DECISION

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

Peter Carrington dba Party Night, Inc.

Claim Number:  FA0309000198888

PARTIES

Complainant is Vivendi Universal Games and 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 Peter Carrington dba Party Night, Inc., Jan Luykenstraat 58, Amsterdam, Netherlands (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <daibloii.net>, <diabloi.net>, <diaboii.net>, and <warcraft3cheats.com>, registered with Key-Systems GmbH.

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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

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

On October 7, 2003, Key-Systems GmbH confirmed by e-mail to the Forum that the domain names <daibloii.net>, <diabloi.net>, <diaboii.net>, and <warcraft3cheats.com> are registered with Key-Systems GmbH and that Respondent is the current registrant of the names. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 7, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 27, 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@daibloii.net, postmaster@diabloi.net, postmaster@diaboii.net, and postmaster@warcraft3cheats.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 31, 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") "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 names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <daibloii.net>, <diabloi.net>, <diaboii.net>, and <warcraft3cheats.com> domain names are confusingly similar to Complainant’s DIABLO, DIABLO II: SALVATION, WARCRAFT, and WARCRAFT III: REIGN OF CHAOS marks.

2. Respondent does not have any rights or legitimate interests in the <daibloii.net>, <diabloi.net>, <diaboii.net>, and <warcraft3cheats.com> domain names.

3. Respondent registered and used the <daibloii.net>, <diabloi.net>, <diaboii.net>, and <warcraft3cheats.com> domain names in bad faith.

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

FINDINGS

Complainant holds rights in the DIABLO, DIABLO II: SALVATION, WARCRAFT, and WARCRAFT III: REIGN OF CHAOS marks.  Complainant has been operating under the DIABLO name and mark in the United States since 1996 and under the WARCRAFT name and mark since 1994.  Complainant markets, sells, and distributes video games and related goods and services around the world.  In addition to the first active DIABLO mark, Complainant holds two ITU registrations for the DIABLO mark (Reg. No. 78,124,337 and Reg. No. 75,099,783) with the U.S. Patient and Trademark Office (“PTO”) including DIABLO II: SALVATION.  Complainant also holds ten active and ITU registrations under for the WARCRAFT mark (e.g. Reg. No. 78,275,015, Reg. No. 78,274,989, Reg. No. 78,274,961, Reg. No. 78,083,838, Reg. No. 78,124,341) with the PTO including WARCRAFT III: REIGN OF CHAOS.  Complainant also owns the registration for the domain names <diablo.com> and <warcraft.com>.

Respondent, Peter Carrington Party Night, Inc., registered the following domains on the respective dates:

<daibloii.net>	March 7, 2002
<diabloi.net>	May 7, 2002
<diaboii.net>	May 7, 2002
<warcraft3cheats.com>	July 6, 2002

Respondent is not licensed or authorized to use Complainant’s marks for any purpose.  Complainant alleges that Respondent redirects users from the disputed domain names to websites with advertising.

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 DIABLO and WARCRAFT marks through registration with the PTO 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 <daibloii.net>, <diabloi.net>, <diaboii.net>, and <warcraft3cheats.com> domain names are confusingly similar to Complainant’s DIABLO, DIABLO II: SALVATION, WARCRAFT, and WARCRAFT III: REIGN OF CHAOS marks.   

The <diabloi.net> domain name adds a roman numeral or characters to Complainant’s DIABLO mark.  Adding numbers or letters does not significantly change the word to not reflect the mark.  See 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); see also America Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that <oicq.net> and <oicq.com> are confusingly similar to Complainant’s mark, ICQ). 

The <daibloii.net> and <diaboii.net> domain names misspell and add characters to Complainant’s DIABLO mark.  The transposed “i” and “a” (in the root “daiblo”) as well as the omitted “l” (in the root “diabo”) are not significant enough to dispel potential confusion, and, as noted, the addition of numerals is insigificant.  See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to Complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the domain name <geociites.com> is confusingly similar to Complainant’s GEOCITIES mark).

The <warcraft3cheats.com> domain name adds a number and a generic word to the WARCRAFT mark.  As explained above, the addition of a number does not significantly distinguish the domain name from the mark.  Furthermore, the addition of a generic word to a mark in a domain name does not distinguish the domain name from the mark.  See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also America Online, Inc. v. Anytime Online Traffic School, FA 146930 (Nat. Arb. Forum April 11, 2003) (finding that Respondent’s domain names, which incorporated Complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity).

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

Rights or Legitimate Interests

Complainant alleges that Respondent is using the disputed domain names to redirect Internet users to banner advertisements.  Respondent offers no proof to refute this claim and, in fact, 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 has not demonstrated anything that asserts rights and legitimate interests in the domain name.  When Complainant asserts a prima facie case against Respondent, the burden shifts to Respondent to show that he has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate any rights or legitimate interests in the domain name).

Taking the reasonable assertions in the Complaint to be true, and taking the lack or Respondent’s rights and legitimate interests in the disputed domain name, the Panel can infer that Respondent is taking advantage of Complainant’s mark by diverting Internet users to such commercial web sites for its own financial gain.  Respondent’s redirection from the <daibloii.net>, <diabloi.net>, <diaboii.net>, and <warcraft3cheats.com> domain names 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). 

Given the WHOIS contact information for the disputed domain, one can infer that Respondent, Peter Carrington dba Party Night, Inc., is not commonly known by the disputed domain names.  Complainant has not licensed or authorized Respondent to use the <daibloii.net>, <diabloi.net>, <diaboii.net>, and <warcraft3cheats.com> domain names.  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 used the <daibloii.net>, <diabloi.net> and <diaboii.net> domain names in bad faith.  Respondent creates a likelihood of confusion as to the source of goods or services when Respondent uses Complainant’s famous DIABLO mark to divert Internet users.  The content of the “diverted to” website implies that Respondent is commercially profiting from the unauthorized use of Complainant’s DIABLO mark in the <daibloii.net>, <diabloi.net>, and <diaboii.net>.  Creating commercial profit through confusion and redirecting traffic is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that Respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding bad faith where Respondent attracted users to advertisements).

Complainant asserts that Respondent is linking the <warcraft3cheats.com> domain name to a site displaying banner advertising.  Therefore, the Panel concludes that Respondent is attracting Internet users for commercial gain by creating a likelihood of confusion.  See Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding bad faith where Respondent used the domain name <anneofgreengables.com> to link users to a website that contained information about the Anne of Green Gables literary works, motion pictures and the author, L. M. Montgomery, because a visitor to the website may believe that the owner of the mark ANNE OF GREEN GABLES is affiliated with or has sponsored or endorsed Respondent's web site); see also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where Respondent made no use of the domain name in question and there are no other indications that Respondent could have registered and used the domain name in question for any non-infringing purpose).

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 <daibloii.net>, <diabloi.net>, <diaboii.net>, and <warcraft3cheats.com> domain names be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  November 14, 2003

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