DECISION

Vivendi Universal Games and Davidson and Associates, Inc. v. Lorna Kang

Claim Number:  FA0309000198804

PARTIES

Complainants are Vivendi Universal Games 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 Lorna Kang, PO Box 21, Telok, Intan, Perak, Malaysia (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wwwblizzard.com>, registered with iHoldings.com, Inc. d/b/a dotregistrar.com.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

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

On September 30, 2003, iHoldings.com, Inc. d/b/a dotregistrar.com confirmed by e-mail to the Forum that the domain name <wwwblizzard.com> is registered with iHoldings.com, Inc. d/b/a dotregistrar.com and that Respondent is the current registrant of the name. iHoldings.com, Inc. d/b/a dotregistrar.com has verified that Respondent is bound by the iHoldings.com, Inc. d/b/a dotregistrar.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 October 1, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 21, 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@wwwblizzard.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 October 28, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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—Davidson and Associates, Inc.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <wwwblizzard.com> domain name is confusingly similar to Complainant’s BLIZZARD mark.

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

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

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

FINDINGS

Complainant holds rights in the BLIZZARD mark.  Complainant has been operating under the BLIZZARD name and mark in the United States since at least as early as 1995.  Complainant markets, sells, and distributes video games and related goods and services around the world.  In addition, Complainant holds more than eleven active BLIZZARD trademark registrations with the US Patent and Trademark Office (BLIZZARD trademark for computer game books (Reg. No. 2410748); BLIZZARD trademark for clothing, hats, and shirts (Reg. No. 2410749); BLIZZARD service mark for entertainment services (Reg. No. 2433353); as well as BLIZZARD ENTERTAINMENT trademarks and service marks (e.g. Reg. Nos. 1993894, 2440620, 2490189, and 2492072)).  Complainant also owns the registration for the domain name <blizzard.com>.

Respondent, Lorna Kang, registered the <wwwblizzard.com> domain name on March 25, 2002 and is not licensed or authorized to use Complainant’s BLIZZARD mark for any purpose.  Respondent links the disputed domain name to a page at the <ownbox.com> domain name which leads consumers to a series of advertisements that purport to offer credit card services, music, and green cards.  Complainant has provided a list of 275 other domain names registered in the Respondent’s name.  Almost all of the domain names on this list are similar to well-known trademarks.  The main difference between Respondent’s domain names and the well-known trademarks is an addition or omission of one letter or a period.

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 BLIZZARD 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 Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing).

Respondent’s <wwwblizzard.com> domain name is confusingly similar to Complainant’s BLIZZARD mark.  The only difference is that Respondent added “www” to Complainant’s mark.  Such difference is insufficient to differentiate Respondent’s <wwwblizzard.com> domain name from Complainant’s BLIZZARD mark.  Therefore, Complainant has established that the <wwwblizzard.com> domain name is confusingly similar to Complainant’s BLIZZARD mark.  See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is confusingly similar to Complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”); see alsoMarie Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters "www" are not distinct in the "Internet world" and thus Respondent 's <wwwmarieclaire.com> domain name is confusingly similar to Complainant's MARIE CLAIRE trademark).

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

Rights or Legitimate Interests

Respondent is using the disputed domain name to redirect Internet users to a series of advertisements that are all unrelated to Complainant’s BLIZZARD mark.  The advertisements at Respondent’s domain name offer credit card services, music, and purported green cards.  Respondent is taking advantage of Complainant’s mark by diverting Internet users to such commercial domain names for its own financial gain.  Respondent is also tarnishing Complainant’s mark by subjecting Internet users to a series of intrusive and unsolicited ads.  Respondent’s redirection from the <wwwblizzard.com> domain name to advertising websites that are unrelated to Complainant does not establish rights or legitimate interests in the domain name under Policy ¶¶ 4(c)(i) and (iii).  See FAO Schwarz v. Zuccarini, FA 95828 (Nat. Arb. Forum Dec. 1, 2000) (finding no rights or legitimate interests in the domain names <faoscwartz.com>, <foaschwartz.com>, <faoshwartz.com>, and <faoswartz.com> where Respondent was using these domain names to link to an advertising website); see also AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name). 

Respondent, Lorna Kang, is not “commonly known” by the disputed domain name.  Given the WHOIS contact information for the disputed domain, one can infer that Respondent is not commonly known by the name.  In addition, Complainant has not licensed or authorized Respondent to use the <wwwblizzard.com> 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. Lee 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 Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  Respondent creates a likelihood of confusion as to the source of goods or services when Respondent uses Complainant’s famous BLIZZARD mark to divert Internet users who misspell Complainant’s domain name.  The content of the “diverted to” website implies that Respondent is commercially profiting from the unauthorized use of Complainant’s BLIZZARD mark in the <wwwblizzard.com> domain name.  Additionally, evidence reveals that Respondent has a history of registering confusingly similar variations of famous marks in domain names in order to commercially benefit.  See Canadian Tire Corp., Ltd. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (holding that “[t] absence of a dot between the “www” and “canadiantire.com” [in the <wwwcanadiantire.com> domain name is] likely to confuse Internet users, encourage them to access Respondent’s site” and evidenced bad faith registration and use of the domain name); see also ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where the Respondent linked the domain name to another website <iwin.com>, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain).  The intent of the Policy is to remedy infringement by habitual typosquatters, like Respondent.  See e.g. Nat’l Wildlife Fed’n v Lorna Kang FA 170519 (Nat. Arb. Forum Sept. 9, 2003; Yahoo! Inc. and HotJobs.com, Ltd. v. Alex Vorot aka Arzra Kahn aka Registrate Co., aka NA aka Andrey Michailov aka Amhad Kauser aka Lorna Kang aka Venta aka Dotsan aka Yong Li aka Mahmoud Nadim FA 159547 (Nat. Arb. Forum July 16, 2003); Qwest Communications Int’l, Inc. v. Lorna Kang FA 158161 (Nat. Arb. Forum July 8, 2003); Diane Hof aka/dba Sunset Thomas v. Lorna Kang FA 151119 (Nat. Arb. Forum May 12, 2003); The Toronto-Dominion Bank v. Lorna Kang FA 150816 (Nat. Arb. Forum Apr. 28, 2003); Disney Enterprises, Inc. v. Lorna Kang FA 125375 (Nat. Arb. Forum Sept. 27, 2002).

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

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 <wwwblizzard.com> domain name be TRANSFERRED from Respondent to Complainant—Davidson and Associates, Inc.

Tyrus R. Atkinson, Jr., Panelist

Dated:  November 5, 2003

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