WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wildworks, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico
Case No. D2021-2313
1. The Parties
The Complainant is Wildworks, Inc., United States of America (“United States” or “U.S.”), represented by Hughes Media Law Group, PC, United States.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
2. The Domain Name and Registrar
The disputed domain name <animaljamclassic.com> 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 July 15, 2021. On July 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 19, 2021, 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 22, 2021, 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 amendment to the Complaint on July 27, 2021.
The Center verified that the Complaint together with the amendment to 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 August 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 22, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 25, 2021.
The Center appointed Kateryna Oliinyk as the sole panelist in this matter on September 13, 2021. 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 developer and publisher of the cross platform massively multiplayer online game Animal Jam Classic, formerly known as Animal Jam, recommended for kids up to the age of 12. The game was launched in 2010 and is currently distributed though the Complainant’s website under the domain name <animaljam.com>, which also resolves to the subsite “www.classic.animaljam.com”.
The Complainant holds the registered rights in the ANIMAL JAM trademark protected under following registrations:
- U.S. Registration No. 3,949,116 registered on April 19, 2011 for goods in International Class 9 and services in international classes 41 and 42;
- International Registration No. 1,234,335, registration date being June 13, 2014, covering goods in International Classes 9, 16, 25, and 28, and services in International Class 41 and designating Australia and the European Union;
- International Registration No. 1,257,667, registration date being January 19, 2015, covering goods in International Classes 09, 16, 18, 25, and 28, and services in International Class 41 and designating Canada, China, Colombia, Japan, Republic of Korea, Mexico, New Zealand, Philippines, Singapore, Turkey, Viet Nam.
The disputed domain name was created on May 4, 2020 and resolves to a parking page containing pay-per-click ads for third party goods or services.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to the ANIMAL JAM trademark in which it has rights as the ANIMAL JAM trademark is recognizable with the disputed domain name.
The Complainant further contends that Internet users are likely to be confused that there is a real connection between the disputed domain name and the ANIMAL JAM trademark because of the overall impression created by the disputed domain name and the ANIMAL JAM trademark which is used for multiplayer online games under the titles “Animal Jam” and “Animal Jam Classic”, which are provided through the Complainant’s website under the domain name <animaljam.com>.
The Complainant further contends that the Respondent lacks rights and legitimate interests in the disputed domain name because the Complainant has never granted the Respondent a license or other authorization to use its ANIMAL JAM trademark, nor has the Respondent any relationship with the Complainant or the multiplayer online game distributed under the ANIMAL JAM trademark that would entitle the Respondent to use the Complainant’s mark. Furthermore, to the best of the Complainant’s knowledge, the Respondent has not been commonly known by, or associated with, the disputed domain name.
According to the Complaint, the Respondent has no legitimate interest with respect to the disputed domain name and is not using the disputed domain name in connection with a bona fide offering of its own goods and services. The Complainant adds that the disputed domain name is used to divert Internet traffic to pay-per-click websites that display sponsored links to third party websites. The Complainant asserts that this would constitute prima facie evidence of no right or legitimate interest.
The Complainant contends that the Respondent registered the disputed domain name with the purpose of disrupting the business of the Complainant. The fact that the disputed domain name resolves to a website with pay-per-click ads would support this conclusion.
The Complainant also avers that the Respondent has sought intentionally to attract traffic for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Ownership of a nationally or regionally registered trademark serves as prima facie evidence that the Complainant has trademark rights for the purposes of standing to file this Complaint. See section 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Complainant submitted evidence that the ANIMAL JAM trademark has been registered in the United States and under the Madrid System for the International Registration of Marks, that is also supported by the public records. Thus, the Panel finds that the Complainant’s rights in the ANIMAL JAM trademark have been established pursuant to the first element of the Policy.
The disputed domain name consists of the whole of the Complainant’s registered trademark ANIMAL JAM combined with the element “classic” and generic Top-Level Domain (“gTLD”) “.com”.
The dominant part of the disputed domain name is the term “animaljam”. This term is identical to the ANIMAL JAM trademark registered by the Complainant. The Complainant’s trademark ANIMAL JAM is clearly recognizable within the disputed domain name. Once the gTLD is ignored as a standard registration requirement, as reflected in section 1.11.1 of the WIPO Overview 3.0, the addition of the element “classic” does not prevent a finding of confusing similarity of the disputed domain name with the Complainant’s trademark. As provided in section 1.8 of the WIPO Overview 3.0, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the trademark ANIMAL JAM in which the Complainant has rights.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will be deemed to have sustained its burden under the second element of the UDRP.
The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its ANIMAL JAM trademark. The evidence provided by the Complainant shows that the disputed domain name is used to resolve to a parking page with PPC links to third party websites.
Section 2.9 of the WIPO Overview 3.0 states that UDRP panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the Complainant’s mark or otherwise mislead Internet users.
Given the confusing similarity of the disputed domain name to the Complainant’s trademark and the absence of any relationship between the Respondent and the Complainant, such a use of the disputed domain name is neither a bona fide use nor a legitimate noncommercial or fair use of the disputed domain name.
Thus, the use of the disputed domain name by the Respondent does not constitute either bona fide use or a legitimate noncommercial or fair use of the disputed domain name, as it is clearly used to take advantage of the Complainant’s audience.
The Panel establishes that there are no evidences or statements of fact in the case which might evidence that the Respondent has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it, for any other reason, has rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
Insofar as the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests to the disputed domain name (Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261), this shifts the burden of production to the Respondent to show evidence that it has rights or legitimate interests in the disputed domain name. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. The Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the disputed domain name.
In view of the absence of any evidence supporting any rights or legitimate interests in the disputed domain name, the Respondent’s attempts to confuse Internet users and trade off the goodwill of the ANIMAL JAM trademark, the Panel therefore holds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] website or location”.
Based on the Complainant’s contentions, the Panel established that the ANIMAL JAM trademark has been used in commerce as the name for the cross platform multiplayer online game since 2010, and that the Panel is satisfied with the Complainant’s evidence of registered trademark rights in various jurisdictions that predate registration of the disputed domain name. By registering a domain name that incorporates the Complainant’s ANIMAL JAM trademark in its entirety, adding the term “classic” which is used in the current title of the Complainant’s multiplayer online game, the Respondent has created a domain name that is confusingly similar to the Complainant’s trademark and has demonstrated a knowledge of and familiarity with Complainant’s brand and business.
On balance of the facts set forth above, it is more likely than not that the Respondent knew of and targeted Complainant’s trademark at the time of registration of the disputed domain name.
Previous UDRP panels have found bad faith based upon the inclusion of the Complainant’s entire mark in a disputed domain name. See, e.g., Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028 (registration of <cellularonechina.com> constituted bad faith use because the domain name included Complainant’s entire CELLULAR ONE mark; “it is not possible to conceive of a plausible circumstance in which Respondent could legitimately use the domain name”).
Respectively, the Panel finds that the Respondent’s website clearly misappropriates the Complainant’s trademark to attract, for commercial gain, the Internet users to the website under the disputed domain name and to divert, through confusion, Internet users away from the Complainant’s official website.
For the sake of completeness, the Panel should add that the fact that links on the website to which the disputed domain name resolves might be automatically generated does not prevent a finding of bad faith under the Policy (section 3.5 of the WIPO Overview 3.0).
The Panel finds that the Respondent registered and used the disputed domain name in bad faith in accordance with paragraph (4)(a)(iii) of the Policy.
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 <animaljamclassic.com> be transferred to the Complainant.
Date: September 27, 2021