DECISION

Vivendi Universal Games and Davidson & Associates, Inc. v. Diablo Design

Claim Number:  FA0304000154596

PARTIES

Complainant is Vivendi Universal Games and Davidson & Associates, Inc., Los Angeles, CA (“Complainant”) represented by David J. Steele of Christie, Parker & Hale LLP. Respondent is Diablo Design, Oklahoma City, OK (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <diablo.com> registered with Network Solutions, 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.

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on April 15, 2003; the Forum received a hard copy of the Complaint on April 16, 2003.

On April 17, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <diablo.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 April 17, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 7, 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@diablo.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 May 15, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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 <diablo.com> domain name is identical to Complainant’s DIABLO mark.

2. Respondent does not have any rights or legitimate interests in the <diablo.com> domain name.

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

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

FINDINGS

Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the DIABLO mark (Reg. No. 2,416,001 registered on December 26, 2000) related to computer programs in the nature of role-playing adventure games. Complainant was the registrant of the <diablo.com> domain name until Complainant’s registration expired.

Respondent registered the disputed domain name on October 29, 2002 immediately after Complainant’s registration expired. Respondent is not currently using the <diablo.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 its rights in the DIABLO mark through registration with the USPTO and continuous use in commerce since 1996.  An argument might well be made that “Diablo” (Spanish for “devil”) is a generic term for the boss of Hades and his ilk. But that would only be true if Complainant’s goods were hellacious. Apparently, the USPTO found that Complainant’s mark was sufficiently distinctive to uniquely identify Complainant’s game software.  The devil is in the details.

Respondent’s <diablo.com> domain name is identical to Complainant’s DIABLO mark because the disputed domain name appropriates Complainant’s complete mark and simply adds the generic top-level domain (gTLD) “.com” to the end of the mark. The addition of a gTLD does not significantly distinguish the domain name from the mark because Complainant’s mark remains the dominant element of the domain name and gTLDs are required to establish a website. See Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to Complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference"); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants").

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

Rights or Legitimate Interests

Respondent has not replied to the allegations in the Complaint. Thus, the Panel may accept as true any reasonable allegations or inferences by Complainant. 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 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).

Moreover, the Panel may presume Respondent lacks any rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii) because of Respondent’s failure to respond. See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because the Respondent never submitted a response or provided the Panel with evidence to suggest otherwise); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond).

Respondent registered the <diablo.com> domain name immediately after Complainant’s registration expired. Since its registration, Respondent has not established a website at the disputed domain name. Respondent’s registration and use of the domain name demonstrates that it lacks any rights or legitimate interests under Policy ¶ 4(a)(ii) because Respondent took advantage of Complainant’s error and has not made a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that “Respondent’s opportunistic registration of the Complainant’s domain name, within 24 hours of its lapse, weighs strongly in favor of a finding that Respondent has no rights or legitimate interests in the disputed domain name”); see also Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any notice of the dispute, the Respondent had not used the domain names in connection with any type of bona fide offering of goods and services); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”).

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

Registration and Use in Bad Faith

The Policy lists four examples of situations that evidence bad faith registration and use of a domain name. These four examples are not meant to be exclusive when determining whether a Respondent registered and used a domain name in bad faith. The Panel may consider the totality of circumstances at its discretion. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive”); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).

The Panel infers from Respondent’s behavior that it had actual knowledge of Complainant’s rights in its mark and its use of the disputed domain name. Respondent’s registration of the <diablo.com> domain name immediately after Complainant’s registration expired is evidence of bad faith registration and use with regard to Policy ¶ 4(a)(iii) because Respondent opportunistically took advantage of Complainant’s mistake and Respondent has no rights to or legitimate interests in the disputed domain name. See R-H-Interactive Jobfinance v. Mooburi Services, FA 137041 (Nat. Arb. Forum Jan. 16, 2003) (finding that Respondent’s registration and use of the <jobfinance.com> domain name “immediately after Complainant failed to timely renew the domain name registration” was evidence of bad faith); see also InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (finding that where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary).

The Panel finds that Policy ¶ 4(a)(iii) has been established.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <diablo.com> domain name be TRANSFERRED from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated:  May 22, 2003

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