Activision Publishing, Inc. v. Wowyoyo e-commerce Co., Ltd / Zhou Wen
Claim Number: FA2004001893709
Complainant is Activision Publishing, Inc. (“Complainant”), represented by Adam D. Mandell of Millen, White, Zelano & Branigan, P.C., United States. Respondent is Wowyoyo e-commerce Co., Ltd / Zhou Wen (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <callofdutyww2play.com>, registered with NameSilo, LLC.
The undersigned certifies that he 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 27, 2020; the Forum received payment on April 27, 2020.
On April 27, 2020, NameSilo, LLC confirmed by e-mail to the Forum that the <callofdutyww2play.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 April 29, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 19, 2020 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@callofdutyww2play.com. Also on April 29, 2020, 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 20, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 claims ownership of the CALL OF DUTY trademark and service mark established through its ownership of the portfolio of registered trademarks described below and the goodwill which it has established in the mark through its use in its business as a developer and provider of video games and related services. Complainant claims continuous use of the CALL OF DUTY mark in commerce since October 2003. As early as October 25, 2002, it filed the application that ultimately matured into its United States trademark registration number 2,925,780.
Complainant submits that by the end of 2019, Complainant had sold well in excess of 325 million units worldwide in the CALL OF DUTY game series, with retail sales well in excess of (USD) $17 billion; and in the United States alone, the CALL OF DUTY game series had surpassed 185 million units sold with over (USD) $9.5 billion in total sales.
Complainant adds that its CALL OF DUTY games have been played competitively around the world since at least as early as 2011 as electronic sports (“eSports”) in events such as the CALL OF DUTY Championship and in-game features like CODcasting and League Play. On September 24, 2015, Complainant announced the formation of its own eSports league under the name and mark CALL OF DUTY WORLD LEAGUE.
Complainant’s main titles and release dates for its offerings are CALL OF DUTY (29-OCT-2003), CALL OF DUTY: United Offensive (15-SEP-2004), CALL OF DUTY: Finest Hour (16-NOV-2004), CALL OF DUTY 2 (25-OCT-2005), CALL OF DUTY 2: BIG RED ONE (01-NOV-2005), CALL OF DUTY 3 (07-NOV-2006), CALL OF DUTY 4: MODERN WARFARE (06-NOV-2007), CALL OF DUTY: WORLD AT WAR (11-NOV 2008), CALL OF DUTY: MODERN WARFARE 2 (10-NOV 2009), CALL OF DUTY: BLACK OPS (09-NOV-2010), CALL OF DUTY: MODERN WARFARE 3 (08-NOV-2011), CALL OF DUTY: BLACK OPS II (13-NOV-2012), CALL OF DUTY: GHOSTS (05-NOV-2013), CALL OF DUTY: ADVANCED WARFARE (04-NOV-2014), CALL OF DUTY: BLACK OPS III (06-NOV-2015), CALL OF DUTY: INFINITE WARFARE (04-NOV-2016), CALL OF DUTY: WWII (03-NOV-2017), CALL OF DUTY: BLACK OPS 4 (12-OCT-2018), CALL OF DUTY: MODERN WARFARE (25-OCT-2019).
Complainant alleges that the disputed domain name <callofdutyww2play.com> which consists of Complainant’s CALL OF DUTY mark, the terms “ww2” and “play” and the generic top-level domain extension <.com>, is confusingly similar to its CALL OF DUTY trademark.
Complainant submits that the element “ww2” is a common acronym for the Second World War, which is a subject of Complainant’s game CALL OF DUTY: WWII, launched on November 3, 2017; and the term “play” means, “engage in activity for enjoyment and recreation rather than a serious or practical purpose,” and is descriptive of an online location where one can play games.
Complainant submits that the presence of these words in the disputed domain name does nothing to avoid confusing similarity as between the disputed domain name and Complainant’s famous and highly distinctive CALL OF DUTY mark. Indeed, their presence only enhances the confusion, as the terms have an obvious relationship with Complainant and its games.
Complainant adds that t is well-established that the addition of a gTLD extension is irrelevant in determining whether a domain name is confusingly similar. See, e.g., Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum Sept. 27, 2002).
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name, arguing that to the best of Complainant’s knowledge, Respondent is not known by a name consisting in whole or in part of the wording CALL OF DUTY; nor could it be without authorization from Complainant. Respondent is not an agent or licensee of Complainant.
Complainant refers to a printout of the website to which the disputed domain name resolves to illustrate that Respondent is using the disputed domain name to make an offering of free-to-play online video games to Internet users. Among the offerings on Respondent’s website are a game entitled, “CALL OF CAUSE,” a purported “3rd Person Shooter Strike.”
Although the games offered at Registrant’s website are free-to-play, advertisements appear on the website, and there is abundant space for banner advertisements. Complainant submits such use cannot be considered a bona fide offering of goods or making a non-commercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or tarnish the trademark or service mark at issue.
Complainant further alleges that the disputed domain name was registered and is being used in bad faith, arguing that the disputed domain name was registered more than sixteen (16) years after Complainant first issued a CALL OF DUTY game and long after the CALL OF DUTY mark had become famous in the United States and beyond as one of the most successful brands in the history of the entertainment industry.
Furthermore, Complainant argues that there is no plausible explanation for the registration of the disputed domain name other than to trade on the goodwill of Complainant. See Yahoo! Inc.and GeoCities v. Cupcakes, Cupcake City, Cupcake Confidential, Cupcake-Party, Cupcake Parade, and John Zuccarini, Case No. D2000-0777 (WIPO Oct. 2, 2000).
Complainant adds that the CALL OF DUTY mark is famous and highly distinctive and so it is apparent that Respondent intended that the disputed domain name should be confusingly similar to the CALL OF DUTY mark, and that it is attempting to deprive Complainant of the use of a relevant domain name.
Complainant concludes by arguing that Respondent is using Complainant’s trademark in bad faith to attract Internet users for commercial gain to the website to which the disputed domain name resolves to offer goods identical to those offered by Complainant under its CALL OF DUTY trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a developer and distributor of interactive entertainment. Its games portfolio includes the CALL OF DUTY franchise, a first-person shooter video game.
Complainant is the registered owner of an international portfolio of trademarks that contain the words CALL OF DUTY alone or in combination with other wording and/or design elements that include the following:
· United States registered trademark CALL OF DUTY, registration number 2,925,780, registered on February 8, 2005 on the Principal Register for goods in international class 9;
· United States registered service mark CALL DUTY WORLD LEAGUE (design) registration number 5546349, registered on August 21, 2018 for services in in international class 41;
· EUTM CALL OF DUTY, registration No.: 3993912, registered on December 7, 2005 for goods in class 9.
The disputed domain name was registered on February 8, 2020 and resolves to a website that posts advertisements and offers free-to-play video games.
There is no information available about Respondent, except for that provided in the Complaint, the Registrar’s WHOIS and the information provided by the Registrar in response to the Forum’s request for verification of the registration details of the disputed domain name in the course of this proceeding. Respondent availed of a privacy service to conceal its identity on the published WHOIS and its identity was disclosed by the Registrar in said response to the Forum’s verification request.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has provided convincing, uncontested evidence of its rights in the CALL OF DUTY mark established by its ownership of the abovementioned portfolio of registered trademarks and the goodwill which it has established through it use of the mark in its business as a developer and provider of video games and related service since October 2003.
The disputed domain name <callofdutyww2play.com> consists of Complainant’s CALL OF DUTY mark in its entirety; the terms “ww2” and “ play” and the generic top-level domain extension <.com>.
There are two distinctive elements in the disputed domain name namely Complainant’s CALL OF DUTY trademark and the term “ww2).
Having compared the disputed domain name and Complainant’s trademark, this Panel finds that Complainant’s trademark is the initial and dominant element and the element “ww2” is a common acronym for the Second World War, which is a subject of Complainant’s game CALL OF DUTY: WWII, launched on November 3, 2017. The descriptive term “play” has an obvious reference to games which is Complainant’s business.
For the purposes of comparison, the term <.com> extension may be ignored because in the context of this Complainant it would be recognized as a gTLD extension and a technical necessity for a domain name and serves no other purpose or meaning in context.
This Panel finds therefore that Complainant has succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, arguing that to the best of Complainant’s knowledge, Respondent is not known by the disputed domain name; that it is not authorized to use the CALL OF DUTY trademark in the disputed domain name, nor could it be without authorization from Complainant; that Respondent is not an agent or licensee of Complainant; that Respondent is using the disputed domain name as the address of a website, offering of free-to-play online video games to Internet users in competition with Complainant’s offerings and that such use cannot be considered a bona fide offering of goods or making a non-commercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or tarnish the trademark or service mark at issue.
It is well established that if Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove his rights or legitimate interests in the disputed domain name. Respondent has failed to file any response to the Complaint and so has not discharged the burden. In the circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
The disputed domain name was registered more than sixteen years after Complainant first commenced use of the CALL OF DUTY mark on its video game. It is improbable that the registrant as unaware of Complainant, its games and its rights in the CALL OF DUTY mark when the disputed domain name was chosen and registered. This conclusion is further supported by the fact that the domain name includes the term “WWII” which is an obvious reference to one of Complainant’s game titles. This Panel finds therefore that the disputed domain name was registered in bad faith to lure and misdirect Internet users to Respondent’s website by taking predatory advantage of Complainant’s reputation in the CALL OF DUTY mark.
The disputed domain name resolves to a website that offers free-to-play video games and on the balance of probabilities profits from pay-per-click advertising revenue. This Panel finds therefore that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site. Respondent is therefore using the disputed domain name in bad faith.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is entitled to the remedy requested in the Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <callofdutyww2play.com> domain name be TRANSFERRED from Respondent to Complainant.
___________________________________
James Bridgeman SC
Panelist
Dated: May 21, 2020
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