Blizzard Entertainment, Inc. v. Protection of Private Person
Claim Number: FA1704001725158
Complainant is Blizzard Entertainment, Inc. (“Complainant”), represented by Adam D. Mandell of Millen, White, Zelano & Branigan, P.C., Virginia. Respondent is Protection of Private Person (“Respondent”), RU.
REGISTRAR AND DISPUTED DOMAIN NAME(s)
The domain name(s) at issue is/are <openwow.com>, registered with Registrar of Domain Names REG.RU 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 April 4, 2017; the Forum received payment on April 4, 2017.
On Apr 8, 2017, Registrar of Domain Names REG.RU LLC confirmed by e-mail to the Forum that the <openwow.com> domain name(s) is/are registered with Registrar of Domain Names REG.RU LLC and that Respondent is the current registrant of the names. Registrar of Domain Names REG.RU LLC has verified that Respondent is bound by the Registrar of Domain Names REG.RU 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 April 17, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 8, 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@openwow.com. Also on April 17, 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 May 16, 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 name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant, Blizzard Entertainment, Inc., is engaged in the business of offering computer and video game software and related peripheral and promotional goods/services throughout the United States and internationally. In Connection with this business, Complainant uses the WORLD OF WARCRAFT and WOW marks to market and offer its same-titled video game. Complainant has rights in the WORLD OF WARCRAFT and WOW marks based upon multiple registrations with the United States Patent and Trademark Office (“USPTO”) (e.g. WORLD OF WARCRAFT—Reg. No. 3,121,878, registered Oct. 6, 2004; WOW—Reg. No. 4,071,311, filed Nov. 17, 2004, registered Dec. 13, 2011). To Complainant and its customers, the WORLD OF WARCRAFT mark and WOW have been synonymous since Complainant began using the WOW mark in commerce in December 2005, and Complainant has established common law rights in the WOW mark dating back at least that far. Respondent’s <openwow.com> is confusingly similar to Complainant’s WOW mark, as it contains the mark in its entirety, merely differing through the addition of the descriptive word “open” and the generic top-level domain (“gTLD”) “.com.”
ii) Respondent has no rights or legitimate interests in the <openwow.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the WOW mark for any reason. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to host a website which contains a directory of “private servers” that diverts customers of Complainant to game servers under the mistaken belief that they are associated with Complainant. Additionally, in doing so, Respondent is causing, contributing, or encouraging copyright infringement of Complainant’s game. Further, the resolving webpage contains what appear to be advertisements for private servers, from which Respondent presumably receives pay-per-click fees.
iii) Respondent has registered and used <openwow.com> in bad faith. Respondent is using the disputed domain name and resolving website to divert Internet users for commercial gain by creating confusion as to the source of origin of the website and the services provided therein. Respondent is also facilitating otherwise legitimate users of the WOW game to breach Complainant’s End User License Agreement. Additionally, Respondent clearly had actual knowledge of Complainant’s rights in the WOW mark at the time it registered and subsequently used the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that <openwow.com> was created on October 16, 2009.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name 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."
Preliminary Issue: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Russian, thereby making the language of the proceedings in Russian. The Panel has discretion to determine the appropriate language of the proceedings on appointment. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Ed. Complainant respectfully requests that the proceedings be conducted in English. In accordance with the Rules, paragraphs 11(a), 10(b) and 10(c), Complainant requests that the Panel determine English to be the language of the proceeding for the following reasons: The domain name combines the English word “open”, the WOW mark, and the generic top-level domain “.com”. The website to which the Domain Name is directed is in English. In the case of U.S. Reg. No. ‘204, the Registrant used an image of the website to which the Domain Name is directed as a specimen demonstrating use of the relevant mark in the United States. This shows that the Registrant is directing his services to English speakers in the United States. In the case of U.S. App. No. ‘061, Registrant filed his application pro se, indicating that he was able to understand the English appearing on the U.S. Patent and Trademark Office’s website. To the extent that Registrant requires assistance understanding English, Registrant is capable of obtaining competent English-speaking trademark counsel in the U.S., as is demonstrated by the prosecution of U.S. Reg. No. ‘204.
In the absence of a Response and Respondent's no objection to the Complainant's request for the language of the proceedings, the Panel decides English to be the language of the proceeding. See FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001 (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English).
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 WOW mark based upon registration of the mark with the USPTO (e.g. Reg. No. 4,071,311, filed Nov. 17, 2004, registered Dec. 13, 2011). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). The effective date of registration of a mark is extended back to the filing date of the mark for the purposes of a Policy ¶ 4(a)(i) analysis. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1 1589962 (Forum Jan. 1, 2015) (“The Panel finds that Complainant’s valid registration with the USPTO demonstrates Complainant’s rights in the CHEAPCARIBBEAN.COM mark, and that such rights extend back to the February 7, 2007 filing date.”). The Panel therefore holds that Complainant’s registration of the WOW mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next claims that Respondent’s <openwow.com> is confusingly similar to the WOW mark, as the disputed domain name contains the WOW mark in its entirety, and merely adds the descriptive term “open” and the gTLD “.com.” Addition of a generic or descriptive term and a gTLD to mark in order to form a domain name does not distinguish the domain name from the mark for the purposes of a Policy ¶ 4(a)(i) analysis. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). Also, the addition of the “.com” gTLD is irrelevant for the purposes of the Policy. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel therefore finds that the disputed domain name is confusingly similar to the WOW mark per Policy ¶ 4(a)(i).
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), 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 argues that Respondent has no rights or legitimate interests in <openwow.com> as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the WOW mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The Panel notes that a privacy service was used by Respondent, and was not lifted as a result of the commencement of this proceeding. As a result, the Panel notes that the WHOIS information of record identifies Respondent as “Protection of Private Person.” Additionally, lack of evidence in the record to indicate that the respondent had been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in a disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the disputed domain name is evinced by their failure to use the name for a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to host a website which contains a directory of “private servers” that diverts customers of Complainant to game servers under the mistaken belief that they are associated with Complainant. Complainant contends that in doing so, Respondent is linking to websites which directly compete with Complainant’s gaming business. Use of a disputed domain name to link to a complainant’s competitors is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o, FA1412001594837 (Forum Jan. 22, 2015) (“The Panel finds Respondent’s use of the disputed domain names to feature parked hyperlinks containing links in competition with Complainant’s legal services is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Also, passing off as a complainant can be evidence of a lack of rights or legitimate interests. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). The Panel therefore finds that Respondent lacks rights and legitimate interests per Policy ¶¶ 4(c)(i) and (iii).
Complainant also contends that Respondent lack of rights and legitimate interests is also apparent through Respondent’s offering of advertisements for private servers on the resolving website. Displaying advertisements on the resolving website for a disputed domain name can be evidence a respondent is attempting to commercially benefit from a disputed domain name, and can indicate a lack of rights or legitimate interests per Policy ¶¶ 4(c)(i) and (iii). See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services). Complainant points to a screenshot of the resolving website which indicates advertising at figures (showing “Your Ad Here” on the right side of the page). The Panel finds the display of advertisements on the resolving website is additional evidence of Respondent’s lack of rights and legitimate interests in the <openwow.com> domain name.
Complainant contends Respondent has registered and used <openwow.com> in bad faith, because Respondent is using the disputed domain name to divert Complainant’s customers and attract them for commercial gain. Such use is demonstrative of a respondent’s bad faith per Policy ¶¶ 4(b)(iii) and (iv). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”); see also Clark Equipment Company v. Namase Patel / Mumbai Domains, FA1406001566288 (Forum July 30, 2014) (“The Panel observes that the Respondent’s disputed domain name leads to a website that features links to products that directly compete with Complainant’s products. The Panel determines that Respondent is attempting to mislead consumers as to Complainant’s affiliation with the disputed domain name, and Respondent likely profits from the resulting confusion. Therefore, the Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”). Complainant contends that the private WORLD OF WARCRAFT servers Respondent links to compete with Complainant’s business, as they draw Complainant’s customers who thus spend less time playing the legitimate version of Complainant’s game. Complainant contends this results in a loss of subscriber fees. The Panel therefore finds that the private servers Respondent links to compete with Complainant’s business, and that Respondent’s linking to them demonstrates bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Further, Complainant claims that Respondent is essentially providing counterfeit versions of Complainant’s WOW game by causing, encouraging, and/or facilitating copyright infringement. Offering counterfeit versions of a complainant’s products can be evidence of Policy ¶¶ 4(b)(iii) and (iv) bad faith. See Xiaomi Inc. v. Tanapong Kotipan / Omega Gadget, FA1505001621199 (Forum July 10, 2015) (“Use of a domain name to offer counterfeit goods does consist of bad faith under Policy ¶ 4(b)(iii).”); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products, and thus showed Policy ¶ 4(b)(iv) bad faith). The Panel agrees and finds Respondent to have acted in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Complainant also contends that Respondent’s domain name and resolving website cause initial interest confusion to Internet users and is evidence of Respondent’s bad faith. The use of a mark in a domain name that would lead Internet users to believe the domain name is connected to a complainant can amount to evidence of bad faith. See Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that the respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with the complainant, and thus is the equivalent to bad faith use). Complainant contends that not only is its mark famous, the resolving website itself strengthens such an expected confusion. Complainant contends that the fact that the “open” and “wow” components of the website’s title are distinguished by color on the resolving website promotes the impression that a consumer will have access to Complainant’s WOW game in an “open” format. According to Complainant, this would be likely to result in the mistaken belief that the site and services derive from Complainant. The Panel agrees and finds that Respondent’s registration and use of the disputed domain name was in bad faith per Policy ¶ 4(a)(iii).
Finally, Complainant argues that there is no plausible explanation for the registration of <openwow.com> other than to trade on the goodwill of the Complainant. In the case of a well-known and distinctive trademark, its use in a domain name can itself be evidence of bad faith. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”). Here, Complainant contends its mark is famous and highly distinctive, and that any use Respondent could make of the disputed domain name would be infringing and constitute bad faith. The Panel agrees and finds additional evidence of Respondent’s bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <openwow.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: May 25, 2017
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