ADMINISTRATIVE PANEL DECISION
Jazz Basketball Investors, Inc. v. hai bo deng, deng hai bo
Case No. D2018-0117
1. The Parties
The Complainant is Jazz Basketball Investors, Inc. of Salt Lake City, Utah, United States of America (“USA” “United States”), represented by Stoel Rives, LLP, USA.
The Respondent is hai bo deng, deng hai bo of Changsha, Hunan, China.
2. The Domain Name and Registrar
The disputed domain name <jazzteamstore.com> is registered with Bizcn.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2018. On January 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 24, 2018, 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. On January 25, 2018, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on the same day. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in English and Chinese of the Complaint, and the proceedings commenced on February 1, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 21, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 23, 2018.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on March 6, 2018. 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 company incorporated in the State of Utah in the United States, and is the owner of numerous registrations in the United States for trade marks comprising the words “Utah jazz” and device (the “Trade Marks”), including registration No. 1,244,827, with a registration date of July 5, 1983; and registration No. 2,131,053, with a registration date of January 20, 1998.
The Complainant has been using the Trade Marks continuously since 1979 in connection with the Complainant’s National Basketball Association franchise, the Utah Jazz, including the marketing and sale of merchandised apparel and memorabilia for the Utah Jazz.
The Complainant has also been using for many years the unregistered marks JAZZ and THE JAZZ in connection with the Utah Jazz and in relation to merchandising for the Utah Jazz, including on the Complainant’s website, “www.utahjazzstore.com”.
The Respondent is apparently a resident of China.
C. The Disputed Domain Name
The disputed domain name was registered on July 9, 2016.
D. Use of the Disputed Domain Name
The disputed domain name is resolved to an English language website which (i) offers for sale discounted or counterfeit apparel under the Trade Marks; and (ii) claims to be an officially licensed Utah Jazz website (the “Website”).
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to the Trade Marks, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name has been registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement.
Paragraph 11(a) of the Rules allows the panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Complainant has requested that the language of the proceeding be English for several reasons, including the fact the Website is an English language website.
The Respondent, having received notice of the proceeding in both Chinese and English, did not make any submissions regarding the language of the proceeding and did not file a response.
The Panel considers that the English language Website indicates that the Respondent is conversant in English. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.
6.2. Substantive Elements of the Policy
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Marks acquired through use and registration.
The Panel also finds that the Complainant has unregistered (or common law) rights in the marks JAZZ and THE JAZZ acquired through use.
The disputed domain name incorporates (1) the entirety of the Complainant’s JAZZ unregistered mark; and (ii) dominant features of the Trade Marks and of the Complainant’s THE JAZZ unregistered mark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7) together with the non-distinctive words “team” and “store”.
Where a relevant trade mark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element (see WIPO Overview 3.0, section 1.8).
The Panel therefore finds that the disputed domain name is confusingly similar to the Trade Marks and to the unregistered JAZZ and THE JAZZ marks.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(i) Before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the respondent has acquired no trade mark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant has not authorized, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Marks or the Complainant’s unregistered marks. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden of production is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name has been used in respect of the Website, which offers for sale discounted or counterfeit clothing under the Trade Marks; contains the Complainant’s Trade Marks, without authorization; contains a website footer “© 2018 Utah Jazz Store, All Rights Reserved.”; and claims, falsely, to be an “official Jazz Store” and a seller of “officially licensed Utah Jazz Fan Gear”.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
In all the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
In light of the manner of use by the Respondent of the Website described above, the Panel finds the requisite element of bad faith has been satisfied under paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, the Panel 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 <jazzteamstore.com> be transferred to the Complainant.
Sebastian M.W. Hughes
Dated: March 15, 2018