DECISION

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

Claim Number:  FA0403000245969

PARTIES

Complainant is Vivendi Universal Games and Davidson & Associates, Inc. (“Complainant”), represented by David J. Steele, of Christie, Parker & Hale, LLP, 3501 Jamboree Road, Suite 6000, Newport Beach, CA 92660.  Respondent is Exodus Hosting (“Respondent”), karberi 4, Tallinn 13812, Estonia.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <blizzardporn.com>, registered with Go Daddy Software, 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 March 17, 2004; the Forum received a hard copy of the Complaint on March 18, 2004.

On March 18, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <blizzardporn.com> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 March 23, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 12, 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@blizzardporn.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 April 20, 2004, 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 <blizzardporn.com> domain name is confusingly similar to Complainant’s BLIZZARD mark.

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

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

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

FINDINGS

Complainant is a worldwide provider of computer games and markets its games, as well as related goods and services, under its family of BLIZZARD trademarks and service marks, which are registered with the United States Patent and Trademark Office (“USPTO”). Complainant owns, through its subsidiary, Davidson & Associates, Inc., the following registration numbers, among others, for the BLIZZARD mark: 2,410,748 (issued Dec. 5, 2000 for “books in the field of computer games”), 2,410,749 (issued Dec. 5, 2000 for “entertainment services, namely, providing on-line computer games, tips and strategies for computer game, and news concerning computer games; arranging and conducting computer game competitions”), 2,433,353 (issued Mar. 6, 2001 for “clothing, namely, hats and shirts”), and 2,490,187 (issued Sept. 18, 2001 for “computer game software and instruction manuals sold as a unit; mouse pads”).

Complainant also operates a website located at the <blizzard.com> domain name.

Respondent registered the disputed domain name <blizzardporn.com> on June 4, 2003.  The domain name has not been used in any manner since the registration date.

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

The registration of a mark with a governmental authority is sufficient to confer rights in the registrant under Policy ¶ 4(a)(i). In the instant case, Complainant owns numerous registrations for its BLIZZARD mark with the USPTO. Thus, Complainant has established rights in the BLIZZARD mark. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the 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); see also Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure of Complainant to register all possible domain names that surround its substantive mark does not hinder Complainant’s rights in the mark. “Trademark owners are not required to create ‘libraries’ of domain names in order to protect themselves.”).

Respondent registered a domain name that incorporates Complainant’s BLIZZARD mark and has merely appended the descriptive term “porn” to the mark. Therefore, consistent with prior decisions decided under the Policy, the Panel finds the disputed domain name <blizzardporn.com> confusingly similar to Complainant’s BLIZZARD mark. See Mattel, Inc. v. Domainsforsalenow@hotmail.com, FA 187609 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent has merely added the descriptive word 'porn’ to Complainant's registered BARBIE mark, and the addition of this word does not create a notable distinction between Complainant's mark and the domain name currently in dispute.”); see also Am. Online, Inc. v. GSD PTY. LTD, FA 169083 (Nat. Arb. Forum Sept. 2, 2003) (finding that the domain name <icqporn.com> was confusingly similar to Complainant’s ICQ mark under Policy ¶ 4(a)(i).); cf. Academy of Motion Picture Arts & Sciences v. Nado, D2003-0541 (WIPO Aug. 24, 2003) (“[T]he addition of 'porno' (plus hyphen) to the trademark merely suggests that the products/services to be expected are those of the trademark owner's 'Oscar' type or class, but with a pornographic context.”);

Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

A respondent’s failure to respond to a complaint has repeatedly been found to function as an implicit admission that the respondent lacks rights and legitimate interests in a domain name. Here, Respondent has not responded to the Complaint.  Thus, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name <blizzardporn.com>. 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).

In conjunction with the foregoing, Respondent has not provided any evidence, and the record fails to indicate, that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).

Passive holding has been found not to be a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  In this case, Respondent has failed to use the domain name with over ten months of opportunity. Respondent has also failed to respond to the Complaint. As a result, Respondent has not provided the Panel with any demonstrable preparations to use the name. Taken as a whole and without evidence to the contrary, these facts lead the Panel to conclude that Respondent is passively holding the domain name. See 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.”); see also Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any notice of the dispute, Respondent had not used the domain names in connection with any type of bona fide offering of goods and services); see also Am. Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name).

Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

The passive holding of a domain name has been found to evidence bad faith registration and use of the name.  As previously stated, Respondent in this case is passively holding the domain name <blizzardporn.com>. Without evidence to controvert Complainant’s assertion that Respondent’s passive holding of the domain name is evidence of bad faith registration and use, the Panel must defer to the evidence in the record and base its decision accordingly.  Therefore, the Panel finds that Respondent’s passive holding of the domain name is sufficient to establish Respondent’s bad faith registration and use of the domain name <blizzardporn.com>. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith).

Complainant has established 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 <blizzardporn.com> domain name be TRANSFERRED from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated:  April 27, 2004

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