DECISION

Games Workshop Limited v. Nick Fiddler d/b/a Buy Warhammer

Claim Number:  FA0312000221174

PARTIES

Complainant is Games Workshop Limited, Nottingham, United Kingdom (“Complainant”), represented by Mark Sommers of Finnegan, Henderson, Farabow, Garrett & Dunner LLP, 1300 I Street, NW, Washington, DC 20005-3315.  Respondent is Nick Fiddler d/b/a Buy Warhammer, 921 E. Lexington Ave., El Cajon, CA 92021 (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <buywarhammer.com>, registered with Register.com.

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 December 22, 2003; the Forum received a hard copy of the Complaint on December 23, 2003.

On December 23, 2003, Register.com confirmed by e-mail to the Forum that the domain name <buywarhammer.com> is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.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 December 30, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 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@buywarhammer.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 January 30, 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 <buywarhammer.com> domain name is confusingly similar to Complainant’s WARHAMMER mark.

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

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

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

FINDINGS

Complainant creates, manufactures, and markets table-top warfare hobby games and related accessories primarily throughout the United States and the United Kingdom. Complainant’s flagship gaming products are marketed under the marks WARHAMMER and WARHAMMER 40,000.  Since it began using the WARHAMMER mark in 1988, Complainant has become one of the largest table-top warfare game companies in the world.  In 2002, its sales exceeded $200,000,000 worldwide, evidence that Complainant has become famous in the gaming community. 

Complainant owns numerous registrations for its WARHAMMER mark in the U.S., U.K., and the European Community including: U.S. Reg. No. 2718741, issued May 27, 2003; U.K. Reg. No. 1355872, issued October 12, 1990; U.K. Reg. No. 1355873, issued August 3, 1990; U.K. Reg. No. 1355874, issued July 27, 1990; and European Community Reg. No. 22525, issued February 19, 1999.

Complainant also owns the domain name <warhammer.com>, which was registered on January 28, 1997, and uses it to showcase Complainant’s products and services.

Respondent registered the disputed domain name, <buywarhammer.com>, on January 18, 2002.  Respondent uses the domain name to direct Internet users to a website, located at <store.yahoo.com/buywarhammer>, that advertises and sells Complainant’s WARHAMMER products.  Respondent also is using Complainant’s logos as links on the website.

On November 7, 2003, Complainant sent Respondent a cease-and-desist letter demanding the cessation and transfer of the disputed domain name.  Respondent responded to Complainant’s letter by stating its intention to communicate with its own counsel regarding the matter.  No further correspondence was received.

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 WARHAMMER mark through numerous registrations with various international government agencies.  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).

The disputed domain name, <buywarhammer.com>, contains Complainant’s WARHAMMER mark in its entirety.  Merely adding the generic term “buy” does not create distinctiveness for purposes of the Policy.  Therefore, the disputed domain name is confusingly similar to Complainant’s mark. See Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2000) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name); see also Magnum Piering, Inc. v. Mudjackers & Wilson, D2000-1525 (WIPO Jan. 29, 2001) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to Complainant’s mark); see also Arthur Guinness Son & Co. 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).

Policy ¶ 4(a)(i) is established for Complainant.

Rights or Legitimate Interests

The fact that Respondent has failed to contest the Complaint can be construed as an admission that it lacks rights to and legitimate interests in the disputed domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); 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).

There is no evidence before the Panel that suggests Respondent is or ever has been commonly known by the disputed domain name.  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); 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").

Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), because Respondent is diverting consumers away from Complainant’s website, and toward Respondent’s own site that sells Complainant’s goods.  See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where Respondent used Complainant’s mark, without authorization, to attract Internet users to its website, which offered Complainant’s products); see also Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell Complainant’s goods without Complainant’s authority, as well as others’ goods, is not bona fide use).

Policy ¶ 4(a)(ii) is established for Complainant.

Registration and Use in Bad Faith

Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent is intentionally diverting consumers, who are attempting to reach Complainant’s website, to an alternative site operated by Respondent that sells Complainant’s products.  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 Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).

Policy ¶ 4(a)(iii) is established for Complainant.

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 <buywarhammer.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated:  February 13, 2004

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