WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ubisoft Entertainment v. Domain Vault, Domain Vault LLC
Case No. D2016-1836
1. The Parties
The Complainant is Ubisoft Entertainment of Rennes, France, represented internally.
The Respondent is Domain Vault, Domain Vault LLC of Dallas, Texas, United States of America (“US” or “United States”).
2. The Domain Name and Registrar
The disputed domain name <justdance.com> (the “Disputed Domain Name”) is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2016. On September 20, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 21, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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 September 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 12, 2016. The Center received an email communication from a law firm, Law.es, stating it acted for the Respondent on September 22, 2016. That firm was provided by the Center with a copy of the Complaint. No further correspondence was received either from that firm or the Respondent.
The Center appointed Nick J. Gardner as the sole panelist in this matter on October 20, 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.
4. Factual Background
The Complainant is a French company. It is a producer, publisher and distributor of interactive entertainment products worldwide. It has offices in 26 countries and has sales in more than 55 countries around the globe.
On June 29, 2009, the Complainant applied for trademark registration for JUST DANCE in connection with video game products and services in Europe and the United States and obtained the registration of these marks respectively on January 12, 2010 (European Union trade mark registration number 008393373) and on May 25, 2010 (US registration number 3794829) (hereinafter the “JUST DANCE Trademark”). In 2009, the Complainant launched a dance video game called “Just Dance” and has since that date sold over fifty million copies of this game. The filed evidence establishes it is extremely popular.
The Disputed Domain Name was originally registered on July 27, 2003. Prior to the filing date of the JUST DANCE Trademark , the Disputed Domain Name was owned by a company called Oakwood Services Inc. The Complainant contacted this owner by email on February 25, 2010. At some stage after the filing date of the JUST DANCE Mark the Disputed Domain Name was transferred to Whois Privacy Services Pty Ltd Domain Hostmaster, Customer ID: 58391677222856. This company owned the Disputed Domain Name until July 27, 2011. From July 27, 2011 until July 29, 2014, the Disputed Domain Name was owned by Quantec, LLC/Novo Point, LLC.
On October 30, 2012, the Complainant filed UDRP proceedings against Quantec, LLC/Novo Point, LLC seeking a transfer of the Disputed Domain Name. On November 11, 2012, before those proceedings were concluded the Complainant received a “Notice of Receivership” letter from an individual purporting to represent the registrant of the Disputed Domain Name. The individual claimed that control of the Disputed Domain Name had been transferred to a court-appointed receiver, that the receiver was required to preserve the value of receivership assets, and that a court-ordered stay prevented any suit involving receivership assets. As a result of this correspondence, the UDRP complaint was dismissed without prejudice on December 16, 20121 .
The Disputed Domain Name, together with several other domain names, were transferred to the Respondent on July 29, 2014. On March 23, 2016, the Complainant contacted the owner of the Disputed Domain Name by email in order to request a transfer of the Disputed Domain Name. The Complainant did not receive any answer to this communication.
The website to which the Disputed Domain Name resolves displays pay-per-click links. Some of these are related to the Complainant’s products and services.
5. Parties’ Contentions
The Complainant’s case can be summarised as follows.
a) The Disputed Domain Name is identical or confusingly similar to the JUST DANCE Trademark .
b) The Respondent does not have any rights or legitimate interests in the Disputed Domain Name.
c) The Respondent uses the Disputed Domain Name in bad faith as the website to which the Disputed Domain Name resolves, make use of the Complainant’s JUST DANCE Trademark in order to raise advertising revenue through the use of sponsored or click-through links.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Preliminary Matters
The Panel notes that apart from a single email from a law firm saying it represented the Respondent no communication has been received from the Respondent. Assuming that law firm does represent the Respondent no information has been provided to the Panel to explain why it took no further steps on the Respondent’s behalf in these proceedings. In any event the Panel is satisfied that the Complaint and Written Notice were sent to the relevant addresses for the Respondent as disclosed by the Registrar, and the Panel adopts the approach set out in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) namely, “once the WIPO Center has notified the complaint to the WhoIs-listed contact information (especially where confirmed by the registrar) for the domain name registrant, this would normally satisfy the requirement in paragraph 2(a) of the UDRP Rules to employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
6.2 Substantive Matters
Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements:
i. the Disputed Domain Name is identical to or confusingly similar to a trademark or service mark in which the Complainant has rights;
ii. the Respondent has no rights or legitimate interests in the Disputed Domain Name;
iii. the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has submitted evidence that it is the owner of the JUST DANCE Trademark (see section 4, above).
The Panel holds that the Disputed Domain Name is identical to the above trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled. For these purposes the Panel regards the omission of a space between the words “just” and “dance” as an immaterial variation, particularly given the fact that spaces are not permissible for technical reasons within domain name strings. It is also well established that the specific Top-Level Domain (in this case “.com”) does not affect the domain name for the purpose of determining whether it is identical or confusingly similar – see, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 .
Accordingly the Panel finds that the Disputed Domain Name is identical or confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that demonstrate a right or legitimate interest in a 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 organisation) 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.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the JUST DANCE Trademark. The Complainant has prior rights in the JUST DANCE Trademark which precede the Respondent’s registration of the Disputed Domain Name. There is no indication in the file that Respondent is known by the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish any rights or legitimate interests in the Disputed Domain Name. Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
In the present case the Disputed Domain Name comprises two ordinary English words “just” and “dance” linked together. It is clearly possible that such a domain name could be independently derived by a registrant without any knowledge of the Complainant or its JUST DANCE Trademark. Such was clearly the case when the Disputed Domain Name was originally first registered in 2003, as this was long before the Complainant developed its Just Dance product or registered the JUST DANCE Trademark. But the relevant question here is what was the position on July 29, 20142 , when the Disputed Domain Name was acquired by the Respondent? This is because where there has been a change of ownership the relevant date for assessing whether the registration was in bad faith is the date at which the Respondent acquired the Disputed Domain Name. See the WIPO Overview 2.0 as follows:
“3.7 Does the renewal of the registration of a domain name amount to a registration for the purposes of determining whether the domain name was registered in bad faith?
While the transfer of a domain name to a third party does amount to a new registration, a mere renewal of a domain name has not generally been treated as a new registration for the purpose of assessing bad faith. Registration in bad faith must normally occur at the time the current registrant took possession of the domain name.”
The Panel does not know what, if any, case the Respondent might have as to its knowledge at the date it acquired the Disputed Domain Name, as it has not filed a Response. The Panel is satisfied that as at that date the Complainant’s JUST DANCE Trademark was well-known and even cursory enquiries, in the form of basic Internet searching, would have alerted the Respondent to the Complainant’s Just Dance product and the likelihood the Complainant had prior rights in the term “justdance”. Furthermore whilst the Panel does not know the circumstances that applied to the Respondent’s acquisition of the Disputed Domain Name, it would appear it obtained the Disputed Domain Name subsequent to the court-appointed receivership process which had resulted in previous UDRP proceedings being terminated without prejudice (see section 4, above). The Panel thinks it likely that basic enquiries the Respondent would have made at that time would have led to it becoming aware of the previous UDRP proceedings and hence the Complainant’s claim to rights in the JUST DANCE Trademark.
Overall the Panel is satisfied that these matters raise at least a rebuttable presumption that the Respondent, when it acquired the Disputed Domain Name, had knowledge of the Complainant and/or its rights in the JUST DANCE Trademark and acquired the Disputed Domain Name with such knowledge. Given that the Respondent has chosen not to file a Response, despite apparently obtaining legal representation, this is sufficient for the Panel to conclude that the Respondent has not rebutted this presumption.
The website operated by the Respondent at the Disputed Domain Name comprises a series of “click-through” links to other third-party websites. A number of the links concerned relate to the Complainant’s products and services. It no doubt attracts visitors who are seeking a website related to the Complainant’s Just Dance product. The Respondent presumably earns “click-through” linking revenue as a result. The Panel infers the Respondent’s website is automatically generated. This does not, however, matter. It is well established that where a domain name is used to generate revenue in respect of “click-through” traffic, and that traffic has been attracted because of the name’s association with the complainant, such use amounts to use in bad faith, see for example Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315; Owens Corning v. NA, WIPO Case No. D2007-1143; McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353; Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912; Rolex Watch U.S.A., Inc. v. Vadim Krivitsky, WIPO Case No. D2008-0396.
As a result, and applying the principles in the above-noted UDRP decisions, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
For all 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 <justdance.com> be transferred to the Complainant.
Nick J. Gardner
Date: November 3, 2016
1 The Complainant submitted as Annex 9 to the Complaint the Procedural Order No. 1 issued by the panel in Ubisoft Entertainment v. Protected Domain Services - Customer ID: NCR- 4150849/ Quantec, LLC/Novo Point, LLC, WIPO Case No. D2012-2150.
2 So far as the Respondent is concerned the Registrar was not able to confirm to the Center when the Respondent acquired the Disputed Domain Name. However, the evidence filed by the Complainant which has not been disputed shows the Respondent as having become the registrant of the Disputed Domain Name on July 29, 2014.