The Complainant is Blizzard Entertainment, Inc., United States of America (“United States”), represented by Mitchell, Silberberg & Knupp, LLP, United States.
The Respondent is Aditya Shrestha, Nepal. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 21, 2020. On May 21, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 22, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 26, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 30, 2020. 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 and 4, the Center formally notified the Respondent of the Complaint and the proceedings commenced on June 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 22, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 24, 2020. The Center appointed Jon Lang as the sole panelist in this matter on July 1, 2020. 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 The Complainant is one of the world’s leading video game developers. One of its most popular and successful franchise of games is Diablo, including the individual games Diablo, Diablo II, Diablo III, and the forthcoming games Diablo IV, and Diablo Immortal, both of which are currently in development. Diablo Immortal is a highly anticipated game as it will bring the Diablo franchise to mobile phones and tablets. In advance of the release of Diablo Immortal, the Complainant has created, manages and curates a promotional website located at “www.diabloimmortal.com” (the “Diablo Immortal Website”) which features information about the game, links to pre-register and participate in future beta tests of the game, and images of the game’s “key art”. Diablo Immortal is currently available for pre-registration on the Google Play store, which displays the game’s key art. The Complainant owns numerous United States and international trademark registrations for DIABLO, including United States Reg. Nos. 2416001 (registered on December 26, 2000), 2791742 (registered on December 9, 2003), and 3633218 (registered on June 2, 2009); and European Union Reg. No. 000337386 (registration date: February 24, 2000). The Domain Name was registered on January 9, 2019. In or about January 2020, the Complainant discovered the existence of a website located at the Domain Name. After being taken down by the website’s service providers at the Complainant’s request, the website is again currently active as it was before, featuring the key art for Diablo Immortal and also links to the Diablo Immortal website, the Complainant’s social media pages, and embedded versions of the Complainant’s official trailer videos of the Diablo Immortal game. 5. Parties’ Contentions A. Complainant The following is a brief summary of the main contentions of the Complainant. General The Domain Name was created in January 2019, years after the Complainant’s registration of its DIABLO trademarks and only months after it announced that it was developing the Diablo Immortal game. The website to which the Domain Name resolves purports to offer visitors the opportunity to “PLAY DIABLO IMMORTAL” and features links described as “DOWNLOAD FOR ANDROID” and “DOWNLOAD FOR IOS”. It also features “download” links for “Diablo III mobile”. However, the website is a “scam”. Diablo Immortal has not yet been released and the website does not have access to any preview or pre-release version of the game. Similarly, no authorized mobile version of the Diablo III game exists. Clicking on the “download” links for the Diablo Immortal game provides a downloaded Android Package Kit (“APK”) file titled “Diablo Immortal APK”. Clicking on the “download” link for Diablo III mobile, takes visitors to a third-party site that prompts download of suspicious and unrelated software. These files are not the Diablo Immortal or Diablo III games, are not authorized by the Complainant, and are believed to represent a fraudulent and deceptive attempt to distribute malware. The Complainant believes that the entire purpose of the website to which the Domain Name resolves is to trick visitors into believing that they can play the Diablo Immortal game and a mobile version of the Diablo III game, when in fact the purpose of the website is to distribute malware and/or collect personal data. The Complainant has never authorized the Respondent to register the Domain Name or, for that matter, any domain name containing the term “diablo”. The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights The Complainant owns and controls the trademark DIABLO. The Domain Name fully incorporates the Complainant’s mark in addition to the descriptive words “get” and “mobile”. The fact that the DIABLO mark is sandwiched between the words “get” and “mobile” does not preclude a finding of confusing similarity, as adding descriptive or non-distinctive matter to another’s mark will not suffice to avoid a finding of confusing similarity. In fact here, the added words increase confusing similarity because they suggest that users can download mobile versions of the Complainant’s Diablo games on the website located at the Domain Name. The Respondent has no rights or legitimate interests in respect of the Domain Name The Complainant has never authorized the Respondent to register the Domain Name or any domain name containing the term “diablo”. The Respondent is not commonly known by the Domain Name; the Respondent’s name is “Aditya Shrestha” and there is no evidence that that person or entity is commonly known by any other name. The Respondent has not used, or made preparations to use, the Domain Name in connection with any bona fide offering of goods or services and, nor is the Respondent making a legitimate noncommercial or fair use of the Domain Name. The only use the Respondent is making of the Domain Name is to confuse those seeking the Complainant’s website into visiting the Respondent’s website. The Respondent deliberately chose the Domain Name to appropriate and piggyback on the goodwill associated with the Complainant’s Diablo games and, specifically, to improperly distribute malware and unauthorized downloads. The Domain Name was registered and is being used in bad faith There can be little doubt that the Respondent intentionally registered the Domain Name and is using it in order to create confusion and deceive members of the public. The website to which it resolves mimics the Complainant’s Diablo Immortal Website and key art, including using the same colors, images, browser tab logo, font, and characters. The Domain Name is not being used for any legitimate purpose but to lure members of the public into downloading malware under the mistaken belief that they are downloading the Diablo Immortal game or a mobile version of the Diablo III game. The Respondent’s use of the Domain Name is in bad faith, specifically for the purpose of attracting users to the Respondent’s website by creating the false impression that the Respondent’s website is sponsored, affiliated, or endorsed by the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed. A. Identical or Confusingly Similar The Complainant clearly has rights in its DIABLO trademark. Ignoring the generic Top-Level Domain (“gTLD”) “.com” (as the Panel may do for comparison purposes), the Domain Name comprises the Complainant’s DIABLO trademark, preceded by the word “get” and followed by the word “mobile.” As the DIABLO trademark and Domain Name are not identical, the issue of confusing similarity must be considered. Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trademark and the disputed domain name. To satisfy the test, the trademark to which the domain name is said to be confusingly similar, would generally need to be recognizable as such within the disputed domain name. The addition of common, dictionary, descriptive or negative terms are usually regarded as insufficient to prevent confusing similarity. The well-known DIABLO trademark is clearly recognizable within the Domain Name. The words that precede and follow it (“get” and “mobile” respectively) are descriptive in nature and do not prevent a finding that the Domain Name is confusingly similar to the Complainant’s DIABLO trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. The Panel finds that the Domain Name is confusingly similar to the DIABLO trademark for the purposes of the Policy and thus paragraph 4(a)(i) (of the Policy) has been established. B. Rights or Legitimate Interests By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and, as such, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. It is difficult to conceive of any argument that could be advanced in the circumstances that would assist the Respondent. Using a confusingly similar domain name to attract Internet users to a website containing links that wrongly suggest access to the Complainant’s games (or authorised software connected therewith) when they do nothing of the sort, cannot provide a back-drop against which a case of rights or legitimate interests could be made out for the purposes of defeating the Complaint under the Policy. In the circumstances, the Panel concludes that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith One way a complainant may demonstrate bad faith registration and use is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it. (Paragraph 4(b)(iv) of the Policy). Given the nature of the website to which the Domain Name resolves, it is beyond doubt that the Respondent was aware of the Complainant’s DIABLO trademark. The purpose behind registration (of the Domain Name) was clearly to attract Internet users to the Respondent’s misleading website using a domain name confusingly similar to the Complainant’s DIABLO trademark. In other words, precisely the circumstances envisaged above. The Panel need not speculate as to the ultimate aim of the Respondent (e.g., to distribute malware or something else). The Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name Jon Lang
Sole Panelist
Date: July 15, 2020
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