DECISION

Vivendi Universal Games, Inc. and Davidson & Associates, Inc. v. The Cupcake Patrol and John Zuccarini

Claim Number:  FA0309000196245

PARTIES

Complainants are Vivendi Universal Games, Inc. and Davidson & Associates, Inc., Los Angeles, CA, USA (hereinafter “Complainant”) represented by David J. Steele, of Christie, Parker & Hale LLP.  Respondent is The Cupcake Patrol and John Zuccarini, Provincia de Chiriqui, Entrega Genera, Panama (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <blizzerd.com>, <dablo.com>, <dablo2.com>, <daiblo.com>, <deablo.com>, <diablocheats.com> and <diabol.com>, registered with Computer Services Langenbach Gmbh d/b/a Joker.Com (hereinafter “Joker.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.

Louis E. Condon as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 18, 2003; the Forum received a hard copy of the Complaint on September 19, 2003.

On September 22, 2003, Joker.Com confirmed by e-mail to the Forum that the domain names <blizzerd.com>, <dablo.com>, <dablo2.com>, <daiblo.com>, <deablo.com>, <diablocheats.com> and <diabol.com> are registered with Joker.Com and that Respondent is the current registrant of the names. Joker.Com has verified that Respondent is bound by the Joker.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 September 23, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 13, 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@blizzerd.com, postmaster@dablo.com, postmaster@dablo2.com, postmaster@daiblo.com, postmaster@deablo.com, postmaster@diablocheats.com and postmaster@diabol.com 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 October 17, 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.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainants makes the following assertions:

1. Respondent’s <blizzerd.com>, <dablo.com>, <dablo2.com>, <daiblo.com>, <deablo.com>, <diablocheats.com> and <diabol.com> domain names are confusingly similar to Complainants’ BLIZZARD and DIABLO marks.

2. Respondent does not have any rights or legitimate interests in the <blizzerd.com>, <dablo.com>, <dablo2.com>, <daiblo.com>, <deablo.com>, <diablocheats.com> and <diabol.com> domain names.

3. Respondent registered and used the <blizzerd.com>, <dablo.com>, <dablo2.com>, <daiblo.com>, <deablo.com>, <diablocheats.com> and <diabol.com> domain names in bad faith.

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

FINDINGS

Complainant, Vivendi Universal Games, Inc. and its affiliate Davidson & Associates, Inc., is a world-wide computer gaming company that markets its games and related goods and services under the BLIZZARD and DIABLO marks. Complainant holds numerous trademark registrations for both its BLIZZARD mark (e.g. U.S. Reg. No. 2,490,187, filed for registration on January 7, 2000 and first used in commerce in 1995) and its DIABLO mark (e.g. U.S. Reg. No. 2,416,011, filed on April 26, 1996). Complainant’s rights in the BLIZZARD mark predate Respondent’s registration of the <blizzerd.com> domain name, and its rights in the DIABLO mark predate Respondent’s registration of the remainder of the disputed domain names. Complainant’s BLIZZARD studios is well known for its release of computer games, and two of its best selling computer games are the DIABLO and DIABLO II games. (Complainant filed an intent-to-use application for the DIABLO II: SALVATION mark on April 26, 2003 as Ser. No. 78/124,337).

Respondent, The Cupcake Patrol and John Zuccarini, registered the <blizzerd.com> domain name on February 27, 2000 and the <dablo.com>, <dablo2.com>, <daiblo.com>, <deablo.com>, <diablocheats.com> and <diabol.com> domain names between October 14, 1999 and August 28, 2000, without license or authorization by Complainant to use the BLIZZARD and DIABLO marks for any purpose. Respondent uses the disputed domain names to redirect Internet users to the <hanky-panky-college.com> domain name, which hosts adult-oriented material. Adult-oriented banner advertisements are also featured at the <hanky-panky-college.com> domain name.

DISCUSSION

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.

Identical and/or Confusingly Similar

Complainant has established rights in the BLIZZARD and DIABLO marks through registration of the marks on the Principal Register of the U.S. Patent and Trademark Office. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which Respondent operates.  It is sufficient that Complainant can demonstrate a mark in some jurisdiction); see also 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 assumption).

Respondent’s <blizzerd.com> domain name is confusingly similar to Complainant’s BLIZZARD mark. The replacement of the letter “a” in Complainant’s BLIZZARD mark with the letter “e” creates a domain name that is phonetically identical and confusingly similar 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 YAHOO! Inc. v. Murray, D2000-1013 (WIPO Nov. 17, 2000) (finding that the domain name <yawho.com> is confusingly similar to Complainant’s YAHOO mark).

Respondent’s <dablo.com>, <dablo2.com>, <daiblo.com>, <deablo.com>, <diablocheats.com> and <diabol.com> domain names are confusingly similar to Complainant’s DIABLO mark. The <diablocheats.com> domain name entirely appropriates Complainant’s DIABLO mark with the addition of the word “cheats,” which is a term of art in the computer gaming field. The remainder of the domain names use various techniques to misspell Complainant’s mark, be it through the transposition of letters (as in the <diabol.com> domain name), the substitution of one letter for another (as in the <deablo.com> domain name), or the addition/deletion of letters or numbers to Complainant’s mark (as in the<dablo2.com> domain name). All of these methods of altering Complainant’s DIABLO mark create domain names that are confusingly similar to Complainant’s mark. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks); see also Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to Complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); see also 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).

Accordingly, the Panel finds that the <blizzerd.com> domain name is confusingly similar to Complainant’s BLIZZARD mark, and that the <dablo.com>, <dablo2.com>, <daiblo.com>, <deablo.com>, <diablocheats.com> and <diabol.com> domain names are confusingly similar to Complainant’s DIABLO mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent uses each of the disputed domain names to redirect Internet users to the <hanky-panky-college.com> domain name. This domain name hosts adult-oriented content, as well as banner advertisements for additional adult-oriented content. Respondent’s unauthorized use of variations of Complainant’s BLIZZARD and DIABLO marks for these purposes is not the type of circumstance considered to be a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii). Therefore, Respondent cannot be considered to have rights or legitmate interests in the disputed domain names under either of these provisions of the Policy. See ABB Asea Brown Boveri Ltd. v. Quicknet, D2003-0215 (WIPO May 26, 2003) (finding that the use of the disputed domain name in connection with pornographic images and links “tarnished and diluted” Complainant’s mark and this was evidence that Respondent had no rights or legitimate interests in the disputed domain name); see also Paws, Inc. v. Zuccarini, 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”).

As either “Cupcake Patrol” or as “John Zuccarini,” Respondent does not appear to be “commonly known by” the disputed domain names, rendering Policy ¶ 4(c)(ii) inapplicable in this dispute. See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “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) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <blizzerd.com>, <dablo.com>, <dablo2.com>, <daiblo.com>, <deablo.com>, <diablocheats.com> and <diabol.com> domain names under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Each of Respondent’s domain names are misspellings of Complainant’s BLIZZARD or DIABLO marks. The principal value that these domain names have comes from their confusing similarity with Complainant’s marks, and the possibility of capitalizing on the goodwill surrounding Complainant’s marks to attract Internet traffic to the <hanky-panky-college.com> domain name. Such unauthorized use of Complainant’s marks tarnishes those marks, and evidences bad faith registration and use of the disputed domain names. See Nat’l Ass’n of Stock Car Auto Racing, Inc. v. RMG Inc – BUY or LEASE by E-MAIL, D2001-1387 (WIPO Jan. 23, 2002) (stating that “it is now well known that pornographers rely on misleading domain names to attract users by confusion, in order to generate revenue from click-through advertising, mouse-trapping, and other pernicious online marketing techniques”); see also Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO March 4, 2003) (stating that “whatever the motivation of Respondent, the diversion of the domain name to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith”).

The Panel thus finds that Respondent registered and used the <blizzerd.com>, <dablo.com>, <dablo2.com>, <daiblo.com>, <deablo.com>, <diablocheats.com> and <diabol.com> domain names in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

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 <blizzerd.com>, <dablo.com>, <dablo2.com>, <daiblo.com>, <deablo.com>, <diablocheats.com> and <diabol.com> domain names be TRANSFERRED from Respondent to Complainant Vivendi Universal Games, Inc.

Louis E. Condon, Panelist

Dated:  October 31, 2003

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