WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Jazz Basketball Investors, Inc. v. Whoisguard, Inc. / Didi Dimtroff

Case No. D2018-1614

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, Inc. of Panama / Didi Dimtroff of Renton, NewMexi, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <officialjazzproauthentic.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2018. On July 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 20, 2018, 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 July 23, 2018, 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 July 26, 2018.

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 July 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 19, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 20, 2018.

The Center appointed Luca Barbero as the sole panelist in this matter on August 28, 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 the owner of word and figurative trademark registrations for UTAH JAZZ, which have been registered and used in the United States since 1979 in connection with the Complainant’s National Basketball Association (“NBA”) franchise, the Utah Jazz, including the marketing and sale of merchandised apparel and memorabilia for the Utah Jazz.

Amongst others, the Complainant owns the following United States trademark registrations:

- No. 3084689 for UTAH JAZZ (word mark), registered on April 25, 2006, claiming first use in commerce in November 1979, in International class 25;

- No. 1654958 for UTAH JAZZ (figurative), registered on August 27, 1991, claiming first use in commerce in November 1979, in International class 25;

- No. 1244827 for UTAH JAZZ (figurative), registered on July 5, 1983, claiming first use in commerce in May 1979, in International class 41;

- No. 2131053 for UTAH JAZZ (figurative), registered on January 20, 1998, claiming first use in commerce on June 04, 1996, in International class 25.

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 disputed domain name <officialjazzproauthentic.com> was registered on September 12, 2016 and has been pointed to a website claiming to be “The OFFICIAL Store Of The Utah Jazz” and offering for sale purported UTAH JAZZ clothing and accessories.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to its trademarks as it wholly incorporates the word “jazz” with the addition of the term “pro”, which refers to “a professional”, especially in sports, and the descriptive terms “official” and “authentic”, which are not sufficient to distinguish the disputed domain name from the trademarks. The Complainant also highlights that using the word “jazz” in combination with “pro” is clearly a reference to the Utah Jazz basketball team because the Utah Jazz is a world famous “pro” basketball team in the NBA and there is no other “pro” sports team other than the Utah Jazz using the “jazz” name.

The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain name because: i) the Complainant has no relationship with the Respondent and has never authorized the Respondent to use the disputed domain name; ii) the Respondent has not been commonly known by “Official Jazz Pro Authentic” or any derivation thereof and does not own has any trademark rights in the trademarks or the word “jazz” in connection with the Complainant’s goods and services; iii) the dictionary meaning of the word “jazz” – a musical genre emerging around the beginning of the 20th century – has no relation with any of the Complainant’s goods and services; iv) the Respondent’s use of the disputed domain name to offer for sale identical goods and services to those offered by the Complainant, including apparel, sports memorabilia and jerseys, does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use, since the Respondent is trading off the fame associated with its trademarks.

The Complainant asserts that the Respondent registered and is using the disputed domain name in bad faith because: i) the Respondent had constructive knowledge of the the Complainant’s trademark registrations; ii) the Respondent had actual knowledge of Complainant’s rights, having used the disputed domain name for a website displaying the Complainant’s trademarks, selling goods identical to the ones of the Complainant, claiming to be “The OFFICIAL Store Of The Utah Jazz” and making reference to past and present Utah Jazz NBA players; iii) the Respondent appears to be using the disputed domain name to offer for sale counterfeit goods; and iv) the Respondent is using the Complainant’s trademarks 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 its website, which constitutes bad faith use under paragraph 4(b)(iv) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established rights in the trademark UTAH JAZZ based on the trademark registrations cited under Section 4 above.

The disputed domain name incorporates the Complainant’s JAZZ unregistered mark and the dominant element (“jazz”) of its registered trademarks and 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 terms “official”, “pro”, and “authentic”.

As stated in Section 1.8 of the WIPO Overview 3.0, where a relevant trademark 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, along these lines, Jazz Basketball Investors, Inc. v. hai bo deng, deng hai bo, WIPO Case No. D2018-0117.

The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s registered trademarks and to the unregistered JAZZ and THE JAZZ marks.

B. Rights or Legitimate Interests

The Panel finds that the Complainant has made a prima facie case and that the Respondent, by not having submitted a Response, has failed to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy for the following reasons.

According to the evidence on record, there is no relationship between the Complainant and the Respondent and the Complainant has not authorized the Respondent to register or use its trademarks or the disputed domain name.

In addition, there is no evidence that the Respondent has been commonly known by the disputed domain name or have acquired rights in respect of the disputed domain name.

As mentioned above, the disputed domain name is pointed to a website offering for sale purported (possibly counterfeit) UTAH JAZZ products, publishing the Complainant’s trademarks and claiming to be an official store of the Utah Jazz. The Panel finds that such use does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademarks.

Therefore, the Panel finds that the Complainant has proven the requirement prescribed by paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

In light of the prior registration and use of the Complainant’s trademarks in connection with the marketing and sale of merchandised apparel and memorabilia for the Utah Jazz since 1979, the Panel finds that the Respondent was or should have been aware of the Complainant’s trademarks at the time of registration of the disputed domain name.

The Panel also finds that, in view of the use of the disputed domain name made by the Respondent as described above, the Respondent was indeed actually aware of the Complainant’s trademarks and, through the registration and use of the disputed domain name, intentionally attempted to attract users to its website for commercial gain, by causing a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of its website according to paragraph 4(b)(iv) of the Policy.

As an additional circumstance evidencing the Respondent’s bad faith, the disputed domain name has been pointed to a website offering for sale prima facie counterfeit UTAH JAZZ products.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith.

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 <officialjazzproauthentic.com> be transferred to the Complainant.

Luca Barbero
Sole Panelist
Date: September 12, 2018