WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ubisoft Entertainment v. Josephine Smith
Case No. D2017-1402
1. The Parties
The Complainant is Ubisoft Entertainment of Rennes Cedex, France, represented by Marc Muraccini, France.
The Respondent is Josephine Smith of Lansing, Michigan, United States of America ("United States").
2. The Domain Name and Registrar
The disputed domain name <justdancelive.com> (the "Disputed Domain Name") is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 20, 2017. On July 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 22, 2017, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 26, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 15, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 16, 2017.
The Center appointed John Swinson as the sole panelist in this matter on August 22, 2017. 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 a producer, publisher and distributor of interactive entertainment products and is well known internationally for its video game "Just Dance". The Complainant has sold over 50 million units of this video game in more than 55 countries.
The Complainant is the registered owner of the European Union trade mark registration number 008393373 for JUST DANCE, which was registered on January 12, 2010, and United States trade mark registration number 3,794,829, which was registered on May 25, 2010 (the "Trade Mark").
The Respondent is Josephine Smith, an individual who resides in the United States. The Respondent did not file a Response, and consequently little information is known about the Respondent.
The Disputed Domain Name was registered on March 8, 2017. The website hosted at the Disputed Domain Name (the "Respondent Website") appears to be selling Jack Jones apparel. The Respondent Website is not an official Jack Jones website nor does it appear to be an authorized reseller of Jack Jones products. Part of the Respondent Website is in Norwegian.
5. Parties' Contentions
Identical or confusingly similar
The Complainant submits that the Disputed Domain Name is identical or confusingly similar to the Trade Mark. The only differences between the Disputed Domain Name and the Trade Mark are the addition of the purely descriptive word "live" and the suffix ".com".
Rights or legitimate interests
The Complainant submits that there is no evidence that the Respondent has:
- used the Disputed Domain Name in connection with a bona fide offering of goods or services;
- made or is making a noncommercial fair use of the Disputed Domain Name;
- ever been known as or referred to as "Just Dance"; or
- offered products or services using or under that name.
Further, the Complainant submits that the website at the Disputed Domain Name is dedicated to clothing products that are unrelated to the Complainant. The Complainant submits that this demonstrates that the Respondent is actively using the Trade Mark to attract Internet users to the Respondent Website for the purpose of commercial gain.
Registration and use in bad faith
The Complainant submits that the Respondent is using the Disputed Domain Name for the primary purpose of attracting Internet users to the Respondent Website by suggesting that there is an association with the Complainant and consequently creating confusion with the Complainant's Trade mark.
The Complainant also highlights that the Respondent has included statements regarding copyright on the Respondent Website and that these statements include the Trade Mark. The Complainant submits that this is a further demonstration of bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
To succeed, the Complainant must prove that each of the elements provided in paragraph 4(a) of the Policy have been met. These include:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
Irrespective of the fact the Respondent has not filed a response, the onus of proving these elements remains on the Complainant.
A. Procedural Issues
The Respondent's failure to file a Response does not automatically result in a decision in favour of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013‑2059). However, the Panel may draw appropriate inferences from the Respondent's default.
B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark. The Panel considers that the Disputed Domain Name is confusingly similar to the Trade Mark for the following reasons.
The addition of the descriptive word "live" does not detract from the identical or confusingly similar nature of the Disputed Domain Name. "Just Dance" is the dominant part of the Disputed Domain Name. The word "live" could be considered as describing the Complainant's video game, which is interactive.
The addition of the generic suffix ".com" is to be discounted for the purposes of establishing whether a disputed domain name is identical or confusingly similar to a trade mark. See Zynga Game Networks Inc v Emil ROC, WIPO Case No. D2009‑1535.
For the above mentioned reasons, the Complainant is successful on the first element of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003‑0455.
The Panel finds that the Complainant has made out a prima facie case. This decision has been reached after consideration of the following facts:
- The Respondent has not used or made demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. Rather, the Respondent Website appears to be offering Jack Jones apparel for sale. This has no obvious connection with the Disputed Domain Name or the Respondent.
- There is no evidence that the Respondent is, or has ever been, known by the Disputed Domain Name.
- There is no evidence to suggest the Respondent is making, or has ever made, any legitimate non‑commercial or fair use of the Disputed Domain Name.
- The Panel accepts the Complainant's submission that the Complainant has not authorized or otherwise given the Respondent permission to use the Disputed Domain Name.
- The Respondent, despite having the opportunity to present evidence as to its rights or legitimate interests, chose not to submit a Response.
- Consequently, the Panel finds that the Complainant's prima facie case has not been rebutted, and that the Respondent is found not to have any rights or legitimate interests in the Disputed Domain Name.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and used the Disputed Domain Name in bad faith.
The Panel considers it likely that the Respondent's primary motive in registering and using the Disputed Domain Name was to attempt to attract Internet users to the Respondent Website for commercial gain, and to capitalize on the Complainant's reputation in the Trade Mark. This is evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy.
Further, the Panel notes that the Respondent Website reflects the "look and feel" of the official Jack Jones website. The Respondent has not offered any evidence to suggest a relationship between the Respondent, the Trade Mark, and the goods being promoted on the Respondent Website. It appears unlikely that the Respondent is an authorized reseller of Jack Jones branded goods. These facts are taken to be further demonstrations of bad faith.
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)(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 <justdancelive.com> be transferred to the Complainant.
Date: September 4, 2017