ZeniMax Media Inc. v. Media Technology Ltd.
Claim Number: FA1009001348791
Complainant is ZeniMax Media Inc. ("Complainant"), represented by Thomas E. Zutic of DLA Piper LLP (US), Washington, D.C., USA. Respondent is Media Technology Ltd. ("Respondent"), represented by Kimberly S. Grimsley of Bowie & Jensen, LLC, Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vir2lmedia.com>, registered with GoDaddy.com, Inc.
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.
David P. Miranda, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 27, 2010; the National Arbitration Forum received payment on September 28, 2010.
On September 28, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <vir2lmedia.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 September 30, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 1, 2010 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@vir2lmedia.com. Also on September 30, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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.
A timely Response was received and determined to be complete on November 1, 2010.
Additional Submissions were received from Complainant dated November 29, 2010, and from Respondent dated November 23, and December 3, 2010 in response to Panel’s request.
On November 11, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David P. Miranda, Esq., as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant ZeniMax Media In. of Rockville, Maryland, (“Complainant”), seeks transfer of the domain name <vir2lmedia.com>, from Respondent Media Technology Ltd., of Darnestown, Maryland, (“Respondent”). Complainant is the owner of two federally registered trademark registrations with the United States Patent and Trademark Office for the mark VIR2L for computer game software, computer e-commerce software, and related goods in class 9, first used in commerce June 1, 1995, and for computer consultation and related engineering services, first used in commerce July 14, 1993, and registered respectively with the United States Patent and Trademark Office, Reg. No. 2,481,300 issued August 28, 2001, and Reg. No. 2,856,177 issued June 22, 2004. Complainant contends that it has used the mark prominently in connection with its goods and services since June 1995, and the mark is known throughout the United States and internationally. The goods and services are advertised and sold by the Complainant through its wholly owned subsidiary VIR2L Studios throughout the United States and internationally. Complainant also operates the official website of VIR2L Studios at <vir2l.com>. Complainant contends that Respondent is a privacy protection organization that goes by the name of Media Technology Ltd. Complainant contends that Respondent is using the domain name <vir2lmedia.com> to advertise and direct online consumers to a website offering full service consultancy specializing in the creation, production, packaging and sponsorship of programs and channels for both traditional media and digital space.
Complainant contends that it has established rights in its registered mark VIR2L and that the domain name <vir2lmedia.com> is confusingly similar to and wholly incorporates the VIR2L mark. Complainant contends that the addition of the descriptive term “media” does not distinguish the domain name from Complainant’s mark; and given the nature of Complainant’s business, the addition of the term media likely increases the likelihood of consumer confusion in this case. Complainant contends that Respondent has no rights or legitimate interests with respect to the domain name, Respondent has no business relationship with Complainant, and Respondent is not licensed or permitted to use the VIR2L mark. Complainant contends that Respondent registered and is using the domain name in bad faith, that Respondent is using the domain name to disrupt Complainant’s business, and Respondent has used the domain name to attract internet users for commercial gain. Complainant further contends that once an internet user enters the domain name into a browser, they are directed to a website offering services nearly identical to those offered by Complainant, and that Respondent profits from every hit that follows from its bad faith use of the domain name. Complainant further contends that Respondent has used the domain name to attract and misdirect internet users to competing goods and services which are aimed at Complainant’s potential customers.
B. Respondent
Respondent contends that the registrant for the domain name is Media Technology, Ltd., and that at the time of the registration of the domain in 2006, Vir2L Media, LLC was not yet organized. Nancy Ross-Weaver retained Media Technology, Ltd. to obtain the domain name on her behalf. Since that time it has been owned and operated by Ms. Ross-Weaver under the name Vir2L Media. Respondent contends that the domain is not identical or confusingly similar to Complainant’s trademark VIR2L because the domain is made up of two words VIR2L, the phonetic equivalent of “virtual” and the additional word “media”. Respondent contends that the additional word “media” completely changes the sight, sound and commercial impression of the mark. Respondent contends that it uses the name VIR2L Media in connection with a bona fide offering of consulting services to television studios and has done so since as early as 2006. Since that time Respondent contends it has expended well over Two Hundred Thousand Dollars ($200,000) to promote the name. Respondent further contends that parties are not competitors and they are in different fields and have an entirely different customer base, as Complainant is in the business of video games, in particular, PC handheld devices and mobile phone games, and Respondent provides high end program and production consulting services to television studios. Respondent further contends that it has not acted in bad faith because the parties are not competitors, but rather they are in unrelated markets and there is no likelihood of confusion.
C. Additional Submissions
In response to the Panel’s request for additional submissions regarding federal registration and ownership of the marks, Complainant has submitted additional proof of registration and ownership and Respondent does not contest Complainant’s registration and ownership of the marks.
Complainant has met its burden of proof pursuant to Paragraph ¶4(a) of the Policy establishing that the domain name registered by the Respondent is identical or confusingly similar to Complainant’s registered trademark; that Respondent has no rights or legitimate interests in the domain name, and that the domain name has been registered and is being used in bad faith. As such, the domain name shall be transferred to Complainant.
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.
Complainant submits evidence that it owns valid trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its VIR2L marks (e.g., Reg. No. 2,481,300 issued August 28, 2001 and Reg. No. 2,856,177 issued June 22, 2004). The Complainant has established rights in the VIR2L mark under Policy ¶ 4(a)(i) through such registrations with the USPTO. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant contends that the <vir2lmedia.com> domain name is confusingly similar to Complainant’s VIR2L mark. Complainant argues that the disputed domain name contains its entire mark in addition to the descriptive term “media” and the generic top-level domain (“gTLD”) “.com.” Complainant contends that neither of the additions to its mark distinguish the disputed domain name from Complainant’s mark. The disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that it has no business relationship with Respondent and that it has not licensed or otherwise authorized Respondent to use the VIR2L mark in any way. The WHOIS registrant information for the <vir2lmedia.com> domain name identifies a different name for the registrant. Complainant has met its burden in submitting proof supporting its contention that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) based upon the WHOIS information and Complainant’s assertions that it has not authorized Respondent to use its mark. See 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); see also Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”).
Complainant further argues that Respondent is operating a competing business through the disputed domain name. Complainant argues that the registrant of the domain name and Respondent in this case is Media Technology Ltd., and the domain name is being used and controlled for a competing media business that advertises and directs online consumers to a website that offers “full-service consultancy specializing in the creation, production, packaging and sponsorship of programs and channels for both traditional media and the digital space.” Complainant contends it offers design and development of entertainment content and Respondent is using the disputed domain name to offer similar or competing services as Complainant, and that such use of a confusingly similar domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that the respondent’s commercial use of a confusingly similar domain name suggests that the respondent lacks rights or legitimate interests in the disputed domain name); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003).
Complainant contends that Respondent registered and is using the disputed domain name to divert Internet users seeking Complainant’s media business to Respondent’s website and business that offers the same or similar services. Complainant argues that Respondent’s use of the domain name actively disrupts Complainant’s business for Respondent’s gain. Respondent does not deny that it was aware of Complainant and its mark when it registered the domain. The Panel finds that Respondent’s use of the disputed domain name to divert Internet users who may be seeking Complainant and Complainant’s official <vir2l.com> website to Respondent’s competing business is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion); see also Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005).
Complainant alleges that Respondent registered and is using the disputed domain name for the purpose of redirecting Internet users who are attempting to locate Complainant’s website to Respondent’s competing website that creates a likelihood of confusion with Complainant as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Complainant further contends that Respondent is running a business through the disputed domain name and therefore profits from every confused Internet user that visits Respondent’s website that offers the same or similar services as Complainant. The Panel finds Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vir2lmedia.com> domain name be TRANSFERRED from Respondent to Complainant.
_________________________________________________________________
David P. Miranda, Esq., Panelist
Dated: December 20, 2010
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