(U.S. Reg. No. 4,207,810)
(U.S. Reg. No. 4,846,250)
The Complainant is Utah Jazz Retail Inc. of Salt Lake City, Utah, United States of America (“United States” or “U.S.”), represented by Stoel Rives, LLP, United States.
The Respondent is Whoisguard Protected, Whoisguard, Inc. of Panama / Name Redacted.1
The disputed domain name <fanzjerseys.com> is registered with eNom, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2016. On January 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 11, 2016, 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 the Complainant on January 12, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on January 14, 2016.
The Center verified that the 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 January 15, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 4, 2016. On January 22, 2016, the Center received an email communication from an individual stating that the registration of the disputed domain name had been made using its contact details without authorization. The Center received further communications in this regard on January 26, 2016, and on January 29, 2016. The Complainant filed an unsolicited supplemental filing on January 29, 2016. The Center received an email communication from the Respondent on February 5, 2016.
The Center appointed William R. Towns as the sole panelist in this matter on February 11, 2016. 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.
The Complainant, founded in 1987, sells apparel and sports memorabilia online and in retail outlets in throughout the United States. Among other apparel, the Complainant sells official team jerseys licensed by the National Football League (NFL), National Basketball Association (NBA), Major League Baseball (MLB), National Hockey League (NHL), Major League Soccer (NLS), and NCAA (National Collegiate Athletic Association). Since as early as 1997 the Complainant has used the FANZZ trademark in commerce, and the FANZZ mark has been registered in the United States since November 24, 1998 (U.S. Reg. Nos. 2,205,733, and 2,205,734). The Complainant also holds U.S. registrations for the marks FANZZ SPORTS FAN STORE (the “Fanzz Logo”), and a star logo incorporating a stylized letter “F” (the “F-Star Logo”), as depicted below, which were issued on September 11, 2012 and November 3, 2015, respectively.
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(U.S. Reg. No. 4,207,810) |
(U.S. Reg. No. 4,846,250) |
The Respondent registered the disputed domain name <fanzjerseys.com> on November 22, 2015. The disputed domain name resolves to a website (“www.fanjerseys.com”), on which the Respondent offers for sale team jerseys. The Respondent’s website prominently displays a version of the Complainant’s F-Star Logo, differing only in color:
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Complainant’s Mark
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Respondent’s Website
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The Respondent’s website advertises jerseys offered for sale as “NFL Jerseys”, “NHL Jerseys”, “MLB Jerseys”, and “NCAA Jerseys”. Upon becoming aware of the Respondent, the Complainant on December 7, 2015, sent a demand letter to the Respondent, to which the Complaint received no reply.
The Complainant submits that the disputed domain name is confusingly similar to its FANZZ mark. The Complainant maintains that the disputed domain name incorporates the Complainant’s mark, and that the omission of one “z” from FANZZ does not dispel the confusing similarity with the Complainant’s mark. The Complainant further asserts that the inclusion of the word “jerseys” is descriptive of the Complainant’s business and exacerbates the confusing similarity of the disputed domain name.
The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant notes that the Respondent registered the disputed domain name long after the Complainant first began using and registered the FANZZ mark. The Complainant avers that the Respondent has not been authorized or licensed to use the FANZZ mark, and that the Respondent has not been commonly known by “Fanzz” or any derivation thereof. According to the Complainant, the FANZZ mark is a distinctive and unique term coined by the Complainant, which has no dictionary meaning. The Complainant acknowledges that while FANZZ may share some similarities with the term “fans”, the use of the letters “zz” rather than “s” creates a distinct sound, meaning, appearance and overall commercial impression.
The Complainant submits that the Respondent is not making a bona fide offering of goods or services because the Respondent is intentionally trading on the fame of the Complainant’s FANZZ mark to offer goods and services identical to those offered by the Complainant. The Complainant further asserts that the Respondent’s infringing use of the disputed domain name to sell sports jerseys and other apparel cannot constitute a legitimate or noncommercial fair use within the meaning of the Policy.
The Complainant maintains that the Respondent registered and is using the disputed domain name in bad faith. The Complainant argues that the Respondent is using a domain name comprised of the FANZZ mark in order to intentionally attract Internet users for commercial gain by creating a likelihood of confusion as to the source of the website or as to the Complainant’s authorization, endorsement or sponsorship thereof. The Complainant asserts that the Respondent plainly was aware of the Complainant’s rights in the FANZZ mark when the Respondent registered the disputed domain name some seventeen (17) years after the Complainant first registered the mark. According to the Complainant, such bad faith knowledge is further demonstrated by the Respondent’s use of the disputed domain name to attract Internet users to a website offering goods directly competing with those offered by the Complainant. The Complainant also point out that the Respondent has copied and prominently displays the Complainant’s F-Star Logo on the Respondent’s website.
The Respondent did not reply to the Complainant’s contentions.
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use (see Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774). Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting” (see Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187; and Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170).
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name is confusingly similar to the Complainant’s FANZZ mark, in which the Complainant has demonstrated rights. In considering the question of identity or confusing similarity, the first element of the Policy operates essentially as a standing requirement.2 The threshold inquiry under the first element of the Policy is framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar.
Applying this standard, the disputed domain name <fanzjerseys.com> is confusingly similar to the Complainant’s FANZZ mark for purposes of the Policy. The omission in the disputed domain name of the second “z” in FANZZ does not serve to differentiate the disputed domain name from the Complainant’s mark. Nor does the addition of the word “jerseys” in the disputed domain name dispel confusing similarity with the Complainant’s mark, given that “jerseys” is descriptive of the Complainant’s business.
Although the generic Top-Level Domain (“gTLD”) may in appropriate circumstances be considered when evaluating identity or confusing similarity, gTLDs may also be disregarded, and usually are not taken into consideration when evaluating the identity or confusing similarity between the complainant’s mark and the disputed domain name. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel finds that the Complainant has made a prima facie showing. The Respondent, without the Complainant’s authorization or consent, has registered a domain name that is confusingly similar to the Complainant’s FANZZ mark, and is using the disputed domain name with a website on which the Respondent has copied the Complainant’s F-Star Logo, and on which goods directly competing with those of the Complainant are offered for sale.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
Based on the record in this proceeding the Panel considers it highly likely that the Respondent was aware of the Complainant and the Complainant’s FANZZ mark when registering the disputed domain name. In the absence of any reply by the Respondent, the Panel concludes that the Respondent registered the disputed domain name in order to trade on the goodwill and reputation of the Complainant’s mark through the creation of Internet user confusion. See Levantur, S.A. v. Media Insight, WIPO Case No. D2008-0774.
The record before the Panel does not reflect the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. To the contrary, the Respondent registered and is using the disputed domain name in order to divert Internet users to the Respondent’s website, on which goods competitive to those of the Complainant are offered. Under the attendant circumstances, this does not constitute use of the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. See, e.g., Barceló Corporación Empresarial, S.A. v. Hello Domain, WIPO Case No. D2007-1380. Nor, in the circumstances of this case, does the Panel consider that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers, or that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner 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; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iv) of the Policy. As noted above, the Panel concludes that the Respondent was aware of the Complainant and had the Complainant’s mark in mind when registering the disputed domain name. The record demonstrates that the Respondent’s primary motive in relation to the registration and use of the disputed domain name was to capitalize on or otherwise take advantage of the Complainant’s trademark rights, by intentionally creating a likelihood of confusion with the Complainant’s mark as to sponsorship, endorsement or affiliation with the Respondent’s website and the directly competing goods offered thereon.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <fanzjerseys.com> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: February 25, 2016
1 The Panel has determined that no purpose is to be served by including the listed underlying registrant in this decision, and has therefore redacted its name from the caption and body of this decision. The Panel has, however, attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name that includes the named Respondent, and has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding. However, the Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this Decision shall not be published based on exceptional circumstances. See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.
2 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2.
