WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Utah Jazz Retail, Inc. v. Lee Tang / Miller Retail Properties

Case No. D2015-0205

1. The Parties

Complainant is Utah Jazz Retail, Inc. of Salt Lake City, Utah, United States of America (the "U.S."), represented by Stoel Rives, LLP, U.S.

Respondent is Lee Tang of New York, New York, U.S. / Miller Retail Properties of Salt Lake City, Utah, U.S.

2. The Domain Name and Registrar

The disputed domain name <fanzz.net> is registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 7, 2015. On February 9, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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. Complainant filed an amended Complaint on February 14, 2015.

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 proceeding commenced on February 19, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 11, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on March 12, 2015.

The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on March 23, 2015. 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, a Utah corporation, is a member of the Larry H. Miller group of companies, which does business as, among others, Miller retail properties and Miller sports properties. Fanzz online and physical retail stores are one of the businesses conducted by Miller retail properties. Complainant has over 120 physical retail locations throughout the U.S. and the website and online store which can be found at <fanzz.com> receives over 150,000 unique online visitors each month.

Complainant owns U.S. trademark Reg. Nos. 2,205,733 and 2,205,734 since November 1998 for use with "retail store featuring apparel and sports memorabilia" (the "Mark" or "Marks"). In addition, in October 2011, Complainant applied to the United States Patent and Trademark Office ("USPTO") to register the service mark for use with "retail store featuring apparel and sports memorabilia".. Complainant has been continuously and extensively using the Marks in connection with its sport apparel and memorabilia retail business for almost twenty years. In addition, Complainant often uses the mark in a stylized font featuring block letters with the lower part of the letters forming a curve.

Respondent is not affiliated with Complainant, and is not authorized or licensed to use the Marks. Respondent registered the disputed domain name <fanzz.net> on July 1, 2011. Respondent provided false contact information in WhoIs database by using the contact information of Complainant's.

Complainant has attempted to resolve this matter by sending a demand letter to Respondent on January 9, 2015, however the letter was returned because Respondent provided the Registrar with false contact information.

5. Parties' Contentions

A. Complainant

Complainant's main contentions are summarized as follows:

Firstly, Complainant contends that Respondent's disputed domain name is identical or confusingly similar to Complainant's Marks in which Complainant has rights because the disputed domain name is identical to the sight (using the same font), sound, and meaning of the Mark. Complainant owns the domain name <fanzz.com> and Respondent merely substituted the ".com" generic Top-Level Domain (gTLD) for ".net" in the disputed domain name.

Secondly, Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name because Complainant has no relationship with Respondent and has never authorized Respondent to use the disputed domain name. Complainant allegedly invented the Mark and the term "Fanzz" has only been registered or applied for as a trademark in the U.S solely by Complaint. Additionally, Respondent's use of the disputed domain name can neither constitute a bona fide offering of goods or services, nor the disputed domain name is a noncommercial or fair use of the Marks.

Thirdly, Complainant contends that the disputed domain name allegedly was registered and is being used in bad faith by Respondent because:

1) Respondent, allegedly, must have known of Complainant's rights in its Marks when it registered the disputed domain name. Complainant establishes this allegation on following observations:

a) that Complainant had registered and used the Mark for over thirteen years at the time Respondent acquired the disputed domain name, which evidences Respondent's constructive knowledge of the Mark;

b) that Complainant has substantially used its Mark in its physical and online stores as well as the fact that Complainant and Respondent sell identical goods using Complainant's Mark, which both evidence Respondent's actual knowledge of the Mark;

c) that Respondent uses the Mark in an identical font; and

d) that Respondent deliberately provided false WhoIs information by using Complainant's contact information

2) Respondent is using the disputed domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion as to Complainant's sponsorship, affiliation, or endorsement of Respondent's website.

B. Respondent

Respondent did not reply to Complainant's contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, Complainant must prove that:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) 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.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is identical or confusingly similar to Complainant's Marks.

The fact that Complainant has over 120 physical retail locations throughout the U.S. and the website and online store which can be found at "www.fanzz.com" receives over 150,000 unique online visitors each month demonstrates that it has been continuously and extensively using the registered Marks in connection with its sports apparel and memorabilia retail business. Moreover, Complainant always uses the registered Marks in a stylized font featuring block letters with the lower part of the letters forming a curve when conducting such business. Such longstanding and widespread use is sufficient to establish that the name and Marks are possessed by Complainant and are identifiable with Complainant.

The disputed domain name incorporates Complainant's Mark in its entirety and differs from Complainant's Marks only by addition of the gTLD suffix ".com".

UDRP panels have consistently concluded that a domain name's inclusion of a registered mark in its entirety results in confusing similarity for purposes of paragraph 4(a)(i) of the Policy. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 ("[T]he fact that a Domain Name wholly incorporates a Complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such Marks"); Playboy Enterprises International, Inc. v. Sookwan Park, WIPO Case No. D2001-0778 (<playboysportsbook.com> was found confusingly similar to the PLAYBOY mark); and Adaptive Molecular Technologies, Inc. v. Piscilla Woodward & Charles R Thorton, d/b/a Machines & More, WIPO Case No. D2000-0006 (the distinctive feature of the domain name was Complainant's mark). Further, it has been decided in many UDRP cases under the Policy that "essential" or "virtual" identity is sufficient for the purposes of the Policy. The use of TLD should generally not be considered when comparing the Mark and the domain name. See The Stanley Works and Stanley Logistics, Inc v. Cam Creek. Co., Inc, WIPO Case No. D2000-0113 and Nokia Corporation v. Nokiagirls.com, WIPO Case No. D2000-0102. Similarly, here, the suffix ".com" is of no significance.

Given the foregoing, the Panel finds that the disputed domain name and Complainant's trademark, when directly compared, are identical or confusingly similar under the first element of the Policy.

B. Rights or Legitimate Interests

The Panel concludes that Respondent has no rights or legitimate interests in respect of the disputed domain name.

Although a complainant bears the ultimate burden of proof, UDRP panels recognize that strict compliance often requires the impossible task of proving a negative because such information is frequently within the sole possession of a respondent. See Altria Group, Inc. v. Steven Company, WIPO Case No. D2010-1762. Accordingly, Complainant need only make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. "Upon such a showing, the burden shifts to Respondent to demonstrate its rights or legitimate interests in the disputed domain names." Valero Energy Corporation and Valero Marketing and Supply Company v. Kim A Waugh, Kim Consult, WIPO Case No. D2014-1819.

In this case, the Panel finds that Complainant has made a prima facie showing that Respondent does not have rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(a) of the Policy.

This finding is based on the following, non-disputed, circumstances:

- Complainant has no relationship with Respondent and has never authorized Respondent to use the Mark in the disputed domain name.

- Respondent's use of the disputed domain name cannot constitute a bona fide offering of goods or services.

- There is no indication that Respondent has made a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to divert consumers or to tarnish the trademark.

Notably in the Complaint, Complainant demonstrates its Mark as a descriptor for the purpose of being as a trade name and trademark to identify its business and the source of its goods and services. Further reasons were provided that 1) FANZZ only shares the similarities with the dictionary term "fans", meaning "enthusiastic devotees or spectators"; 2) that the use of the letters "zz" rather than "s" creates a distinct sound which makes the Mark more distinctive. To the extent of the description of such Marks, however, aforesaid reasons are not agreed here with the Panel. In the Panel's view, as anything named "FAN" for sports related products is going to necessarily have some level of recognizable descriptor and contrary to Complainant, the term "Fanzz" does not sound different from "fans". Nevertheless, this factor does not affect the finding that Respondent does not have any rights or legitimate interests in the disputed domain name to the Marks and will be outweighed by other above-mentioned circumstances, including, as noticed above, Respondent's lack of authorization to use Complainant's Marks in a domain name.

Respondent did not reply to Complainant's contentions. Therefore the only plausible reason, in the view of the Panel, for Respondent to register the disputed domain name was to divert Internet users to Respondent's website by implying an affiliation with or sponsorship by Complainant or that Complainant approves of and sanctions Respondent's website. See Ticketmaster Corporation v. DiscoverNet, Inc., WIPO Case No. D2001-0252 (finding no rights or legitimate interests where respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant's site to a competing website); The Chip Merchant, Inc. v. Blue Star Electronics, d/b/a Memory World, WIPO Case No. D2000-0474 (finding that respondent's use of the disputed domain names is confusingly similar to complainant's mark, and respondent's use to sell competing goods was an illegitimate use and not a bona fide offering of goods). This is neither noncommercial nor fair use of the disputed domain name.

For the foregoing reasons, the Panel concludes that the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel concludes that the requirements of paragraph 4(a)(iii) of the Policy have been sufficiently made out by Complainant and that Respondent's bad faith registration and use of the disputed domain name have been proven.

Paragraph 4(b) of the Policy provides the following four (nonexclusive) circumstances which are deemed to provide evidence of bad faith in registering and using a disputed domain name:

(i) circumstances indicating that you [Respondent] have registered or you [Respondent] have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trade mark or service mark, or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you [Respondent] have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you [Respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with 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 your location.

The Panel finds that the circumstances set out in paragraph 4(b)(iv) are fulfilled here.

In the Panel's view, there is sufficient evidence that leads to the finding that Respondent acquired the disputed domain name primarily for the purpose of attracting, for commercial gain, Internet users to Respondent's website by creating a likelihood of confusion with Complainant's Mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website.

Respondent registered the disputed domain name on July 1, 2011, over thirteen years after Complainant began using the Mark and more than twelve years after the Mark was first registered at the USPTO. It is well-established by Complainant that Respondent had actual knowledge of Complainant's rights in its Marks when it registered the disputed domain name. The date of acquisition of the disputed domain name will be deemed as the first piece of evidence of Respondent's bad faith. Such acknowledge is further enhanced by the fact that Complainant has substantially used its Mark in its physical stores across the U.S. and online stores as well as the fact that Complainant and Respondent sell identical goods.

In addition, as aforementioned, Respondent merely changed graphic image of the Mark by deleting the design of a star and smaller letters "sports fan store"- the upper and lower part of Complainant's Mark, and used the remaining part- block letter "FANZZ" in an identical font. In the Panel's view, this could not be committed without prior knowledge of Complainant's Marks.

Furthermore, Respondent deliberately provided false WhoIs information by revising the contact information using Complainant's information.

Numerous incidents of actual consumer confusion as a result of Respondent's use of the confusingly similar disputed domain name are demonstrated by an array of online customer service chatting transcripts and emails in which a number of consumers were seeking for assistance. Consumers placed orders at the website linked to <fanzz.net> having belief that disputed domain name is affiliated with <fanzz.com>. Consumers never receive their orders until they contact Complainant but to find out about a high likelihood of facing monetary loss because of the confusion created by Respondent on the resource of products. As a result, Respondent has intentionally attracted Internet users for commercial gain by creating a likelihood of confusion as to Complainant's sponsorship, affiliation, or endorsement of Respondent's website.

The Panel finds that the third element of the Policy has been established.

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 disputed domain name <fanzz.net> be transferred to Complainant.

Maxim H. Waldbaum
Sole Panelist
Date: March 27, 2015