DECISION

Vivendi Universal Games, Inc. and Davidson and Associates, Inc. v. Registrate Co.

Claim Number: FA0309000198806

PARTIES

Complainants are Vivendi Universal Games, Inc. and Davidson and 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 92660. Respondent is Registrate Co., 138-1 Seocho-2dong, Seocho-ku, Seoul, Korea 137-072 (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <warcraft2.com> registered with Bulkregister, LLC.

PANEL

The undersigned certifies that she has acted independently and impartially and that, to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically September 29, 2003; the Forum received a hard copy of the Complaint September 30, 2003.

On October 3, 2003, Bulkregister, LLC confirmed by e-mail to the Forum that the domain name <warcraft2.com> is registered with Bulkregister, LLC and that Respondent is the current registrant of the name. Bulkregister, LLC verified that Respondent is bound by the Bulkregister, LLC registration agreement and thereby has 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 6, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 27, 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@warcraft2.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 November 4, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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 name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. The domain name registered by Respondent, <warcraft2.com>, is confusingly similar to Complainant’s WARCRAFT mark.

2. Respondent has no rights or legitimate interests in the <warcraft2.com> domain name.

3. Respondent registered and used the <warcraft2.com> domain name in bad faith.

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

FINDINGS

Complainant produced evidence in this proceeding of a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the WARCRAFT mark (Registration Number 1,947,586, registered January 9, 1996) related to computer programs for video and computer games and instruction manuals sold as a unit with the programs. Complainant also produced a number of pending trademark applications with the USPTO that incorporate the WARCRAFT mark. Complainant uses the WARCRAFT mark in relation to its worldwide computer gaming company, which creates and markets best-selling computer games, including Warcraft II.

Respondent registered the <warcraft2.com> domain name October 31, 2000. Respondent is using the disputed domain name to re-direct Internet traffic to the website at <gotoo.com/treasure>, which displays banner advertising and commercial content.

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 will draw such inferences as the Panel 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 to and/or Confusingly Similar

Complainant established in this proceeding that it has rights in the WARCRAFT mark through its registration with the USPTO. 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 assumption).

Complainant contends that the domain name registered by Respondent, <warcraft2.com>, is confusingly similar to Complainant’s WARCRAFT mark because the disputed domain name incorporates the mark and merely adds the number “2” and the generic top-level domain (“gTLD”) “.com” to the mark. Neither the addition of the number nor the gTLD significantly differentiates the domain name from Complainant’s mark under Policy ¶ 4(a)(i). See 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); see also Nintendo of Am., Inc. v. Lizmi, FA 94329 (Nat. Arb. Forum Apr. 24, 2000) (finding that Respondent’s domain names <pokemon2000.com> and <pokemons.com> are confusingly similar to Complainant’s mark).

The Panel finds that Complainant has established Policy ¶ 4(a)(i).

Rights to or Legitimate Interests

Respondent failed to come forward with a Response in this proceeding. Accordingly, the Panel accepts all reasonable allegations and inferences in the Complaint as true. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Furthermore, based on Respondent’s failure to challenge the allegations in the Complaint, the Panel presumes Respondent lacks any rights to or legitimate interests in the disputed domain name with regard to Policy ¶ 4(a)(ii). See 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); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

Respondent is using the disputed domain name to re-direct Internet traffic to the website at <gotoo.com/treasure>, which displays banner advertising and commercial content. Respondent’s unauthorized commercial use of the <warcraft2.com> domain name, a domain name confusingly similar to Complainant’s WARCRAFT mark, is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum Apr. 5, 2003) (holding that Respondent’s use of the disputed domain name, a simple misspelling of Complainant’s mark, to divert Internet users to a website that featured pop-up advertisements and an Internet directory, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that Respondent’s use of the disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).

Moreover, Respondent has offered no proof and no evidence in the record indicates that Respondent is commonly known by the WARCRAFT 2 or <warcraft2.com> names. Therefore, the Panel finds that Respondent has failed to establish any rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 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"); see also 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).

Accordingly, the Panel finds that Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent’s unauthorized commercial use of a domain name that is confusingly similar to Complainant’s trademark suggests that the <warcraft2.com> domain name was registered and used in bad faith.  The use of a domain name with the intent to attract Internet users to a website for commercial gain by creating a likelihood of confusion with a trademark holder’s mark as to the source, sponsorship, affiliation or endorsement of said website evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See 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)); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website).

Furthermore, the Panel finds that Respondent’s <warcraft2.com> domain name is so obviously connected with Complainant’s WARCRAFT mark and Warcraft II computer video game that Respondent’s registration and use of the disputed domain name suggests an opportunistic bad faith intent to profit from the domain name’s confusing similarity to Complainant’s trademark. See Harrods Ltd. v. Harrod’s Closet D2001-1027 (WIPO Sept. 28, 2001) (finding that where a mark is so obviously connected with well-known products, its very use by someone with no connection to these products can evidence opportunistic bad faith); see also London Metal Exch. Ltd. v. Hussain; D2000-1388 (WIPO Dec. 15, 2000) (finding that the “letters ‘lme’ are so obviously connected with a well-known entity that their very use by someone with no connection to Complainant suggests opportunistic bad faith”).

The Panel finds that Policy ¶ 4(a)(iii) 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 <warcraft2.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: November 17, 2003.

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2003/1056.html