Vivendi Universal Games and Davidson and
Associates, Inc. v. Lorna Kang
Claim
Number: FA0309000198804
Complainants are Vivendi Universal Games and Davidson and Associates, Inc., Los Angeles, CA (collectively,
“Complainant”) represented by David J.
Steele, of Christie, Parker & Hale LLP, 3501 Jamboree Road, Suite 6000, Newport
Beach, CA 92660. Respondent is Lorna Kang, PO Box 21, Telok, Intan, Perak, Malaysia
(“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <wwwblizzard.com>, registered with iHoldings.com,
Inc. d/b/a dotregistrar.com.
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.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on September 29, 2003; the Forum received a hard copy of the
Complaint on September 30, 2003.
On
September 30, 2003, iHoldings.com, Inc. d/b/a dotregistrar.com confirmed by
e-mail to the Forum that the domain name <wwwblizzard.com> is
registered with iHoldings.com, Inc. d/b/a dotregistrar.com and that Respondent
is the current registrant of the name. iHoldings.com, Inc. d/b/a
dotregistrar.com has verified that Respondent is bound by the iHoldings.com,
Inc. d/b/a dotregistrar.com registration agreement and has thereby agreed to
resolve domain-name disputes brought by third parties in accordance with
ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
October 1, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
October 21, 2003 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent's registration as technical, administrative and
billing contacts, and to postmaster@wwwblizzard.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
October 28, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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."
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—Davidson and Associates, Inc.
A. Complainant makes the following assertions:
1. Respondent’s <wwwblizzard.com>
domain name is confusingly similar to Complainant’s BLIZZARD mark.
2. Respondent does not have any rights or
legitimate interests in the <wwwblizzard.com> domain name.
3. Respondent registered and used the <wwwblizzard.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
holds rights in the BLIZZARD mark.
Complainant has been operating under the BLIZZARD name and mark in the
United States since at least as early as 1995.
Complainant markets, sells, and distributes video games and related
goods and services around the world. In addition, Complainant holds more than
eleven active BLIZZARD trademark registrations with the US Patent and Trademark
Office (BLIZZARD trademark for computer game books (Reg. No. 2410748); BLIZZARD
trademark for clothing, hats, and shirts (Reg. No. 2410749); BLIZZARD service
mark for entertainment services (Reg. No. 2433353); as well as BLIZZARD
ENTERTAINMENT trademarks and service marks (e.g. Reg. Nos. 1993894, 2440620,
2490189, and 2492072)). Complainant also
owns the registration for the domain name <blizzard.com>.
Respondent,
Lorna Kang, registered the <wwwblizzard.com>
domain name on March 25, 2002 and is not licensed or authorized to use
Complainant’s BLIZZARD mark for any purpose.
Respondent links the disputed domain name to a page at the
<ownbox.com> domain name which leads consumers to a series of
advertisements that purport to offer credit card services, music, and green
cards. Complainant has provided a list
of 275 other domain names registered in the Respondent’s name. Almost all of the domain names on this list
are similar to well-known trademarks.
The main difference between Respondent’s domain names and the well-known
trademarks is an addition or omission of one letter or a period.
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."
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(e), 14(a) and 15(a) of the Rules and draw such inferences it
considers appropriate pursuant to paragraph 14(b) of the Rules.
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
has established rights in the BLIZZARD mark through registration with the U.S.
Patent and Trademark Office and subsequent continuous use of the mark in
commerce. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept.
16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that
they are inherently distinctive and have acquired secondary meaning”); see also Tuxedos By Rose v. Nunez, FA
95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark
where its use was continuous and ongoing).
Respondent’s
<wwwblizzard.com> domain name
is confusingly similar to Complainant’s BLIZZARD mark. The only difference is that Respondent added
“www” to Complainant’s mark. Such
difference is insufficient to differentiate Respondent’s <wwwblizzard.com> domain name from
Complainant’s BLIZZARD mark. Therefore,
Complainant has established that the <wwwblizzard.com>
domain name is confusingly similar to Complainant’s BLIZZARD mark. See
Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000)
(finding that Respondent’s domain name <wwwbankofamerica.com> is
confusingly similar to Complainant’s registered trademark BANK OF AMERICA
because it “takes advantage of a typing error (eliminating the period between
the www and the domain name) that users commonly make when searching on the
Internet”); see alsoMarie Claire Album v.
Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters
"www" are not distinct in the "Internet world" and thus
Respondent 's <wwwmarieclaire.com> domain name is confusingly similar to
Complainant's MARIE CLAIRE trademark).
Accordingly,
the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent is
using the disputed domain name to redirect Internet users to a series of
advertisements that are all unrelated to Complainant’s BLIZZARD mark. The advertisements at Respondent’s domain
name offer credit card services, music, and purported green cards. Respondent is taking advantage of
Complainant’s mark by diverting Internet users to such commercial domain names
for its own financial gain. Respondent
is also tarnishing Complainant’s mark by subjecting Internet users to a series
of intrusive and unsolicited ads.
Respondent’s redirection from the <wwwblizzard.com> domain name to advertising websites that are
unrelated to Complainant does not establish rights or legitimate interests in
the domain name under Policy ¶¶ 4(c)(i) and (iii). See FAO Schwarz v. Zuccarini, FA 95828 (Nat.
Arb. Forum Dec. 1, 2000) (finding no rights or legitimate interests in the
domain names <faoscwartz.com>, <foaschwartz.com>,
<faoshwartz.com>, and <faoswartz.com> where Respondent was using
these domain names to link to an advertising website); see also AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000)
(finding that use of the domain name to direct users to other, unconnected
websites does not constitute a legitimate interest in the domain name).
Respondent,
Lorna Kang, is not “commonly known” by the disputed domain name. Given the WHOIS contact information for the
disputed domain, one can infer that Respondent is not commonly known by the
name. In addition, Complainant has not
licensed or authorized Respondent to use the <wwwblizzard.com> domain name.
Thus, it is reasonable for the Panel to infer that Policy ¶ 4(c)(ii)
does not apply to Respondent. See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, FA
96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to
require a showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail").
Accordingly,
the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered and uses the disputed domain name in bad faith pursuant to Policy ¶
4(b)(iv). Respondent creates a
likelihood of confusion as to the source of goods or services when Respondent
uses Complainant’s famous BLIZZARD mark to divert Internet users who misspell
Complainant’s domain name. The content
of the “diverted to” website implies that Respondent is commercially profiting
from the unauthorized use of Complainant’s BLIZZARD mark in the <wwwblizzard.com> domain name. Additionally, evidence reveals that
Respondent has a history of registering confusingly similar variations of
famous marks in domain names in order to commercially benefit. See Canadian Tire Corp., Ltd. v. domain adm’r
no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22,
2003) (holding that “[t] absence of a dot between the “www” and
“canadiantire.com” [in the <wwwcanadiantire.com> domain name is] likely
to confuse Internet users, encourage them to access Respondent’s site” and
evidenced bad faith registration and use of the domain name); see also ESPN, Inc. v. Ballerini, FA 95410 (Nat.
Arb. Forum Sept. 15, 2000) (finding bad faith where the Respondent linked the
domain name to another website <iwin.com>, presumably receiving a portion
of the advertising revenue from the site by directing Internet traffic there,
thus using a domain name to attract Internet users for commercial gain). The intent of the Policy is to remedy
infringement by habitual typosquatters, like Respondent. See e.g. Nat’l Wildlife
Fed’n v Lorna Kang FA 170519 (Nat.
Arb. Forum Sept. 9, 2003; Yahoo! Inc. and HotJobs.com, Ltd. v. Alex Vorot
aka Arzra Kahn aka Registrate Co., aka NA aka Andrey Michailov aka Amhad Kauser
aka Lorna Kang aka Venta aka Dotsan aka Yong Li aka Mahmoud Nadim FA 159547
(Nat. Arb. Forum July 16, 2003); Qwest Communications Int’l, Inc. v. Lorna
Kang FA 158161 (Nat. Arb. Forum July 8, 2003); Diane Hof aka/dba Sunset
Thomas v. Lorna Kang FA 151119 (Nat. Arb. Forum May 12, 2003); The
Toronto-Dominion Bank v. Lorna Kang FA 150816 (Nat. Arb. Forum Apr. 28,
2003); Disney Enterprises, Inc. v. Lorna Kang FA 125375 (Nat. Arb. Forum
Sept. 27, 2002).
The Panel
finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <wwwblizzard.com> domain name be TRANSFERRED
from Respondent to Complainant—Davidson
and Associates, Inc.
Tyrus R. Atkinson, Jr., Panelist
Dated:
November 5, 2003
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