Blizzard Entertainment, Inc. v. XINXIU ZENG / haimin liang
Claim Number: FA1706001736365
Complainant is Blizzard Entertainment, Inc. (“Complainant”), represented by Adam D. Mandell of Millen, White, Zelano & Branigan, P.C., Virginia, USA. Respondent is XINXIU ZENG / haimin liang (“Respondent”), People’s Republic of China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <overwatch-store.com> registered with eNom, LLC, and <overwatchstoreonline.com>, registered GoDaddy.com, LLC.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 19, 2017; the Forum received payment on June 19, 2017.
On June 19, 2017, eNom, LLC, and Jun 20, 2017, GoDaddy.com, LLC, confirmed by e-mail to the Forum that the <overwatch-store.com> and <overwatchstoreonline.com> domain names are registered with eNom, LLC and GoDaddy.com, LLC, respectively, and that Respondent is the current registrant of the names. eNom, LLC and GoDaddy.com, LLC have verified that Respondent is bound by the eNom, LLC and GoDaddy.com, LLC registration agreements 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 June 22, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 12, 2017 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@overwatch-store.com, postmaster@overwatchstoreonline.com. Also on June 22, 2017, 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 July 14, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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 names be transferred from Respondent to Complainant.
A. Complainant
i) Complainant offers online computer games and computer-related products and services. Complainant uses the OVERWATCH mark in conjunction with its business practices. Complainant registered the OVERWATCH mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,906,959; registered Mar. 1, 2016), with first use of the mark dating back to June 10, 2011. Additionally, Complainant registered the OVERWATCH mark with the Office for Harmonization in the International Market (“OHIM”) (e.g., Reg. No. 012755567; registered Aug. 28, 2014) and the European Union Intellectual Property Office (“EUIPO”) (e.g., Reg. No. 016143414; registered May 24, 2017). Respondent’s domain names <overwatch-store.com> and <overwatchstoreonline.com> are confusingly similar to Complainant’s OVERWATCH mark because they incorporate the mark in its entirety, adding the generic terms “store” and “storeonline,” a hyphen, and the “.com” generic top level domain (“gTLD”).
ii) Respondent lacks rights and legitimate interests in <overwatch-store.com> and <overwatchstoreonline.com>. Respondent is not commonly known by the disputed domain names. Complainant has not authorized or licensed Respondent to use the OVERWATCH mark in any regard, nor is Respondent affiliated with Complainant. Respondent has not made a bona fide offering of goods or services, or a legitimate or fair use of the domain. Respondent’s <overwatch-store.com> and <overwatchstoreonline.com> resolve to a website attempting to pass itself off as Complainant by selling counterfeit goods.
iii) Respondent registered and is using <overwatch-store.com> and <overwatchstoreonline.com> in bad faith. The disputed domain names attract Internet users to Respondent’s website for commercial gain. Respondent’s <overwatch-store.com> and <overwatchstoreonline.com> offer infringing and counterfeit products, thereby creating confusion regarding Respondent’s affiliation with Complainant. Respondent registered <overwatch-store.com> and <overwatchstoreonline.com> with actual knowledge of Complainant and its rights to the OVERWATCH mark.
B. Respondent
Respondent did not submit a Response. The Panel notes that <overwatch-store.com> was registered on June 24, 2016, and <overwatchstoreonline.com> was registered on May 15, 2017.
Complainant established that it had rights in the mark contained in the disputed domain names. Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names in bad faith.
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 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 (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.”).
Complainant offers online computer games and computer-related products and services. Complainant uses the OVERWATCH mark in conjunction with its business practices. Complainant claims it registered the OVERWATCH mark with USPTO (e.g., Reg. No. 4,906,959; registered Mar. 1, 2016), with first use of the mark dating back to June 10, 2011. Additionally, Complainant claims it registered the OVERWATCH mark with OHIM (e.g., Reg. No. 012755567; registered Aug. 28, 2014) and EUIPO (e.g., Reg. No. 016143414; registered May 24, 2017). The general consensus among Panels is that mark registrations with multiple government trademark entities is sufficient to show rights in a mark. See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”); Fossil Group, Inc. v. wuruima wu, FA 1544486 (Forum Mar. 21, 2014) (holding, “Complainant’s registration of the FOSSIL mark with trademark agencies worldwide, including the USPTO and SAIC, establishes Complainant’s rights in the FOSSIL mark pursuant to Policy ¶ 4(a)(i).”). Therefore, due to its registrations with USPTO, OHIM, and EUIPO, the Panel determines that Complainant has sufficient rights to the OVERWATCH mark.
Complainant asserts that Respondent’s <overwatch-store.com> and <overwatchstoreonline.com> are confusingly similar to Complainant’s OVERWATCH mark because they incorporate the mark in its entirety, adding the generic terms “store” and “storeonline,” a hyphen, and the “.com” gTLD. The addition of generic terms and a top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis. See e.g., Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016); Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016). Moreover, “the addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).” Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003). Thus, the Panel finds that the alterations to Complainant’s mark in Respondent’s domain name are insufficient to differentiate the domain name from the mark pursuant to Policy ¶ 4(a)(i). See e.g., Disney Enter. v. Kudrna, FA 686103 (Forum June 2, 2006).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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 (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.”).
Complainant maintains that Respondent lacks rights and legitimate interests in <overwatch-store.com> and <overwatchstoreonline.com>. To support its assertion, Complainant illustrates that Respondent is not commonly known by the disputed domain names. WHOIS information associated with this case identifies Respondent as “XINXIU ZENG.” Panels have concluded that a respondent is not commonly known by a disputed domain name where there is no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006). Therefore, when “nothing in [Respondent’s] WHOIS information implies that [Respondent] is ‘commonly known by’ the disputed domain name,” the Panel determines that Respondent is not commonly known by <overwatch-store.com> and <overwatchstoreonline.com>.
Complainant avers it has not authorized or licensed Respondent to use the OVERWATCH mark in any regard, nor is Respondent affiliated with Complainant. Complainant argues that Respondent has not made a bona fide offering of goods or services, or a legitimate or fair use of the domain. Complainant demonstrates that Respondent’s <overwatch-store.com> and <overwatchstoreonline.com> resolve to a website attempting to pass itself off as Complainant by selling counterfeit goods. A respondent’s use of a disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See e.g., Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008). The Panel concludes that Respondent’s attempt to pass itself off as Complainant online is a blatant unauthorized use of Complainant’s mark and evidence that Respondent has no rights or legitimate interests in the disputed domain names. See e.g., Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003).
Complainant asserts that Respondent registered and is using <overwatch-store.com> and <overwatchstoreonline.com> in bad faith. The Panel recalls that Respondent’s <overwatch-store.com> and <overwatchstoreonline.com> resolve to a website that attempts to pass itself off as Complainant. Complainant argues that the disputed domain names attract Internet users to Respondent’s website for commercial gain. Respondent’s <overwatch-store.com> and <overwatchstoreonline.com> offer infringing and counterfeit products, thereby creating confusion regarding Respondent’s affiliation with Complainant. A respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion. See e.g., H-D Michigan, LLC v. Ross, FA 1250712 (Forum Apr. 23, 2009). Thus, the Panel finds that the disputed domain names were registered and used in bad faith because Respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business.” Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003).
Complainant contends that Respondent registered <overwatch-store.com> and <overwatchstoreonline.com> with actual knowledge of Complainant and its rights to the OVERWATCH mark. “[A]lthough the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith,” panels have found “actual knowledge through the name used for the domain and the use made of it.” Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014). Complainant argues that in light of the fame and notoriety of Complainant's OVERWATCH mark, it is inconceivable that Respondent could have registered the disputed domain name without actual and/or constructive knowledge of Complainant's rights in the mark. Moreover, prior panels have determined that the use of a domain name to sell counterfeit goods bearing the infringed mark provides sufficient basis to deduce a respondent’s actual knowledge. See Mycoskie, LLC v. William Kelly, FA 1488105 (Forum Apr. 23, 2013) (“While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to Respondent’s use of the domain name to sell counterfeit versions of Complainant’s products, Respondent had actual knowledge of the mark and Complainant's rights.”). Therefore, where the circumstances indicate that Respondent had actual knowledge of Complainant's OVERWATCH mark when it registered <overwatch-store.com> and <overwatchstoreonline.com>, the Panel finds bad faith. Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <overwatch-store.com> and <overwatchstoreonline.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: July 19, 2017
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