Activision Publishing, Inc. v. Chen Lu
Claim Number: FA1902001831698
Complainant is Activision Publishing, Inc. (“Complainant”), represented by Adam D. Mandell of Millen, White, Zelano & Branigan, P.C., Virginia, USA. Respondent is Chen Lu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <activisionhunt.com>, registered with NameSilo, 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.
Hon. Karl V. Fink (Ret.) as Panelist
Complainant submitted a Complaint to the Forum electronically on February 27, 2019; the Forum received payment on February 27, 2019.
On February 27, 2019, NameSilo, LLC confirmed by e-mail to the Forum that the <activisionhunt.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 February 27, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 19, 2019 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@activisionhunt.com. Also on February 27, 2019, 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 March 20, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant is the owner of an extensive worldwide portfolio of registrations for its ACTIVISION mark covering game software, online gaming services and related goods and services. Complainant has rights in the ACTIVISION mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,350,487, registered July 23, 1985). Respondent’s <activisionhunt.com> domain name is identical or confusingly similar to Complainant’s mark as it adds the descriptive term “hunt” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <activisionhunt.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent is using the domain name for a website featuring pornographic material.
Respondent registered and uses the <activisionhunt.com> domain name in bad faith. Respondent registered the domain name to trade on the goodwill of Complainant. Further, Respondent is using the domain name for a website featuring pornographic material. Additionally, Respondent’s domain registration date was mere weeks after Complainant’s ownership of the domain name ended. Moreover, Respondent also registered the domain name many years after Complainant had commenced use of the ACTIVISION mark, and well after it had become famous in the United States and throughout the world.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <activisionhunt.com> domain name.
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 claims rights in the ACTIVISION mark through its registration of the mark with the USPTO (e.g. Reg. No. 1,350,487, registered July 23, 1985). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). The Panel finds that Complainant has established rights in the ACTIVISION mark for the purposes of Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <activisionhunt.com> domain name is identical or confusingly similar to Complainant’s mark as it adds the descriptive term “hunt” and the “.com” gTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). The Panel finds that the <activisionhunt.com> domain name is confusingly similar to the ACTIVISION mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent has no rights or legitimate interests in the <activisionhunt.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Relevant information includes the WHOIS, assertions by a complainant regarding the nature of its relationship with a respondent, and other evidence in the record to support these assertions. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same); see also Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS identifies “Chen Lu / Shan Xi Sheng Yi” as the registrant, and Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain name prior to its registration, and Complainant has not given Respondent permission to use the mark in any manner. The Panel finds that Respondent is not commonly known by the <activisionhunt.com> domain name under Policy ¶ 4(c)(ii) and lacks rights or legitimate interests in respect of the domain name.
Complainant argues that Respondent is using the <activisionhunt.com> domain name for a website featuring pornographic material. Using a confusingly similar domain name in connection with adult oriented material generally does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA1732665 (Forum July 7, 2017) (holding that “[u]se of a domain name to display adult-oriented images is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.”). Complainant provides a screenshot of the resolving webpage, which displays various pornographic images along with content in the Chinese language. The Panel agrees with Complainant and finds that Respondent’s use of the disputed domain name in connection with adult oriented material fails to convey any rights or legitimate interests in the domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Complainant has proved this element.
Complainant claims that Respondent registered the <activisionhunt.com> domain name to trade on the goodwill of Complainant. Using a confusingly similar domain name to trade upon the goodwill of a complainant’s mark can evince bad faith under Policy ¶ 4(b)(iv). See Menard, Inc. v. Domain Admin / Whois Privacy Corp., FA 1785761 (Forum June 13, 2018) (“A respondent’s appropriation of a complainant’s mark in a confusingly similar domain name to divert potential consumers to its own web site is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). Complainant avers that the only reason why Respondent would have registered a domain name incorporating the ACTIVISION mark is to divert customers away from Complainant’s website and to Respondent’s. The Panel finds that Respondent attempts to trade off the goodwill associated with Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Complainant alleges that Respondent uses the disputed domain name to host a webpage containing adult oriented material. Using a confusingly similar domain name in connection with adult oriented material can provide evidence of bad faith under Policy ¶ 4(a)(iii). See Molson Canada 2005 v. JEAN LUCAS / DOMCHARME GROUP, FA1412001596702 (Forum Feb. 10, 2015) (“Further, Respondent’s diversion of the domain names to adult-oriented sites is registration and use of the disputed domain names in bad faith under Policy ¶ 4(a)(iii).”). Complainant provides a screenshot of the resolving webpage, which displays various pornographic images along with content in the Chinese language. The Panel agrees with Complainant and finds that Respondent’s use of the <activisionhunt.com> domain name in connection with adult oriented material constitutes bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent’s domain registration date was mere weeks after Complainant’s ownership of the domain name ended. A complainant may argue that it previously owned a domain name currently owned by a respondent to show bad faith on the part of the respondent. See John Dilks v. PRIVACY ADMINISTRATOR / ANONYMIZE, INC., FA1506001623023 (Forum July 10, 2015) (Where the complainant was the former owner of the domain name, this raises a rebuttable presumption of bad faith registration). Complainant provides the WHOIS information of record for the domain name on November 11, 2018, which listed the registrant as “Activision Publishing, Inc.” The Panel agrees and finds that Complainant used to own the domain name prior to Respondent obtaining the domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent registered the domain name many years after Complainant had commenced use of the ACTIVISION mark, and well after it had become famous in the United States and throughout the world. Where a complainant’s mark has generated fame and recognition, a respondent’s registration of a domain name incorporating the mark can be in bad faith under Policy ¶ 4(a)(iii). See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). The Panel agrees that Complainant’s mark was famous, and that Respondent had actual knowledge of Complainant’s mark, and finds that the domain name was registered and used in bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
DECISION
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 <activisionhunt.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: March 26, 2019
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