy ¶¶ 4(b)(iii) and (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)). for commercial gain by using the confusingly similar Domain Name to resolve to a website mimicking Complainant’s website and offering valves in direct competition with the Complainant’s products. Using a confusingly similar domain name to trade upon the goodwill of a complainant can evince bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <activesvisions.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: December 14, 2020
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