Activision Publishing, Inc. v. Not For Sale
Claim Number: FA1605001675539
Complainant is Activision Publishing, Inc. (“Complainant”), represented by Scott J. Major of Millen, White, Zelano & Branigan, P.C., Virginia, United States. Respondent is Not For Sale (“Respondent”), California, United States.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <callofdutymovie.com>, <callofdutythemovie.com>, and <moviecallofduty.com>, registered with GoDaddy.com, LLC.
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.
Kendall C. Reed as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 18, 2016; the Forum received payment on May 18, 2016.
On May 18, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <callofdutymovie.com>, <callofdutythemovie.com>, and <moviecallofduty.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names (the “Disputed Domain Names”). GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 May 19, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 8, 2016 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@callofdutymovie.com, postmaster@callofdutythemovie.com, postmaster@moviecallofduty.com. Also on May 19, 2016, 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.
A timely Response was received and determined to be complete on May 23, 2016.
The Complainant filed a timely additional submission on May 31, 2016.
On May 25, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kendal C. Reed as Panelist.
Respondent filed a timely Additional Submission.
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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant’s Contentions
Complainant is a developer and worldwide distributor of interactive entertainment. Complainant has registered the CALL OF DUTY mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,925,780, registered February 8, 2005), which demonstrates Complainant’s rights in the mark. The <callofdutymovie.com>, <callofdutythemovie.com>, and <moviecallofduty.com> domains are confusingly similar to Complainant’s mark as they wholly incorporate the mark, merely adding the generic terms “movie” or “themovie,” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain names. First, Respondent is not commonly known by the disputed domain names or any variant of Complainant’s mark. Second, Respondent is not licensed or authorized to use Complainant’s mark. Finally, Respondent is not making a bona fide offering of goods or services through the disputed domain names or a legitimate noncommercial or fair use. Rather, Respondent fails to make any active use of its domains.
Respondent has registered and is using the domains in bad faith. First, Respondent has engaged in a pattern of bad faith registration pursuant to Policy ¶ 4(b)(ii) based on its registration of three domains in the instant proceeding. Second, Respondent has failed to make any active use of the domains. Third, Respondent demonstrates opportunistic bad faith through its registration of the domains just sixteen days after the United States release date of Complainant’s Call of Duty: World at War. Finally, because of the fame and distinctiveness of Complainant’s mark, Respondent registered the domains with constructive and/or actual knowledge of Complainant’s mark.
B. Respondent’s Contentions
The domains are not confusingly similar to Complainant’s mark because the expression “call of duty” is a military term, one that has meaning beyond the way in which Complainant uses it.
Respondent has rights and legitimate interests in the domains. The “Call of Duty” term is generic and has meaning beyond the way in which Complainant uses it. Respondent is an award-winning screenwriter and wrote a short film in 2006 about a Canadian soldier on a call of duty in the deep woods of Eastern Europe who was lost and fighting for his life. Respondent owns the domains for its movie; in 2015, Respondent won four awards and fifteen nominations for its screenplay.
At all relevant times Respondent has used the Disputed Domain Names in that they forward to his profile on the movie database <imdb>.
Respondent did not register the domains in bad faith. Rather, Respondent registered the domains for its movie, as aforementioned. Complainant is engaging in reverse domain name hijacking through its attempt to have the disputed domains transferred.
C. Complainant’s Additional Submission
That Respondent may have used the expression “call of duty” for his screenplay is not relevant. Respondent registered the Disputed Domain Names after Complainant’s Marks had become famous, and his motivation in doing so was and is to trade on Complainant’s good will in Complainant’s Mark.
Respondent’s assertion that he used the Disputed Domain Names during the seven years after their registration is not supported by the facts.
As further evidence of bad faith, Respondent registered the Domain Names under an anonymizing service.
D. Respondent’s Additional Submission
Respondent’s Additional Submission reads as follows:
“My Domain names have been used in good faith from the day I registered them. Growing up in a military family in Iran, and having to endure war and political unrest has been a life lesson for me. Call of Duty is a military term from the day men took arms and started to fight battles on this planet. For this company to claim rights to the term is insult to all military people who serve their country. As mentioned in my earlier responses, I wrote a short screenplay about a Canadian Soldier in WW2: below is the log line you can find on my IMDB profile page:
A Canadian Soldier during call of duty in WW2 is lost deep in the woods and surrounded by German Soldiers. He comes across a river and has to make a choice.”
“I’ve also written a feature length screenplay based on my original concept… it’s about a young protagonist who loses his family in World War 3 and is asked to join the fight against evil forces… has nothing to do with the call of duty video game franchise…. The kid like many others kids in this world have grown up playing iphone, ipad, console and computer games…. Soldiers from Nevada are operating Drones killing Terrorist in Pakistan, Africa, etc…. my movie concept has nothing to do with the call of duty franchise… not to mention these guys never had a trademark related to my military short film I originally produced.”
“Call of Duty is every soldiers and every citizen’s duty in times of War. That’s exactly the reason why the protagonist in my story joins the fight against the antagonist.”
“They even have lied about archive.org claiming there is no record of my domain names forwarding to my imdb profile…. I’ve already included links to the archive pages for your records…. If you require me to repost, please let me know.”
“Like I said:
Call of duty is a legal term describing the necessity to carry out a job or duty, such as a police case, military assault/wartime actions, or other military or highly important jobs.”
Complainant is the owner of at least one US trademark registration for the mark CALL OF DUTY. The registration of this mark predates Respondent’s registration of the Disputed Domain Names.
Respondent is the registrant of the Disputed Domain Names.
Respondent is the owner of a page on the website <imdb>, <imdb.me/toofunwest>, on which page he presents a written description of his professional experience and background as professional filmmaker and screenwriter as well as presenting a short description of his works of authorship, including his film and screenplay entitled “Call of Duty.”
In 2010 Respondent registered a script entitled “Call of Duty” with the Writer’s Guild of America.
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.
Under Policy Paragraph 4(a)(i), Complainant must demonstrate that it has rights in a trademark and that the Disputed Domain Names are identical or confusingly similar thereto.
Trademark registration with a national trademark agency, such as the United Stated Patent and Trademark Office, is sufficient evidence of rights in a trademark under the Policy. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Accordingly, Complainant has demonstrated its rights in Complainant’s Mark pursuant to Policy ¶ 4(a)(i).
The analysis of whether the Disputed Domain Names are identical or confusingly similar to Complainant’s Mark is made without regard to additional generic terms that may be appended but do not distinguish the one from the other. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Panels have also held that the affixation of the “.com” gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant).
In the Instant matter, the Disputed Domain Names include the entirety of Complainant’s Mark with the addition of the gTLD “.com” and the words “movie” and “themovie.” This additional content does not operate to distinguish the Disputed Domain Names from Complainant’s Mark. See Am. Express Co. v. MustNeed.com, FA 257901, id. See also Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). As such, the Panel may find that Respondent’s disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent argues that Complainant cannot employ its trademark CALL OF DUTY to prevent Respondent’s use of the expression “call of duty” in a generic sense as a title for his film and screenplay, and secondly, that Complainant cannot use its trademark CALL OF DUTY to prevent Respondent from reflecting the title of his screenplay and movie in a domain name. As to the first of these points, such is an issue of trademark law beyond the scope of the Policy and is not addressed herein. As to the second point, such is the subject matter of this proceeding in its entirety, and as noted below, the Policy does prohibit (within the limited scope of allowable remedies under the Policy) the “bad faith” use of a domain name that is confusingly similar to another’s trademark.
As such, Complainant has established the first element of the Policy.
Under Policy Paragraph (a)(ii), Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the Disputed Domain Names, 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 (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 (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.”).
In the Instant matter, Complainant has established its prima facie case. Complainant states that: Respondent is not a licensee or agent of Complainant; Respondent is not commonly known by the Disputed Domain Names; Respondent is not making a non-commercial or fair use of the Disputed Domain Names; and Respondent is not making a use of the Disputed Domain Names for a bona fide offering of goods or services. The reasons for this last point is that Respondent has not actually used the Disputed Domain Names for seven years since they were registered, which constitutes impermissible passive holding.
Respondent has failed to carry its burden on this element of the Policy. Respondent did not present evidence that he is a licensee or agent of Complainant, that he is commonly known by the Disputed Domain Names, or that his use of the Disputed Domain names was non-commercial or a fair use. Further, the Panel finds below that Respondent has engaged in bad faith conduct under the Policy with respect to the Disputed Domain Names, and such a finding is inconsistent with finding of a bona fide offering of goods or services under Policy paragraph 4(c). See Electric Mirror, LLC v. Eric Reao, FA 643238(Nat. Arb Forum Nov. 24, 2015)(“Whereas the sale of mirrors on the internet is a legitimate commercial activity and, in the vernacular sense, is a bona fides activity, Panels have routinely held that for purposes of the Policy a use of a disputed domain name that is in bad faith under Policy ¶ 4(b) precludes a finding in favor of a respondent with respect to rights to or legitimate interest in a disputed domain name under Policy ¶ 4(c)(i)).”
As such, Complainant has established the second element of the Policy.
The central issue under the third element of the Policy concerns Respondent’s intent with respect to the registration and use of the Disputed Domain Names. Complainant argues that Respondent’s intent was to register and passively hold them until some later time or alternatively that Respondent has attempted to prevent Complainant from reflecting Complainant’s Mark in a corresponding <.com> domain name, presumably in either event forcing Complainant to purchase the Disputed Domain Names from Respondent at a premium. Respondent argues that the origin of the Disputed Domain Names was not Complainant’s Mark, but arose from the title of his movie and screenplay (which themselves were unrelated to Complainant’s games), that he is indeed using the Disputed Domain Names (not passively holding them) to direct people interested in his film and screenplay to his professional profile on <imdb>.
The Panel is persuaded that Respondent did intend to copy Complainant’s Mark. At the time the Disputed Domain Names were registered, Complainant’s game CALL OF DUTY and the associated Complainant’s Mark were famous generally, and even more so within the entertainment industry, of which Respondent is an active member. Complainant is correct to point out that among the almost limitless possible titles for a movie and screenplay of the type authored by Respondent, he chose CALL OF DUTY. It is not credible that these are unrelated. See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”); see also 3M Co. v. Jeong, FA 505494 (Nat. Arb. Forum Aug. 11, 2005) (“Respondent’s registration of the disputed domain name the same day that Complainant issued the press release regarding the acquisition constitutes opportunistic bad faith.”). Accordingly, the Panel may find that Respondent has engaged in opportunistic bad faith, in violation of Policy ¶ 4(a)(iii).
As noted, Complainant argues that Respondent has not used the Disputed Domain Names in any way and is thereby passively holding them. The Panel is not persuaded that this is correct; rather, the Panel is convinced that Respondent has used the Disputed Domain Names to direct to Respondent’s <imdb> profile, and that Respondent’s intention in doing so is to promote his works of authorship, the noted film and screenplay, or his own professional services as a filmmaker and screenwriter, or both. In any event, Respondent has been using the Disputed Domain Names to further his own economic interests.
As such, this matter falls squarely within the boundaries of Policy paragraph 4(b)(iv), which reads:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
As such, Complainant has established the third element of the Policy.
Respondent argues that Complainant filed the instant matter in an attempt to reverse domain name hijack the Disputed Domain Names. Given that Respondent is found to be in violation of the Policy, this is inconsistent with a finding of reverse domain name hijacking.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <callofdutymovie.com>, <callofdutythemovie.com>, and <moviecallofduty.com> domain names be TRANSFERRED from Respondent to Complainant.
Kendall C. Reed, Panelist
Dated: June 8, 2016
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