DECISION

Vivendi Universal Games and Davidson and Associates, Inc. v. Choon sik Lee

Claim Number:  FA0312000216768

PARTIES

Complainant is Vivendi Universal Games and Davidson and Associates Inc., Los Angeles, CA (“Complainant”) represented by David J. Steele, Esq., of Christie, Parker & Hale LLP, 3501 Jamboree Road, Suite 6000, Newport Beach, CA 92660.  Respondent is Choon sik Lee, 612, Mokchon, Nakan, Suncheon, Jeonnam 540-913, Korea (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <warcraft.net>, registered with Network Solutions, Inc.

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.

Judge Harold Kalina (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on December 4, 2003; the Forum received a hard copy of the Complaint on December 8, 2003.

On December 8, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <warcraft.net> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 December 9, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 29, 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@warcraft.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 January 8, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (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 name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <warcraft.net> domain name is identical to Complainant’s WARCRAFT mark.

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

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

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

FINDINGS

Complainant filed an Intent to Use (“ITU”) application for its WARCRAFT mark with the United States Patent and Trademark Office (“USPTO”) on May 5, 1994 and was registered as an ITU on January 9, 1996.  Complainant has numerous registration applications for its WARCRAFT mark (e.g. Ser. Nos. 78274989, 78274961, 78267452, 78267448). 

Complainant began using its WARCRAFT mark in 1994 in connection with its computer and online gaming services that it provides worldwide.  Complainant is the developer of the successful computer games, Diablo, Diablo II, Warcraft, and Warcraft III.

Complainant also operates its own website located at <warcraft.com>, which receives a weekly average of 255,845 visitors.

Respondent registered the disputed domain name, <warcraft.net>, on October 24, 2003.  Respondent has used the name to direct Internet users to advertisements, including pop-up ads.  More recently, Respondent has used the name to host a webpage that solicits offers for the sale of the domain name, and also contains the following message: “This domain is registered and reserved for our business in the future.”

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 successfully registered an ITU for its WARCRAFT mark and has sufficiently established secondary meaning in the mark through its continuous use since 1994, along with its extensive use by Internet users.  See 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, and secondary meaning was established); see also BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that Complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify Complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services).

The disputed domain name, <warcraft.net>, is identical to Complainant’s WARCRAFT mark because it contains Complainant’s mark in its entirety, and top-level domain names are irrelevant for the purposes of Policy ¶ 4(a)(i).  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that the addition of a top-level domain is without legal significance).

Therefore, Policy ¶ 4(a)(i) is established.

Rights or Legitimate Interests

Respondent has not asserted any rights or legitimate interests in the domain name.  Therefore, the Panel may accept all reasonable inferences of fact in the allegations of Complainant, without the benefit of a Response.  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint); see also 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).

Additionally, there is no supportive evidence to show that Respondent is commonly known by the domain name pursuant to Policy ¶ 4(c)(ii).  The WHOIS registration information fails to imply that Respondent is commonly known by the 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 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).

Printouts of the domain name’s attached website substantiate the notion that Respondent was looking to sell the disputed domain name for profit.  See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where Respondent registered the domain name with the intention of selling its rights).

In concurrence with the previous paragraph, the Panel notes that there is a substantial likelihood that Complainant’s mark, and the goodwill associated therewith, was the reason Respondent registered the domain name.  Sizeable traffic is generated from sites associated with widely-known marks, and this appears to be the case here.  Misguided Internet users seeking Complainant’s site under the “.net” top-level domain will be confronted with Respondent’s site, which has previously been used as an advertising placeholder.  See Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that Respondent did not have rights or legitimate interests in a domain name that used Complainant’s mark and redirected Internet users to website that pays domain name registrants for referring those users to its search engine and pop-up advertisements); see also Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum Apr. 5, 2003) (holding that Respondent’s use of the disputed domain name to divert Internet users to a website that featured pop-up advertisements and an Internet directory, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).

Therefore, Policy ¶ 4(a)(ii) is established. 

Registration and Use in Bad Faith

Respondent has previously used the disputed domain name to send Internet users to a series of pop-up advertisements and a portal website, evidencing its commercial intention to capitalize from Complainant’s widely-known mark in conjunction with Internet user errors.  Such activity constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Kmart v. Kahn, 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)); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website).

Furthermore, there is a strong likelihood that Respondent was aware of Complainant’s widely-known WARCRAFT mark because Complainant’s mark had been in use for approximately nine years prior to Respondent’s registration of the disputed domain name.  The fact that Respondent initially used the site for advertising purposes is more evidence that not only did Respondent know of Complainant’s rights in the WARCRAFT mark, but it purposefully took advantage of them.  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Am. Online Inc. v. Shenzhen JZT Computer Software Co., D2000-0809 (WIPO Sept. 6, 2000) (finding that <gameicq.com> and <gameicq.net> are obviously connected with services provided with the world-wide business of ICQ and that the use of the domain names by someone with no connection to the product suggests opportunistic bad faith); see also Harrods Ltd. v. Harrod’s Closet D2001-1027 (WIPO Sept. 28, 2001) (finding that where a mark is so obviously connected with well-known products, its very use by someone with no connection to these products can evidence opportunistic bad faith).

Moreover, Respondent’s general offer to sell the disputed domain name, even without a specifically requested price, buttressed with the fact that its name encompasses Complainant’s well-known mark, is sufficient to support a finding of registration and use in bad faith.  See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); see also Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where Respondent offered domain names for sale).

Although Respondent has claimed on the one hand, that the disputed domain name is being reserved for its future business, the sentence following this statement requests correspondence from those interested in purchasing the domain name.  Under the circumstances, the Panel has no difficulty finding that Respondent’s actual intent, upon registration of the domain name, was to use it in bad faith.   

Therefore, Policy ¶ 4(a)(iii) is established.

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

Judge Harold Kalina (Ret.), Panelist

Dated: January 20, 2004

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