KingsIsle Entertainment, Inc. v. WIZARD101-CHEAT-VAULT.COM c/o Whois Privacy Service
Claim Number: FA0910001289655
Complainant is KingsIsle
Entertainment, Inc. (“Complainant”), represented by Linda M. Novak of Fish & Richardson P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wizard101-cheat-vault.com>, registered with Domaindiscover.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically October 15, 2009; the National Arbitration Forum received a hard copy of the Complaint October 16, 2009.
On October 19, 2009, Domaindiscover confirmed by e-mail to the National Arbitration Forum that the <wizard101-cheat-vault.com> domain name is registered with Domaindiscover and that Respondent is the current registrant of the name. Domaindiscover verified that Respondent is bound by the Domaindiscover registration agreement and thereby has 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 20, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 9, 2009, 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@wizard101-cheat-vault.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 16, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 National Arbitration 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 makes the following assertions:
1. The domain name that Respondent registered, <wizard101-cheat-vault.com>, is confusingly similar to Complainant’s WIZARD 101 mark.
2. Respondent has no rights to or legitimate interests in the <wizard101-cheat-vault.com> domain name.
3. Respondent registered and used the <wizard101-cheat-vault.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, KingsIsle Entertainment, Inc., a
Respondent, WIZARD101-CHEAT-VAULT.COM c/o Whois Privacy, registered the <wizard101-cheat-vault.com> domain name on April 13, 2009. The disputed domain name resolves to a website that sells information relating to secret codes contained in Complainant’s game.
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."
Given 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 will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint 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.”).
Paragraph 4(a) of the Policy requires Complainant to 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.
The Panel finds that Complainant established rights in the
WIZARD 101 mark under Policy ¶ 4(a)(i) through its registration of the mark with
the USPTO (Reg. No. 3,578,104 issued February 17, 2009).
Respondent’s <wizard101-cheat-vault.com> domain name contains Complainant’s entire WIZARD 101 mark, deletes the space within the mark, adds the generic terms “cheat” and “vault,” separating the terms with hyphens, and adds the generic top-level domain “.com.” Just as previous panels have found, this Panel also finds that none of these modifications to Complainant’s mark sufficiently distinguish the disputed domain name from Complainant’s mark. See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); see also 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 the complainant combined with a generic word or term); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Accordingly, the Panel finds that the <wizard101-cheat-vault.com> domain name is confusingly similar to Complainant’s WIZARD 101 mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
At the outset, Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant makes such a showing, the burden then shifts to Respondent and Respondent must establish that it has rights or legitimate interests in the disputed domain name. The Panel finds that Complainant made a sufficient prima facie showing under Policy ¶ 4(a)(ii). The burden now shifts to Respondent, from whom no response was received. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”). However, while the Panel may presume that Respondent lacks rights and legitimate interests in the disputed domain due to its failure to respond, the Panel still analyzes the record under Policy ¶ 4(c) before making a determination.
The WHOIS information for the <wizard101-cheat-vault.com> domain name lists “WIZARD101-CHEAT-VAULT.COM c/o Whois Privacy” as the registrant, which does not indicate that Respondent is commonly known by the disputed domain name and Respondent has not offered any evidence to suggest otherwise. Moreover, Complainant asserts that it has not licensed or otherwise authorized Respondent to use the WIZARD 101 mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent’s <wizard101-cheat-vault.com> domain name resolves to a website that offers for sale secret “cheat” codes for Complainant’s computer game. The Panel finds that Respondent is essentially selling Complainant’s product without Complainant’s authority. The Panel further finds that Respondent’s use of the disputed domain name is not 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 Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use); see also Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the <pitneybowe.com> domain name where the respondent purports to resell original Pitney Bowes equipment on its website, as well as goods of other competitors of the complainant).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Since Respondent registered the <wizard101-cheat-vault.com>
domain name April 13, 2009, Respondent has caused it to resolve to a website
that sells information regarding secret codes for access to Complainant’s
computer game(s). The Panel finds that
Respondent’s use of the disputed domain name is calculated to and does disrupt
Complainant’s business, which supports findings of bad faith registration and
use under Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb.
Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from
the respondent, a watch dealer not otherwise authorized to sell the
complainant’s goods, to the complainant); see also Caterpillar Inc. v. Vine,
FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent registered each of the
disputed domain names in order to gain customers and to disrupt Complainant's
business of authorizing dealers to sell its CATERPILLAR equipment.”).
Furthermore, the Panel finds that
Respondent’s use of the confusingly similar <wizard101-cheat-vault.com>
domain name creates a likelihood of confusion as to Complainant’s affiliation
with the disputed domain name and that Respondent is commercially gaining from
this likelihood of confusion by selling Complainant’s product, which also
supports findings of bad faith registration and use under Policy ¶
4(b)(iv). See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum
Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by
creating a likelihood of confusion with the complainant's mark by using a
domain name identical to the complainant’s mark to sell the complainant’s
products); see also Fossil Inc. v. NAS,
FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in
bad faith by registering the <fossilwatch.com> domain name and using it
to sell various watch brands where the respondent was not authorized to sell
the complainant’s goods).
The Panel finds that Complainant
satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wizard101-cheat-vault.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 30, 2009.
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