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Generic Top Level Domain Name (gTLD) Decisions |
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”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <blizzardnorth.net>,
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 <blizzardnorth.net> 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
postmaster@blizzardnorth.net 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 <blizzardnorth.net>
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
<blizzardnorth.net> domain name is identical to Complainant’s BLIZZARD
NORTH mark.
2.
Respondent
does not have any rights or legitimate interests in the <blizzardnorth.net>
domain name.
3.
Respondent
registered and used the <blizzardnorth.net> 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 <blizzardnorth.net>
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 <battle.net>. 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 <blizzardnorth.net>
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 <battle.net> 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 <blizzardnorth.net>
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.
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 <blizzardnorth.net> 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
<hannoverre.com> 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. Clericalmedical.com, D2000-1228
(WIPO Nov. 28, 2000) (finding that the domain name, <clericalmedical.com>
is identical to various registered trademarks
belonging to Clerical Medical).
Accordingly,
the Panel finds that the <blizzardnorth.net> domain name is identical to Complainant’s
BLIZZARD NORTH mark under Policy ¶ 4(a)(i).
Respondent
has no rights or legitimate interests in the <blizzardnorth.net> 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 <battle.net>, 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
<hpmilenium.com>
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 <blizzardnorth.net> domain
name under Policy ¶ 4(a)(ii).
The
<blizzardnorth.net> 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
<monsantos.com> 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 MathForum.com, LLC v. Weiguang Huang,
D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv)
where the <drmath.com> 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 <blizzardnorth.net> 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 <blizzardnorth.net> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K.
McCotter, Jr. (Ret.), Panelist
Dated: March 13, 2002
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URL: http://www.worldlii.org/int/other/GENDND/2003/257.html