DECISION

Vivendi Universal Games d/b/a Davidson and Associates, Inc. v. Louis Chang d/b/a Domain543.com

Claim Number:  FA0310000206328

PARTIES

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.

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 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.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

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.

FINDINGS

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. 

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 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).

Rights or Legitimate Interests

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).

Registration and Use in Bad Faith

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).

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 <warcraft3.net> domain name be TRANSFERRED from Respondent to Complainant.

Louis E. Condon, Panelist

Dated:  December 17, 2003

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