WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jazz Basketball Investors, Inc. v. Whoisguard Protected, Whoisguard, Inc. / Big Shen, Joan Bristol
Case No. D2017-0031
1. The Parties
The Complainant is Jazz Basketball Investors, Inc. of Salt Lake City, Utah, United States of America ("United States"), represented by Stoel Rives, LLP, United States.
The Respondent is Whoisguard Protected, Whoisguard, Inc. of Panama City, Panama / Big Shen, Joan Bristol of Frenchtown, United Kingdom of Great Britain and Northern Ireland ("United Kingdom").
2. The Domain Name and Registrar
The disputed domain name <jazzbasketballteamshop.com> is registered with eNom, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 9, 2017. On January 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 11, 2017, 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 17, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 23, 2017.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 30, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 19, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 20, 2017.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on February 23, 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 disputed domain name was registered on July 29, 2016.
The Complainant is the holder of the franchise for the Utah Jazz team in the United States National Basketball Association (NBA). The Complainant is the owner of United States trade mark registration No. 3084689 for UTAH JAZZ, registered on April 25, 2006 and further registered figurative UTAH JAZZ marks with the "Jazz Note" logo, the earliest of which, No. 1244827, was filed on February 25, 1982, claims use dating from July 1974, and registered on July 5, 1983.
The Complainant is the owner of the domain name <utahjazzstore.com> at which it operates an online store offering goods and services such as clothing, sporting equipment and memorabilia under its UTAH JAZZ trade mark. The Complainant also operates a physical retail store offering such goods and services and provides them also through authorised distributors at various locations across the United States.
Archived screenshots provided by the Complainant of its website at "www.utahjazzstore.com" prominently feature the Complainant's UTAH JAZZ trade mark and illustrate apparel and sporting equipment bearing those marks. The first page of those extracts includes a banner stating "UTAHJAZZSTORE.COM: Your Source of Utah Jazz Apparel" and "The Official Store of the Utah Jazz Authentic Utah Jazz Jerseys, Hats, Apparel and more".
Nothing is known of the personally named Respondents. The details provided by the Registrar on January 11, 2017 to the Center appear to be fictitious. Correspondence addressed to the physical addresses given could not be delivered, although the correspondence directed to the email address in the WhoIs record apparently was delivered.
The website at the disputed domain name offers a wide range of sporting apparel prominently branded with the complainants UTAH JAZZ trade mark. It invites users to "shop the Jazz outlet". At the head of the landing page of the website there appear the words "Utah Jazz Jersey Apparel Official NBA Jazz Gear Store Merchandise". Below that is a banner featuring the Complainant's "Jazz Note" logo and the words "Official Online Store of the Boston Celtics". Boston Celtics is the name of a team in the NBA competition. Below that a further banner features the words "Utah Jazz Apparel and Utah Jazz Gear at the official Utah Jazz Store". The merchandise offered at the site prominently features the complainant's UTAH JAZZ trade mark and the "Jazz Note" logo and purports to offer merchandise at substantially discounted prices. Save for the reference to "Boston Celtics", the website closely resembles the look and feel of the Complainant's website.
5. Parties' Contentions
The Complainant's submissions may be summarized as follows:
(1) The disputed domain name is confusingly similar to the Complainant's UTAH JAZZ trade mark. It wholly incorporates the word "jazz" with the addition of the merely descriptive words "basketball team shop" and these words do not diminish, but rather add to, the risk of confusion between the disputed domain name and the Complainant's trade mark.
(2) The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has no relationship with the Respondent and has never authorized the Respondent to use the disputed domain name.
(3) The Respondent's use of the disputed domain name is in respect of counterfeit goods, not bona fide goods, nor is it a legitimate non-commercial or fair use.
(4) The word "jazz" is completely arbitrary and distinctive of the Complainant's goods and services.
(5) There is no evidence that the Respondent is commonly known by the disputed domain name.
(6) The disputed domain name was registered and is being used in bad faith. The Respondent registered it only in July, 2016 over 30 years after the Complainant started to use its now famous UTAH JAZZ trade mark.
(7) The Respondent is using the disputed domain name to offer counterfeit goods using numerous references to the UTAH JAZZ trade mark.
(8) The Respondent's use of images of members of the Utah Jazz basketball team and the Complainant's UTAH JAZZ trade mark indicates that the Respondent had actual knowledge of the Complainant and its trade mark rights at the time of registration of the disputed domain name.
(9) The Respondent is using the disputed domain name to attract users to its website for the purpose of realizing commercial gain based on consumer confusion as to the Complainant's sponsorship, affiliation or endorsement of the website.
(10) The reference at the website to "Boston Celtics" appears to be a clerical error and indicates that the Respondent copied the trade marks of other famous NBA teams.
(11) On January 4, 2017 the Complainant sent a cease-and-desist letter to the Respondent but received no reply.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Respondent has provided evidence of its long established registration and use of its UTAH JAZZ trade mark. The words "jazz" and Utah are the dominant features and distinguishing elements of that trade mark. The disputed domain name wholly incorporates the word "jazz". It is the first and distinguishing element of the disputed domain name. The added descriptive words "basketball team shop" serve to increase the likelihood that consumers would associate the disputed domain name with the famous basketball team and compound the confusion thereby created (See Supercell Oy v. WhoisProxy.com Ltd / Jordan Rash, Application Automation LLC, WIPO Case No. D2015-1445).
The Panel therefore finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant asserts that it has not licensed or authorized the Respondent to use its trade marks and further that the use which is being made of the disputed domain name is in respect of counterfeit goods. The Respondent has not sought to refer to those assertions. The Complainant has made out a strong prima face showing that the Respondent has no rights or legitimate interests in the disputed domain name. The onus therefore falls on the Respondent to rebut the Complainant's claims (see WIPO Overview of WIPO Panel Decision on Selected UDRP Questions, Second Edition, ("WIPO Overview 2.0") paragraph 2.1).
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The word string of which the disputed domain name is composed is clearly designed to suggest, and does suggest, that the online location to which the disputed domain name directs is the online shop or e-store location of the Utah Jazz basketball team but there is the uncontradicted assertion by the Complainant that the Respondent has no connection or association with the Complainant. There could hardly be more cogent evidence of registration in bad faith. Added to that are the collateral facts that the registration sits behind a privacy shield and the contact details of the personally named Respondents are apparently fictitious.
The Panel therefore finds that the disputed domain name was registered in bad faith.
The bad faith intention behind the bad faith registration has been put to affect in what, on the uncontroverted evidence of the Complainant, is an intentional and fraudulent attempt to promote the sale of counterfeit goods for commercial gain by causing confusion as to the source or affiliation of the website. Such conduct falls squarely within the scope of paragraph 4(b)(iv) of the Policy.
The Panel therefore finds that the disputed domain name has been registered and is being used 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 <jazzbasketballteamshop.com> be transferred to the Complainant.
Desmond J. Ryan AM
Date: March 8, 2017