WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NSI International, Inc. v. Ololade Adeleke, Giant Bubble Ball
Case No. D2021-2492
1. The Parties
The Complainant is NSI International, Inc., United States of America (“United States”), represented by Kelley Drye & Warren, LLP, United States.
The Respondent is Ololade Adeleke, Giant Bubble Ball, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <wubblebubbleballz.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2021. On August 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 3, 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 August 9, 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 amended Complaint on August 9, 2021.
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 August 31, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 22, 2021.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on October 4, 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 a toy manufacturer, notably of giant bubbles meant to mimic certain properties of soap bubbles, that are marketed under the trademark WUBBLE, and whose commercialization has been heavily reported in the media, more particularly in the United States where the Complainant is seated.
The Complainant owns numerous trademarks on a worldwide basis, including in the European Union, United Kingdom, and China, consisting in whole or in part of the term “Wubble”, notably a United States Trademark No. 4’728’740 that was first used in commerce on May 31, 2014, filed on January 16, 2015 and registered in class 28 on April 28, 2015.
The Complainant commercializes several products under the brand “Wubble”, such as “Giant Wubble Ball, “Watter Wubble Bubble Ball” or the “Super Wubble Bubble Ball”. It further owns the domain name “www.wubblebubble.com”, under which it sells Wubble-branded goods, and features videos on its YouTube channel, which has enjoyed more than 22 million views since 2014.
On June 1, 2021, the Respondent registered the domain name <wubblebubbleballz.com>, with an address referred to in the WHOIS database as Giant Bubble Ball.
The website attached to the disputed domain name impersonates the Complainant’s website. It reproduces on several accounts the Complainant’s trademark, its logo and its Wubble-branded goods, and claims to sell original Wubble-branded goods. The website further reproduces content from the Complainant’s proprietary marketing and advertising materials, including screenshots from promotional videos featured on the Complainant’s YouTube channel.
The products sold by the Respondent appear to be counterfeit or otherwise unauthorized Wubble-branded products. On July 8, 2021, the Complainant received an inquiry from a consumer regarding the authenticity of the products sold through the disputed domain name. As a follow-up to this inquiry, the Complainant filed on July 14, 2021 a Digital Millennium Copyright Act (“DMCA”) takedown notice to Shopify, Inc., the Respondent’s e-commerce platform host, along with a cease and desist letter. Shopify then disabled access to the disputed domain name. It further sent a cease and desist letter to the Respondent as then identified on the WHOIS database on the same day.
5. Parties’ Contentions
The Complainant first asserts that the disputed domain is nearly identical and confusingly similar to its WUBBLE trademark. It entirely incorporates the trademark and the mere addition of the terms “Bubble” and “Ballz”, although descriptive, only exacerbates the resulting likelihood of confusion, considering the fact that Complainant’s primary line of products is branded under the terms “Wubble Bubble Balls”.
The Complainant then considers that the Respondent has no rights or legitimate interests in the disputed domain name. It is not commonly known under that name, and has never been authorized or licensed by the Complainant to use the WUBBLE trademark in any way. The replication of the Complainant’s website to sell counterfeit or unauthorized Wubble-branded products and purposefully confuse customers cannot be considered a bona fide offering of goods.
Finally, the Complainant affirms that the disputed domain name was registered and is being used in bad faith. Taking into account the above described use of the disputed domain name by the Respondent, there is no doubt that it was well aware of the Complainant’s trademark. Such use obviously amounts to a use in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant proves to hold several trademarks consisting in all or in part of the term WUBBLE
UDRP panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark for purpose of the Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358; and F. Hoffmann-La Roche AG v. Relish Entreprises, WIPO Case No. D2007-1629).
This is all the more true when the inserted trademark consists of the dominant part of the disputed domain name, and that the added elements, such as in the present case the terms “Bubble” and “Ballz”, which appear to be descriptive, do not avoid a finding of confusing similarity. To the contrary; as is relevant for the third Policy element, taking into account the fact that the Complainant’s most significant line of products are sold under the brand “Wubble Bubble Balls” and several variation of those terms, the capture of those terms by the Respondent in the disputed domain name would seem to create a likelihood of confusion, which in terms of the first element affirms confusing similarity.
As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied.
B. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
As the panel stated in Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, demonstrating that the Respondent has no rights or legitimate interests in the domain name “would require complainant to prove a negative, a difficult, if not impossible, task.” Thus, in that decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion.” Following that decision, subsequent UDRP panels acknowledged that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, the burden of production shifts to the respondent to come forward with evidence to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied to paragraph 4(a)(ii) of the Policy (see, e.g., section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
In the present case, the Complainant is the owner of several WUBBLE trademarks. The Complainant has no business or other relationships with the Respondent.
The Complainant thus has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name.
On its side, the Respondent has not answered to the Complaint.
Considering the absence of a Response and the fact that the Respondent is neither commonly known by the disputed domain name, nor has made a legitimate noncommercial or fair use of the disputed domain name, and has indeed replicated the Complainant’s website the Panel finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
Consequently, in light of the above, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled.
C. Registered and Used in Bad Faith
For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
Bad faith typically requires the Respondent to be aware of the Complainant’s trademarks. In the present case, there is no doubt that this was the case. The Respondent registered the domain name to resolve to a website which is a replication of the Complainant’s website meant to create a false association in users’ mind and lead them to purchase counterfeit or unauthorized WUBBLE branded goods.
As a result, there is no doubt that the disputed domain name was registered in bad faith. Several Panels have further ruled that the registration of a domain name and offer for sale of counterfeit branded merchandise without a complainant’s authorization amounts to a bad faith registration and use under paragraph 4(b)(iv) of the Policy (Karen Millen Fashions Limited v. Belle Kerry, WIPO Case No. D2012-0436; Richemont Int’l SA v. Admin Domain, Domain Admin, WIPO Case No. D2012-0032).
Consequently, the Panel is of the opinion that the disputed domain name <wubblebubbleballz.com> has been registered and is being used in bad faith under the 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 <wubblebubbleballz.com> be transferred to the Complainant.
Date: October 18, 2021