Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH
Claim Number: FA1706001737429
Complainant is Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. (“Complainant”), represented by Scott J. Major of Millen, White, Zelano & Branigan, P.C., Virginia, U.S.A. Respondent is Cimpress Schweiz GmbH (“Respondent”), Switzerland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <activision-blizzard.com>, registered with Tucows Domains Inc..
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 27, 2017; the Forum received payment on June 27, 2017.
On June 28, 2017, Tucows Domains Inc. confirmed by e-mail to the Forum that the <activision-blizzard.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 June 28, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 18, 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-blizzard.com. Also on June 28, 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 20, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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 in the business of designing video games and registered the BLIZZARD and ACTIVISION marks with the United States Patent and Trademark Office (“USPTO”). (Reg. No. 1,350,487, registered July 23, 1985; Reg. No. 2,410,749, registered Dec. 5, 2000, respectively). Respondent’s <activision-blizzard.com> domain name is confusingly similar to Complainant’s BLIZZARD and ACTIVISION marks since the domain name includes those marks in their entirety and merely adds a hyphen between them, as well as the generic top-level-domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name nor has Complainant authorized Respondent to use its marks. Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. In fact, Respondent has not made any demonstrable preparations to use the disputed domain name. Instead, the domain name is used in emails for the purpose of committing a phishing scheme.
Respondent registered and is using the disputed domain name in bad faith. Respondent is only using the disputed domain name in order to trade in on the goodwill of Complainant. Respondent is attempting to create confusion among Internet users between Respondent and Complainant; Respondent then capitalizes on the confusion by attempting a phishing scheme on unsuspecting Internet users.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. of Santa Monica, CA, USA. Complainant is the owner of domestic and international registrations for its marks ACTIVISION and BLIZZARD, which is has continuously used since at least as early as 1980 and 1994 respectively. Complainant’s marks are used in connection with its provision of interactive video games, online gaming services, and various other related goods and services. Complainant is also the owner of numerous domain names which it utilizes in connection with its business, such as <activisionblizzard.com>.
Respondent is Cimpress Schweiz GmbH, of Zurich, Switzerland. Respondent’s registrar’s address is listed as Toronto, Canada. The Panel notes that the disputed domain name was registered on or about June, 20 2017.
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 asserts that it has established rights in the BLIZZARD and ACTIVISION marks via its registration with the USPTO. (Reg. No. 1,350,487, registered July 23, 1985; Reg. No. 2,410,749, registered Dec. 5, 2000, respectively). Registration of a mark with the USPTO sufficiently establishes rights in that mark. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). The Panel here finds that Complainant has established rights in the BLIZZARD and ACTIVISION marks.
Complainant argues that Respondent’s <activision-blizzard.com> domain name is confusingly similar to Complainant’s BLIZZARD and ACTIVISION marks because the disputed domain name incorporates those marks in their entirety and merely adds a hyphen between them and a gTLD to the end. The combination of a complainant’s registered trademarks and the addition of a gTLD, “.com”, is not sufficient to eliminate confusing similarity. See Wyndham Hotels and Resorts, LLC, and Wyndham Vacation Resorts, Inc. v. James VanBuren, FA 1624028 (Forum July 10, 2015) (“The disputed domain name combines two of Complainant's registered trademarks, WYNDHAM and EXTRA VACATIONS, omitting the space and adding the ".com" top-level domain name. These alterations do not diminish the similarity between the domain name and Complainant's marks.”). Furthermore, the addition of a hyphen does not distinguish a domain name from a mark. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"). The Panel here finds that Respondent’s disputed domain name is confusingly similar to Complainant’s BLIZZARD and ACTIVISION marks in which Complainant has rights.
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that 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 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). Complainant has met this burden.
Complainant asserts that Respondent is not commonly known by <activision-blizzard.com> nor has Complainant authorized Respondent to use its BLIZZARD and ACTIVISION marks. Where a respondent fails to submit a response, the Panel may look to the WHOIS information to determine whether said respondent is commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information on record lists “Schweiz GmbH” as the registrant name. Furthermore, lack of evidence in the record showing that Complainant authorized Respondent to use the BLIZZARD and ACTIVISION marks can further support a finding that Respondent does not have rights or legitimate interests in the 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 here finds that Respondent is not commonly known by the disputed domain name.
Complainant argues that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant insists that Respondent has made no demonstrable preparations to use the disputed domain name. When Respondent is not using the disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark 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 of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Complainant provided a screenshot showing Respondent is using the disputed domain name to impersonate Complainant as part of what appears to be a phishing scheme. The Panel here finds that Respondent is using the disputed domain name only for a phishing scheme rather than operating an active website, and thus concludes that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. The use of a disputed domain name to engage in a phishing scheme is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Chevron Intellectual Property LLC v. Thomas Webber / Chev Ronoil Recreational Sport Limited, FA 1661076 (Forum Mar. 15, 2016) (finding that the respondent had failed to provide a bona fide offering of goods or services or any legitimate noncommercial or fair use, stating, “Respondent is using an email address to pass themselves off as an affiliate of Complainant. Complainant presents evidence showing that the email address that Respondent has created is used to solicit information and money on false pretenses. The disputed domain name is being used to cause the recipients of these emails to mistakenly believe Respondent has a connection with Complainant and is one of the Complainant’s affiliates.”).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element.
Complainant argues that Respondent is attempting to create confusion among Internet users between Complainant and Respondent for the purpose of engaging in a phishing scheme. Using a disputed domain name to create an initial interest confusion, in and of itself, supports a finding 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). Furthermore, using a disputed domain name for the purposes of phishing demonstrates bad faith use and registration. See Emdeon Business Services, LLC v. HR Emdeon Careers, FA1507001629459 (Forum Aug. 14, 2015) (finding that the respondent had engaged in an email phishing scheme indicating bad faith under Policy ¶ 4(a)(iii), where respondent was coordinating the disputed domain name to send emails to Internet users and advising them that they had been selected for a job interview with the complainant and was persuading the users to disclose personal information in the process). The Panel again refers to Complainant’s evidence of Respondent’s phishing attempts. The Panel here finds that Respondent is attempting to confuse Internet users as to the affiliation or source of its emails as part of a phishing scheme, and therefore that Respondent registered and is using the disputed domain name in bad faith.
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
As Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <activision-blizzard.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: August 3, 2017
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