Activision Publishing, Inc. v. Zachariah Russell
Claim Number: FA2010001917597
Complainant is Activision Publishing, Inc. (“Complainant”), represented by Adam D. Mandell of Millen, White, Zelano & Branigan, P.C., United States. Respondent is Zachariah Russell (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <codmw.org>, registered with Tucows Domains Inc..
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 20, 2020; the Forum received payment on October 20, 2020.
On October 20, 2020, Tucows Domains Inc. confirmed by e-mail to the Forum that the <codmw.org> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 22, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 12, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@codmw.org. Also on October 22, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 17, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant, Activision Publishing Inc., is a developer and distributor of interactive entertainment. Complainant has rights in the CALL OF DUTY and MODERN WARFARE marks based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,925,780, registered Feb. 8, 2005; Reg. No. 3,403,754, registered Mar. 25, 2008). See Compl. Ex. 11. Respondent’s <codmw.org> domain name is confusingly similar to Complainant’s marks because it incorporates abbreviations of both marks and simply adds the “.org” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <codmw.org> domain name. Respondent is not licensed to use Complainant’s CALL OF DUTY and MODERN WARFARE marks and is not known by the disputed domain name. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent sells accounts related to Complainant’s products in violation of Complainant’s terms of service.
Respondent registered and uses the <codmw.org> domain name in bad faith. Respondent disrupts Complainant’s business by facilitating violation of Complainant’s terms of service. Additionally, Respondent passes off as Complainant for commercial benefit.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is a developer and distributor of interactive entertainment.
2. Complainant has established its trademark rights in the CALL OF DUTY and MODERN WARFARE marks based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,925,780, registered Feb. 8, 2005; Reg. No. 3,403,754, registered Mar. 25, 2008).
3. Respondent registered the disputed domain name on July 16, 2020.
4. Respondent has caused the domain name to be used to disrupt Complainant’s business by facilitating violation of Complainant’s terms of service. Additionally, Respondent passes itself off as Complainant for commercial benefit.
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."
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.
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(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant asserts rights in the CALL OF DUTY and MODERN WARFARE marks based upon their registration with the USPTO. Registration of a mark with the USPTO is generally sufficient to establish rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides evidence of registration of the NINTENDO 3DS mark with the USPTO (e.g., Reg. No. 2,925,780, registered Feb. 8, 2005; Reg. No. 3,403,754, registered Mar. 25, 2008). See Compl. Ex. 11. Therefore, the Panel finds that Complainant has rights in the marks under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s CALL OF DUTY and MODERN WARFARE marks. Complainant argues that Respondent’s <codmw.org> domain name is confusingly similar to Complainant’s marks because it incorporates abbreviations of both marks and simply adds the “.org” gTLD. Abbreviation of a mark does not necessarily negate confusing similarity between a domain name and the mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated). Also, addition of a gTLD to a mark is insignificant to determining confusing similarity per Policy ¶ 4(a)(i). See Scott Elowitz Photography, LLC v. zhang yinfeng / Hengshui Fn Fur Trading Co., Ltd, FA 1534428 (Forum Jan. 22, 2014) (holding, “The <lenscoat.org> domain name is identical to Complainant’s LENSCOAT under Policy ¶ 4(a)(i), because the domain name fully appropriates the mark and its affixation of the gTLD “.org” is insufficient to distinguish it from the mark.”). Complainant provides examples of its use of the “cod” and “mw” abbreviations for the relevant marks. Thus, the Panel agrees with Complainant and finds that the disputed domain name is identical or confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s CALL OF DUTY and MODERN WARFARE trademarks and to use abbreviations of those marks in its domain name, which does not negate the confusing similarity between the domain name and the trademarks;
(b) Respondent registered the disputed domain name on July 16, 2020;
(c) Respondent has caused the domain name to be used to disrupt Complainant’s business by facilitating violation of Complainant’s terms of service. Additionally, Respondent passes itself off as Complainant for commercial benefit;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have rights or legitimate interests in the <codmw.org> domain name because Respondent is not licensed to use Complainant’s CALL OF DUTY and MODERN WARFARE marks and is not known by the disputed domain name. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name. See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Additionally, lack of authorization to use a mark constitutes further showing that a respondent lacks rights in a mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record notes “Zachariah Russell” as the registrant and no information suggests that Complainant has licensed or authorized Respondent to use the marks. See Compl. Ex. 1. Thus the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the <codmw.org> domain for any bona fide offering of goods or services or legitimate noncommercial or fair use and instead uses it to sell accounts related to Complainant’s products in violation of Complainant’s terms of service. Use of a domain name to attract users to a webpage for a respondent’s own benefit is generally not considered 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). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Airbnb, Inc. v. Nima Rahnemoon, FA 1737766 (Forum July 25, 2017) (“It is clear from the evidence that Respondent has used the site attached to the Domain Name to promote illegal unauthorized use of Complainant’s systems… As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name.”). Complainant notes that Respondent uses the disputed domain name to create and sell accounts for Complainant’s game, allowing banned players and known cheaters to bypass Complainant’s security measures. Complainant provides a screenshot of accounts purchased at Respondent’s website as well as a screenshot of the site itself. See Compl. Exs. 12 & 14. The Panel therefore agrees that Respondent does not use the domain name for 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).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <codmw.org> domain name in bad faith because Respondent disrupts Complainant’s business by facilitating violation of Complainant’s terms of service. Use of a disputed domain name to disrupt a complainant’s ability to run its business is evidence of bad faith under Policy ¶ 4(b)(iii). See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”); see also PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)). As previously noted, Complainant provides screenshots of Respondent’s webpage, which featured accounts with verified phone numbers for sale to cheaters in connection with Complainant’s products. See Compl. Exs. 12 & 14. Complainant argues that Respondent’s use of the disputed domain name to induce consumers to violate the terms of their agreement with Complainant constitutes bad faith disruption of business. Therefore, the Panel finds bad faith registration and use under Policy ¶ 4(b)(iii).
Secondly, Complainant argues that Respondent registered and uses the <codmw.org> domain name in bad faith because Respondent passes itself off as Complainant for commercial benefit. Suggesting affiliation with a complainant for commercial gain suggests bad faith under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). As previously noted, Complainant argues that Respondent uses the website associated with the disputed domain name to sell verified accounts for a game offered by Complainant. See Compl. Exs. 12 & 14. Therefore, the Panel finds bad faith registration and use per Policy ¶ 4(b)(iv).
Thirdly, Complainant argues that Respondent registered and uses the <codmw.org> domain name in bad faith because Respondent disrupts Complainant’s business by facilitating violation of Complainant’s terms of service. Use of a disputed domain name to disrupt a complainant’s ability to run its business is evidence of bad faith under Policy ¶ 4(b)(iii). See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”); see also PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)). As previously noted, Complainant provides screenshots of Respondent’s webpage, which featured verified accounts for sale in connection with Complainant’s products. See Compl. Exs. 12 & 14. Complainant argues that Respondent’s use of the disputed domain name to induce consumers to violate the terms of their agreement with Complainant constitutes bad faith disruption of business. Therefore, the Panel finds bad faith registration and use under Policy ¶ 4(b)(iii).
Fourthly, Complainant also argues that Respondent registered and uses the <codmw.org> domain name in bad faith because Respondent passes itself off as Complainant for commercial benefit. Suggesting affiliation with a complainant for commercial gain suggests bad faith under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). As previously noted, Complainant argues that Respondent uses the website associated with the disputed domain name to sell verified accounts for a game offered by Complainant. See Compl. Exs. 12 & 14. Therefore, the Panel finds bad faith registration and use per Policy ¶ 4(b)(iv).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the CALL OF DUTY and MODERN WARFARE marks and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <codmw.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: November 20, 2020
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