DECISION

 

Activision Publishing, Inc. v. Romeo Lucas

Claim Number: FA1707001741636

PARTIES

Complainant is Activision Publishing, Inc. (“Complainant”), represented by Adam D. Mandell of Millen, White, Zelano & Branigan, P.C., Virginia, USA.  Respondent is Romeo Lucas (“Respondent”), United Arab Emirates.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <activision-shop.com> (‘the Domain Name’), registered with 1&1 Internet SE.

 

PANEL

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.

 

Dawn Osborne of Palmer Biggs IP as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on July 26, 2017; the Forum received payment on July 26, 2017.

 

On July 26, 2017, 1&1 Internet SE confirmed by e-mail to the Forum that the<activision-shop.com> Domain Name is registered with 1&1 Internet SE and that Respondent is the current registrant of the name.  1&1 Internet SE has verified that Respondent is bound by the 1&1 Internet SE 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 July 27, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 16, 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@activision-shop.com.  Also on July 27, 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 August 17. 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP  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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

 

Complainant’s contentions can be summarised as follows:

 

Since 1980 Complainant has used the ACTIVISION mark to distinguish in commerce its interactive video games, on line gaming services and related goods and services. The mark is famous and is registered, inter alia, in the United States including for software and related services. Complainant owns a number of domain names including ‘activision’, including activision.com.

 

The Domain Name is confusingly similar to Complainant’s trade mark including ACTIVISION in its entirety, a hyphen, the descriptive term “shop’ and the gTLD .com. A generic or highly descriptive term like ‘shop’ does not serve to avoid confusing similarity. The addition of a gTLD is irrelevant in determining whether a domain name is confusingly similar.

 

Respondent has no rights or legitimate interest in the Domain Name. Respondent is not known by a name consisting in whole or in part of ‘Activision’. He is not authorised or an agent or licensee of Complainant.  

 

The Domain Name is directed to a web site selling ‘product keys’ for software unrelated to Complainant and which are suspected to be counterfeit. This cannot be a bona fide offering of goods or services or a non commercial or fair use under the Policy.

 

Respondent is using Complainant’s trade mark to attract Internet users for commercial gain by selling product keys for unrelated software. Respondent’s intent is to create the false impression the web site attached to the Domain Name is endorsed by Complainant. Respondent has attempted to commercially benefit from the goodwill associated with Complainant’s mark and this conduct of diversion shows bad faith registration and use pursuant to Policy 4 (b)(iv). Offering likely counterfeit products is also bad faith registration and use under this provision of the Policy.

 

Respondent registered the Domain Name more than 35 years after Complainant has commenced use of the ACTIVISION mark and well after the mark had become famous. The ‘Support’ section of the web site attached to the Domain Name contains a hyperlink which leads back to an email address owned by a game developer who, being in the industry, must be aware of Complainant, its mark and its business.

 

B. Respondent

 

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

 

 Complainant owns the registered trade mark ACTIVISION registered, inter alia, in the United States for interactive video games, on line gaming services and related goods and services with first use in commerce recorded as 1980.

 

The Domain Name registered in 2016 has been used to offer ‘product keys’ to software not related to Complainant.

 

DISCUSSION

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:

 

 

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 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.”).

 

Identical and/or Confusingly Similar

 

The Domain Name in this Complaint combines Complainant’s ACTIVISION  mark (registered in the USA for software related services with first use recorded as 1980), a hyphen, the generic term ‘shop’ a word commonly used in relation to retail services and the gTLD .com.

 

The addition of the generic word ‘shop’ does not serve to distinguish the Domain Name from Complainant’s ACTIVISION  mark. See Abbott Laboratories v Miles White, FA 1646590 (Forum Dec 10, 2015) (holding that the addition of generic terms do not adequately distinguish a disputed domain name from complainant’s mark under Policy 4 (a) (i). ) Nor does the addition of a hyphen. See Health Devices Corp. v Aspen STC, FA 158254 (Forum July 1, 2003)(The addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy 4 (a)(i).)

 

The gTLD .com does not serve to distinguish the Domain Name from the ACTIVISION mark, which is the distinctive component of the Domain Name. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to Complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).

 

Accordingly, the  Panel finds that the Domain Name is confusingly similar to a mark in which Complainant has rights for the purpose of the Policy.

 

Rights or Legitimate Interests

 

Respondent does not appear to be commonly known by ACTIVISION Complainant’s mark.  Complainant has not authorised Respondent to use this mark. The use of the Domain Name is commercial and so cannot be legitimate non commercial use.

 

Panels have found that a respondent is not using a disputed domain name for a bona fide offering of goods or services nor a legitimate non commercial or fair use if it uses the name to divert Internet users to a web site competing with Complainant under its mark. See Coryn Group Inc v Media Insight, FA 19895 9 (Forum Dec. 5, 2003). The Panel may determine that Respondent lacks rights and legitimate interests in the domain name because ‘Respondent is competing in the same industry as Complainant .. and under the same name.’ See Am. Tool & Machining, Inc. v EZ Hitch Inc, FA 113961 (Forum July 16, 2002)

 

It is clear from the evidence that Respondent has used the sites attached to the Domain Name to promote competing computer software services which are not connected with Complainant. Respondent also appears to be in the computer games industry operating as a game developer. It is, therefore, more likely than not that Respondent was aware of the significance of the ACTIVISION name and Complainant’s rights at the time of registration. The usage of Complainant’s ACTIVISION mark which has a significant reputation in relation to software services not connected with Complainant is not fair as the site does not make it clear that there is no commercial connection with Complainant. As such it cannot amount to the bona fide offering of goods and services.

 

Respondent has not answered this Complaint and has not provided any legitimate reason why it should be able to use Complainant’s trade marks in this way. As such the Panelist  finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

 

As determined above Respondent's  use of the site is commercial and he is using it to make a profit from competing services not associated with Complainant in a confusing manner. Respondent’s profession indicates that he was aware of Complainant’s rights at the time of registration. It seems clear that the use of  Complainant’s mark in the Domain Name would cause people to associate the website at the Domain Name with  Complainant and its business and services. Accordingly, the Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users to his website by creating likelihood of confusion with Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the web site attached to the Domain Name. This also appears designed to disrupt the business of a competitor. See Fitness International, LLC v Alistair Swodeck/Victor and Murray, FA 1506001623644 (Forum July 9, 2015) (where respondent offered the same services as Complainant and it was held this disrupted Complainant’s business under Policy 4 (b)(iii). See also CAN Financial Corporation v William Thomson/CAN Insurance, FA1401001541484 (Forum Feb 28, 2014)(finding that Respondent had engaged in bad faith under Policy 4 (b)(iv) by using a confusingly similar domain name to attract internet users to its own site where it offered competing services).

 

As such, the Panel believes that Complainant has made out its case that the Domain Name was registered and used in bad faith under paragraphs 4 (b)(iii) and (iv) and has satisfied the third limb of the Policy.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <activision-shop.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

<<Dawn Osborne>>, Panelist

Dated:  <<August 21, 2017>>