WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ubisoft Entertainment, S.A. v. N/A, Jocelyn Hall
Case No. D2012-1416
1. The Parties
The Complainant is Ubisoft Entertainment, S.A. of Rennes, France, represented internally.
The Respondent is N/A, Jocelyn Hall of Provo, Utah, United States of America.
2. The Domain Name and Registrar
The disputed domain name <ubireg.com> is registered with Neen Srl.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2012. On July 12, 2012, the Center transmitted by email to Neen Srl a request for registrar verification in connection with the disputed domain name. On July 17, 2012, Neen Srl transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 18, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 7, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 8, 2012.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on August 14, 2012. 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 following facts have not been contested:
Complainant is a producer, publisher and distributor of entertainment videogames. It has offices in 26 countries and has sales in more than 55 countries around the world.
On September 2, 2002, Complainant registered the disputed domain name in order to propose technical support and services to its consumers. The disputed domain name was used in manuals related to Complainant videogames already released in the market in order to bring information and support to consumers of Complainant products.
Complainant inadvertently allowed the disputed domain name registration to lapse on September 2, 2011. The disputed domain name was then registered by Respondent on November 7, 2011.
Complainant contacted Respondent several times to obtain the transfer of the <ubireg.com> domain name without any answer on the part of the Respondent.
5. Parties’ Contentions
Complainant is the owner of the community trademark registration for UBI in classes 9, 28 and 41 since the year 2006. The trademark UBI does not have any meaning in English. The term is highly distinctive for products and services covered by the trademark.
The disputed domain name <ubireg.com> is confusingly similar to Complainant trademark.
The word “reg” is the abbreviation of registration and was used by Complainant to offer support services to its customers.
Respondent is not using the disputed domain name in connection with a bona fide offering of good and services. Respondent is not making a noncommercial fair use of the disputed domain name and Respondent has never been known as the disputed domain name.
According to Complainant, Respondent is currently using the disputed domain name in connection with commercial websites to which the domain name resolves and on which revenue-generating links to other websites are placed.
Complainant contends that using another’s trademark in a domain name to obtain advertising and click-through revenue, either by diverting users to other websites or hosting links to other websites is not a bona fide offering of goods and services or a non commercial or fair use.
The disputed domain name was registered and is used in bad faith.
The disputed domain name was registered primarily for the purpose of selling to a third party, for valuable consideration in excess of the Respondent’s out-of-pocket cost directly related to the disputed domain name.
In addition Complainant states that by using the disputed domain name, Respondent has intentionally attempted to attract for commercial gain, Internet users to the Respondent website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent web site.
Respondent is also using the Complainant’s trademarks related to videogames titles on the disputed domain name.
In addition, there are 847 domain names associated with the Respondent and Respondent has a pattern of registering domain names containing trademarks of third parties as evidenced by a UDRP decision annexed to the Complaint.
Complainant request as a remedy the transfer of the disputed domain name.
The Respondent has failed to respond to the Complaint, and therefore is in default.
In light of the default this Panel may draw such inferences from the default as it considers appropriate, paragraph 14(b) of the Rules. Nevertheless the Panel shall proceed to a decision on the Complaint (in the absence of exceptional circumstances), paragraph 14(a) of the Rules, based on the statements and documents submitted and in accordance with the UDRP Policy and Rules; paragraph 15(a) of the Rules.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements are present if the Complaint is to prevail:
(i) The Respondent’s domain name 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 in respect of the domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
There is seemingly no dispute that the Complainant has rights in its UBI trademark for the purpose of paragraph 4(a)(i) of the Policy. As such, the remaining issue under this element is whether the disputed domain name is identical or confusingly similar to that trademark.
The disputed domain name <ubireg.com> incorporates the registered trademark of the Complainant in full and the Panel finds that for the purpose of these proceedings that it shall considered to be confusingly similar to a trademark in which the Complainant has rights.
In assessing identity and confusing similarity for the purposes of paragraph 4(a)(i) of the Policy, the generic term “reg” and the gTLD “.com” suffix can be ignored.
The conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.
According to the Complaint, the Complainant has not licensed or otherwise permitted the Respondent to use its trademarks, or to register any domain name incorporating the Complainant’s marks.
The Complainant further alleges that the Respondent has no relation with the Complainant nor has it any rights or legitimate interests in the disputed domain name. The Respondent has not rebutted these prima facie allegations, and has provided no evidence demonstrating rights and legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy.
Since the Complainant’s UBI trademark to the best of the Panel’s knowledge has no specific meaning except as a trademark for the Complainant, and since the disputed domain name had been in use for nine years for a specific purpose by the Complainant, it is unlikely that any such rights or legitimate interests exist in the disputed domain name, under the circumstances.
Consequently, the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled.
C. Registered and Used in Bad Faith
The Complainant must prove both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
The Complainant's allegations with regard to the Respondent's registration and use of the disputed domain name in bad faith have been considered by the Panel. These allegations have not been contested by the Respondent.
The trademark UBI is distinctive for products and services used by Complainant. In addition the disputed domain name containing the trademark was in use by Complainant for nearly a decade before being registered by Respondent. The disputed domain name was registered on September 2, 2002 by Complainant. Complainant inadvertently allowed the disputed domain name registration to lapse on September 2, 2011. The disputed domain name was then registered by Respondent nearly two months later, on November 7, 2011.
Thus, it is difficult to conceive why Respondent has registered a domain name which is a combination of the trademark UBI and the generic term “reg” which was in use for nine years by Complainant. This extensive use of the disputed domain name, and the immediate registration by Respondent after the domain name elapsed, in view of this Panel, is evidence of bad faith registration.
The domain name at issue appears to contain pay-per-click advertising. There is no doubt, in view of this Panel, that this was the motive for the registration of the domain name. Respondent is using the disputed domain name to benefit from the UBI trademark and the Internet traffic of the disputed domain name for his own commercial interests (pay-per-click advertising). Such use accordingly suggests an attempt by the Respondent to profit from the Internet traffic from Internet users seeking the Complainant’s registration website of its products. Based upon such findings and evidence, the Panel therefore finds that the Respondent has intentionally attempted to attract Internet users to his own site and to other online locations by creating a likelihood of confusion with the Complainant’s mark, as to the source, sponsorship, affiliation or endorsement of his site or of the products and services offered on his website (paragraph 4(b)(iv) of the Policy).
In addition, in view of this Panel, the following circumstances are taken into account to conclude that there is bad faith use in this case:
- The disputed domain name is offered for sale at SEDO for more than the simple cost of registration;
- Respondent has been subject of at least one other UDRP proceeding;
- The content of the disputed domain name contains hyperlinks to Complainant’s competitors;
- Failure to respond to Complainant’s request to return the domain name after several communications by Complainant’s lawyers.
Therefore, taking all the circumstances into account and for all the above reasons, the Panel concludes that the Respondent has registered and is using the disputed domain name 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 <ubireg.com> be transferred to the Complainant.
Pablo A. Palazzi
Dated: August 28, 2012