DECISION

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

domain admin and VDOMAINS

Claim Number:  FA0404000250744

PARTIES

Complainant is Vivendi Universal Games, Inc. and Davidson and Associates (collectively “Complainant”), represented by David J. Steele, of Christie, Parker & Hale LLP, 3501 Jamboree Road, Suite 6000, Newport Beach, CA 92660.  Respondent is domain admin and VDOMAINS (collectively “Respondent”), 7152 Valencia, Barcelo Guerrero, Bocana, Austrailia 08100.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <starcraftii.net>, registered with Onlinenic, 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.

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on April 1, 2004; the Forum received a hard copy of the Complaint on April 2, 2004.

On April 7, 2004, Onlinenic, Inc. confirmed by e-mail to the Forum that the domain name <starcraftii.net> is registered with Onlinenic, Inc. and that Respondent is the current registrant of the name. Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic, 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 8, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 28, 2004 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@starcraftii.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 June 17, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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 <starcraftii.net> domain name is confusingly similar to Complainant’s STARCRAFT mark.

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

3. Respondent registered and used the <starcraftii.net> domain name in bad faith.

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

FINDINGS

Complainant, Vivendi Universal Games, holds rights in the STARCRAFT mark through its subsidiary, Davidson and Associates.  Complainant has been operating under the STARCRAFT name and mark in the United States since at least as early as 1998.  Complainant markets, sells, and distributes video games and related goods and services around the world.  In addition, Complainant registered the STARCRAFT mark with the U.S. Patent and Trademark Office (“USPTO”) (Reg. No. 2,424,142) on January 23, 2001. 

Respondent, domain admin and Vdomains, registered the <starcraftii.net> domain name on March 17, 2004.  Respondent is using the disputed domain name to lead Internet users to a pornographic website with links to other pornographic websites.

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 STARCRAFT mark through registration with the U.S. Patent and Trademark Office and subsequent continuous use of the mark in commerce.  See 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 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 <starcraftii.net> domain name is confusingly similar to Complainant’s STARCRAFT mark.  The only difference is the addition of the letters “ii.”  Such difference is insufficient to differentiate Respondent’s <starcraftii.net> domain name from Complainant’s STARCRAFT mark.  Therefore, Complainant has established that the <starcraftii.net> domain name is confusingly similar to Complainant’s STARCRAFT mark.  See America Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that Respondent’s domain name <go2AOL.com> was confusingly similar to Complainant’s AOL mark); see also Hitachi, Ltd. v. Fortune Int’l Dev. Ent, D2000-0412 (WIPO July 2, 2000) (finding that the domain name <hitachi2000.net> is confusingly similar to Complainant’s mark).

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

Rights or Legitimate Interests

Respondent has failed to submit a Response in this proceeding.  Thus, the Panel is permitted to accept all reasonable allegations and inferences in the Complaint as true.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

Respondent is using the disputed domain name to redirect Internet users to pornography and links to other pornographic websites, which are all unrelated to Complainant’s STARCRAFT mark.  The Panel infers that Respondent is receiving click-through revenues for its referrals to these pornographic sites.  Respondent is taking advantage of Complainant’s mark by diverting Internet users to such commercial domain names for its own financial gain.  Offering pornography, and links to more pornography, through the use of the <starcraftii.net> domain name is not 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 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”); see also Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that Respondent’s use of Complainant’s mark to “define the location of Respondent’s website on the Internet” and to host a pornographic website was not a legitimate noncommercial or fair use of the domain name).

Respondent, is not “commonly known by” the disputed domain name, given the WHOIS contact information for the disputed domain.  In addition, Complainant has not licensed or authorized Respondent to use the <starcraftii.net> domain name.  Thus, it is reasonable for the Panel to infer that Policy ¶ 4(c)(ii) does not apply to Respondent.  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 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.").

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

Registration and Use in Bad Faith

Respondent is using a domain name that is confusingly similar to Complainant’s mark to profit from pornography.  Respondent creates a likelihood of confusion as to the source of goods or services when Respondent uses Complainant’s STARCRAFT mark to divert Internet users who misspell Complainant’s domain name.  In addition, the content of the “diverted to” website implies that Respondent is commercially profiting from the unauthorized use of Complainant’s STARCRAFT mark in the <starcraftii.net> domain name.  The Panel finds that Respondent’s registration and use is bad faith, pursuant to Policy ¶ 4(b)(iv).  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]hile an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion").

In addition, appropriating Complainant’s mark to lead Internet users to pornography is predatory in nature; it is the kind of registration and use that the Policy attempts to protect against pursuant to Policy ¶ 4(a)(i).  See Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that Respondent’s use of Complainant’s mark to post pornographic photographs and to publicize hyperlinks to additional pornographic websites evidenced bad faith use and registration of the domain name); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith).

Accordingly, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

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

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated:  May 27, 2004

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