WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Legend Pictures, LLC v. Domain Administrator, Fundacion Private Whois / Ryan G Foo
Case No. D2014-1114
1. The Parties
Complainant is Legend Pictures, LLC of Burbank, California, United States of America, represented by Davis Wright Tremaine LLP, United States of America.
Respondent is Domain Administrator, Fundacion Private Whois, of Panama, Panama / Ryan G Foo of Santiago, Chile.
2. The Domain Name and Registrar
The disputed domain name <warcraftmovie.com> is registered with Internet.bs Corp. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 26, 2014. On June 27, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 4, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 4, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 9, 2014.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 11, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 31, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 4, 2014.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on August 12, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant is the authorized licensee of Blizzard Entertainment Inc., the holder of, inter alia, the following registered trademarks, used in connection with Blizzard Entertainment Inc.'s goods:
- WARCRAFT, registered on January 9, 1996 with the United States Patent and Trademark Office ("USPTO") under Number 1,947,586 for computer programs for video and computer games and instruction manuals sold as a unit with programs;
- WARCRAFT, registered on July 13, 2004 with the USPTO under Number 2,862,803 and covering goods in class 9.
Complainant has the right to use the WARCRAFT trademark for the production of audiovisual works based on the Warcraft video game series, including the production of a Warcraft based movie and was given the authorization by Blizzard Entertainment Inc. to request an order that the disputed domain name <warcraftmovie.com> be transferred to Complainant, as evidenced by an affidavit from Blizzard Entertainment Inc.'s Chief Operating Officer annexed to the Complaint. The disputed domain name was created on March 5, 2005 and has been registered by Respondent since at least August 29, 2013.
5. Parties' Contentions
Complainant considers the disputed domain name to be confusingly similar to trademarks and service marks in which it claims to have rights. Complainant further claims that Respondent has no rights or legitimate interests in respect of the disputed domain name. According to Complainant, Respondent has not used the disputed domain name in connection with a legitimate use. Also, according to Complainant, Respondent has not been commonly known by the disputed domain name. Finally, Complainant argues that Respondent has registered and is using the disputed domain name in bad faith.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. UDRP proceedings are administrative and the applicable standard of proof is the balance of probabilities.
Thus for Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
1. The disputed domain name 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 disputed domain name; and
3. The disputed domain name has been registered and is being used in bad faith.
The Panel will deal with each of these requirements in turn.
A. Identical or confusingly similar
To prove this element, Complainant must first establish that there is a trademark or service mark in which it has rights. Complainant has clearly established that there is a WARCRAFT trademark in which Complainant has rights. The trademark has been registered and used in various countries in connection with video games, online computer games and related entertainment services.
The Panel considers the disputed domain name <warcraftmovie.com> to be composed of the WARCRAFT trademark and the non-distinctive generic term "movie". The Panel is of the opinion that the mere addition of non-distinctive text to a complainant's trademark constitutes confusing similarity, as set out in paragraph 4(a)(i) of the Policy (See Karen Millen Fashions Limited v. Akili Heidi, WIPO Case No. D2012-1395, where the domain name <karenmillenoutlet-australia.com> was held to be confusingly similar to the KAREN MILLEN trademark; Belstaff S.R.L. v. Jason Lau, Sharing, WIPO Case No. D2012-0783, where the domain name <belstaffjackenoutlet.info> was held to be confusingly similar to the BELSTAFF trademark; Lime Wire LLC v. David Da Silva / Contactprivacy.com, WIPO Case No. D2007-1168, where the domain name <download-limewire-now.com> was held to be confusingly similar to the LIME WIRE trademark, especially with addition of the word "download" because users typically download complainant's software; International Business Machines Corporation v. Scott banner, WIPO Case No. D2008-0965, where the domain name <ibmdownload.com> was held to be confusingly similar to the IBM trademark because many Internet users would assume that the domain name identifies a website from which they can download software supplied by the Complainant; Nintendo of America Inc. v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070, where the addition of the words "mail", "post", "fan" and "top50" to the word "pokemon" in the domain names was held to be of minimal impact on what the visitor of the website focuses on, namely the word "pokemon"; Nintendo of America Inc. v. Gray West International, WIPO Case No. D2000-1219, where it was held that the addition of the word "games" in the domain name does nothing to reduce its confusing similarity with Nintendo's POKÉMON marks; Dr. Ing. h.c. F. Porsche AG v. Kentech, Inc. a.k.a. Helios Lab a.k.a. Orion Web a.k.a. Titan Net a.k.a. Panda Ventures a.k.a. Spiral Matrix and Domain Purchase, NOLDC, Inc., WIPO Case No. D2005-0890, where the domain name <porsche-repair-parts.com> was held to be confusingly similar to the trademark PORSCHE).
Accordingly, Complainant has made out the first of the three elements that it must establish.
B. Rights or legitimate interests
Under paragraph 4(a)(ii) of the Policy, Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the disputed domain name.
It is established case law under the Policy that it is sufficient for Complainant to make a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain name in order to place the burden of production on Respondent. (See, Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
The Panel notes that Respondent has not apparently been commonly known by the disputed domain name and that Respondent does not seem to have acquired trademark or service mark rights in the disputed domain name. Respondent's use and registration of the disputed domain name was not authorized by Complainant. There are no indications that a connection between Complainant and Respondent exists.
Moreover, the Panel is of the opinion that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Respondent uses the disputed domain name to redirect Internet users to random websites, some of which feature information and advertising allegedly related to Warcraft goods and services, and others featuring information about and advertising for unrelated goods and services. The Panel considers the offering of such services not to be a bona fide offering of goods or services (see, Caesars World, Inc. v. Chester Vargas/Latin American Financial Holdings Group, WIPO Case No. D2005-0362, where the link to an affiliate program was held to be a factor in finding bad faith; MetaMachine, Inc. v. eDonkey Records & MP3-Zone, WIPO Case No. D2003-0420, where the use of a domain name to redirect consumers as part of an affiliate program was held as evidence of bad faith; Amazon.com, Inc. v. Oluseyi Ikhizamah, WIPO Case No. D2002-1168, where the operation of an affiliate website was held as evidence of bad faith because the respondent was profiting from the use of complainant's mark).
Finally, Respondent did not reply to Complainant's arguments and decided not to take part in the administrative proceedings. Given the circumstances of this case, this is a further indication of the absence of rights or legitimate interests in the disputed domain name.
C. Registered and used in bad faith
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith (See, e.g., Telstra Corporation Limited v. Nuclear Marshmallow, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may evidence bad faith registration and use. Among these factors evidencing bad faith is the use of the domain name for intentionally attempting to attract, for commercial gain, Internet users to a web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location. Another factor is the registration of the domain name in order to prevent the holder of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct.
The redirection of the disputed domain name to websites that include information and advertising allegedly related to Warcraft indicates that Respondent registered and is using the disputed domain name, including Complainant's trademark, for the purpose of intentionally attracting users to Respondent's website by suggesting that Respondent's website is affiliated with or endorsed by Complainant. It is likely that Respondent obtains pay-per-click advertising revenue through its use of the disputed domain name. Such use evidences bad faith according to paragraph 4(b)(iv) of the Policy (See Milwaukee Radio Alliance, L.L.C. v. WLZR-FM Lazer 103, WIPO Case No. D2000-0209, where it was held that there was bad faith were a domain name holder seeks to create an "initial confusion on the part of Internet users with regard to the source of the Domain Name"; Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102, where it was held that Respondent was taking a free ride on the goodwill of Complainant's trademark through the use of a domain name aiming at creating traffic to its website).
Further, in previous decisions under the Policy, Respondent has been found to have made bad faith registrations and use of domain names that were identical or confusingly similar to known trademarks (See e.g., Value Line, Inc. v. Fundacion Private Whois/PPA Media Services, Ryan G Foo, WIPO Case No.D2013-1310; Tracy Morgan v. Fundacion Private Whois/PPA Media Services, Ryan G Foo, WIPO Case No. D2013-0078; L'Oréal v. Fundacion Private Whois/PPA Media Services, Ryan G Foo, WIPO Case No. D2013-2230; Tumblr, Inc. v. Fundacion Private Whois/PPA Media Services, Ryan G Foo; WIPO Case No. D2013-0421). The Panel finds that this pattern of conduct evidences bad faith registration and use pursuant to paragraph 4(b)(ii) of the Policy.In addition, Respondent has failed to accurately list contact information in the publicly available WhoIs records, as is shown by a cease and desist letter that was returned to Complainant as undeliverable.
Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the disputed domain name was registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <warcraftmovie.com> be transferred to the Complainant.
Flip Jan Claude Petillion
Date: August 26, 2014