Utah Jazz Retail, Inc. v. Herron Matthew
Claim Number: FA1502001603844
Complainant is Utah Jazz Retail, Inc. (“Complainant”), represented by Joshua G. Gigger of Stoel Rives LLP, Utah, USA. Respondent is Herron Matthew (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fanzzjerseys.us>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 6, 2015; the Forum received payment on February 6, 2015.
On Feb 9, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <fanzzjerseys.us> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with .usTLD Domain Name Dispute Resolution Policy (the “Policy”).
On February 11, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 3, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@fanzzjerseys.us. Also on February 11, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 11, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for .usTLD Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complaint alleges that it has rights in and to the trademark FANZZ (the “Mark”). Through continuous and extensive use since at least as early as 1997, Complainant has established rights in the Mark around the world. The Mark has been registered in the United States since November 1998 for use with a “retail store featuring apparel and sports memorabilia” (U.S. Reg. Nos. 2,205,733 and 2,205,734). In October 2011, Complainant also applied to register the mark F FANZZ SPORTS FAN STORE and Design for use with “retail store featuring apparel and sports memorabilia” (U.S. Ser. No. 85/438,146). A copy of the records from the United States Patent and Trademark Office’s (USPTO) Trademark Status and Document Retrieval system for Complainant’s registrations and application are attached to the Complaint as Exhibit A.
Complainant apparently uses the Mark in connection with both its physical and online retail stores where Complainant sells apparel and sports memorabilia, including, without limitation, jerseys. See Exhibits B and C. Complainant has over 120 physical retail locations throughout the U.S. See Exhibit B. Complainant’s website and online store is found at <fanzz.com>, which has been in use for many years prior to Respondent’s registration of the <fanzzjerseys.us> domain name (the “Domain Name”), See Exhibit D, and currently receives approximately 150,000 unique online visitors each month. A copy of the WHOIS record for the Domain Name is attached to this Complaint as Exhibit J.
Complainant asserts that the disputed domain name registered by Respondent is confusingly similar to the Mark. The sight, sound, and meaning of the Mark and the Domain Name are nearly identical. The only difference between the disputed domain name and the Mark is the additional word “jerseys” in the Domain Name. As illustrated in Exhibits C and F, however, the term “jerseys” is a generic term for the goods sold by Complainant and Respondent and, therefore, is descriptive of Complainant’s and Respondent’s retail services. As a result, the additional word “jerseys” does not distinguish the disputed domain name from the Mark.
As further evidence that the Domain Name is confusingly similar to the Mark, Complainant has provided examples of the numerous incidents of actual consumer confusion that have resulted from Respondent’s use of the Domain Name to offer goods and services that are identical to those that are offered by Complainant. See Exhibits G, H and I. These examples illustrate how consumers purchased jerseys from Respondent, incorrectly believing that Complainant sponsored, endorsed or was connected with the Domain Name.
Complainant has attempted to amicably resolve this matter by sending a demand letter to Respondent on January 7, 2015, but that letter was apparently returned because Respondent provided the Registrar with false contact information. See Exhibits M and N, a copy of the letter sent to Respondent and a copy of the letter returned as undeliverable.
Complainant contends that the disputed domain name is nearly identical to Complainant’s trademark. The disputed domain name consists of the Complainant’s trademark plus the generic word “jerseys” and a gTLD.
The Complainant further alleges that the Respondent has no rights or legitimate interests in or to the disputed domain name. The Complainant alleges that it coined the trademark FANZZ and that this evidences the Respondents lack of rights or legitimate interests in or to the domain name. Further, Complainant alleges that the Respondent is not commonly known by this appellation.
Finally, Complainant alleges that the Respondent has bad faith in its use and registration of the disputed domain name. According to the Complainant, the Respondent is using the Domain Name to incorporate the Mark and intentionally attract Internet users for commercial gain by creating a likelihood of confusion as to the source of the website or the goods and services offered therein, and as to Complainant’s authorization, licensure or sponsorship thereof. For example, Complainant has experienced numerous incidents of actual consumer confusion as a result of Respondent’s use of the confusingly similar Domain Name to offer identical goods and services to those offered by Complainant. See Exhibit G, H and I.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered the disputed domain name on December 5, 2014.
As the Respondent failed to file a Response to this matter, the Complainant’s allegations will be considered true unless clearly unreasonable. As Complainant’s contentions are clearly reasonable, they will be deemed as true. As such, the Panel finds that the Respondent’s domain name is confusingly similar to Complainant’s trademark, that Respondent has no rights or legitimate interests in or to the disputed domain name and has engaged in bad faith use and registration of the disputed domain name.
Paragraph 15(a) of the Rules instructs this Panel to "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 requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Respondent’s disputed domain name is clearly confusingly similar to Complainant’s trademark. The only difference between the disputed domain name and Complainant’s trademark is the additional word “jerseys” in the disputed domain name. As illustrated in Exhibits C and F, however, the term “jerseys” is a generic term for the goods sold by Complainant and Respondent and, therefore, is descriptive of Complainant’s and Respondent’s retail services. As a result, the additional word “jerseys” does not distinguish the Domain Name from the Mark. Complainant is right to rely on the following cases for this proposition: CliC Goggles, Inc. v. Ernesto Duarte, FA1327834 (Nat. Arb. Forum July 13, 2010) (finding “that adding a word such as ‘glasses’ that is descriptive of [c]omplainant’s business . . . fails to differentiate the disputed domain name and [c]omplainant’s mark”). In addition, the use of the .us top level domain (“TLD”) does not distinguish the Domain Name from the Mark and should not be considered when comparing the Mark and the Domain Name. Ankama v. Fuzhou Tianmen Touzi Zhixun Co., Ltd, FA1330291 (Nat. Arb. Forum July 16, 2010) (“The addition of a ccTLD does not distinguish a domain name from a mark.”) (citing Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark).
As such, Respondent’s disputed domain name is confusingly similar to Complainant’s trademark.
In addition, Respondent has no rights or legitimate interests in or to the disputed domain name. The fact that the term FANZZ was coined by Complainant is evidence that Respondent has no rights or legitimate interests in the disputed domain name. See Mead Johnson & Company, LLC v. Kanter Associates SA, FA1417920 (Nat. Arb. Forum January 12, 2012) (finding that because complainant’s mark was an invented word that has no meaning other than to serve as a source identifier” for the complainant and its goods and services, the respondent had no rights or legitimate interest in a domain name that incorporated the mark); Petroleo Brasileiro S.A - Petrobras v. Monica Mitchell, WIPO Case No. D2014-1675 (finding that a registrant is not able to demonstrate rights or legitimate interest when the domain name “consists of a coined or invented term”). As found in a 2009 WIPO Panel decision, a claim of legitimate interest “cannot be made when a respondent uses a disputed domain name confusingly similar to an invented mark in which a complainant has rights. . . . [t]o do otherwise would allow respondents to trade off the goodwill of trademark owners with impunity.” Further, the Respondent has not applied to register the term FANZZ as a trademark in the United States or other countries in which Respondent apparently resided. See Exhibit K, a printout of a search conducted on the USPTO’s database. The record is devoid of any evidence that indicates the Respondent owns any trademarks or service marks that are reflected in the disputed domain name and there is no reasonable basis to conclude that Respondent has any trademark rights in the term FANZZ. As this assertion is clearly not unreasonable, it will be deemed as true.
In addition, Respondent’s use of the Domain Name to sell jerseys is not evidence of Respondent’s rights or legitimate interests in the Domain Name. “[G]ood faith is a key issue in determining whether use is bona fide under the [P]olicy.” Emmanuel Vincent Seal trading as Complete Sports Betting v. Ron Basset, WIPO Case No. D2002-1058 (citing Ciccone v. Parisi, WIPO Case No. D2000-0847) (“We . . . conclude that use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.”); see also RueLaLa, Inc. v. WebRelate, LLC, FA1430797 (Nat. Arb. Forum March 28, 2012) (finding that, despite using the domain name for legitimate sales, the respondent had no legitimate interest based on use of a confusingly similar mark to sell related products). Respondent’s registration of the disputed domain name, approximately seventeen years after Complainant began using the Mark and more than sixteen years after the Mark was first registered at the USPTO, and then using the disputed domain name to offer identical goods and services to those offered by Complainant will not be relied upon by this Panel to demonstrate a legitimate interest in the disputed domain name.
Finally, the disputed domain name is not a non-commercial or fair use of the Marks. Respondent is clearly using the disputed domain name commercially to advertise and sell sports jerseys and other apparel while trading off of Complainant’s good will. See Exhibit F. Because Respondent does not identify Complainant on the Website, Respondent’s use is not a nominative or fair use of the Mark. The Mark is also not suggestive or descriptive of the services Respondent purports to offer on the Website, therefore precluding any claims that the Marks are used in a descriptive manner.
Therefore, the Panel concludes that the Respondent has no rights or legitimate interests in or to the disputed domain name.
Complainant argues under Policy ¶ 4(b)(iv) that Respondent uses the disputed names to mislead Internet users and confuse them as to Complainant’s affiliation with Respondent’s disputed domain names. Complainant states that this is clear from the disputed domain names featuring Complainant’s trademark. The panel in Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) found bad faith where the domain name in question was obviously connected with the complainant’s well-known marks, and thus created a likelihood of confusion strictly for commercial gain.
This Panel concludes, therefore, that Respondent’s use of the disputed domain name to commercially profit by confusing internet users, indicates bad faith use and registration under Policy ¶ 4(b)(iv).
Respondent provided the Registrar with false contact information, which resulted in Complainant’s letter being returned as undeliverable. See Exhibits M and N. Providing false WHOIS information also suggests bad faith and no legitimate interest. See Candyking Holding AB v. Joan Deer, WIPO Case No. DCO2014-0004; AIDA Cruises v. Birol Atlihan, WIPO Case No. D2013-2096 (finding bad faith use and registration where the registrant provided false WHOIS information and failed to respond to the complainant’s demand letter.); AT&T Corp. v. ATandT.net, WIPO Case No. D2005-1006 (“Respondent’s [use of false and fictitious WHOIS information is] particularly egregious, and indicative of bad faith.”) Filing a false address with WHOIS is highly indicative of bad faith.
As such, the Panel finds that the Respondent engaged in bad faith use and registration of the disputed domain name.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <fanzzjerseys.us> domain name be transferred from Respondent to the Complainant.
Kenneth L. Port, Panelist
Dated: March 11, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page