The Complainant is WildWorks, Inc., Salt Lake City, Utah, United States of America, represented by Hughes Media Law Group, PLLC, United States of America.
The Respondent is Ong Dai Vu Hao, TP Lang Son, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Mat Bao Trading & Service Company Limited d/b/a Mat Bao (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2016. On May 12, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 17, 2016, 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. The Registrar further informed the Center that the language of the Registration Agreement for the Disputed Domain Name was Vietnamese. On May 18, 2016, the Center sent an email regarding the language of the proceeding in both English and Vietnamese, and invited the Complainant to state its position on this issue by May 21, 2016, and the Respondent by May 23, 2016.
On May 20, 2016, the Complainant filed a statement with which it reiterated its request for the proceeding to be held in the English language. On May 21, 2016, the Respondent stated that it could use English at a basic level, but might be difficult to him to pursue a legal proceeding conducted in English.
On the same date, the Center informed the Parties in both English and Vietnamese that it will accept the Complaint as filed in English and will accept a Response in either English or Vietnamese.
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 of the Complaint, and the proceeding commenced on May 24, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 13, 2016. Apart from several emails received from Respondent, no formal Response was filed with the Center.
The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on June 29, 2016. 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 game development studio based in Salt Lake City, Utah, United States. The company has been assembled from game industry veterans, designing innovative and original titles for gamers of all ages and across all platforms, including home consoles, PCs and handheld devices. One of the major products of the Complainant is the award-winning Animal Jam, a popular virtual world for kids.
The Complainant is the owner of the trademark ANIMAL JAM, which is registered in the United States (USPTO Registration No. 3949116 of April 19, 2011) and in various other countries around the world, including Viet Nam (International Registration No. 1234335, 1257667) for goods/ services in Classes 9 (in pertinent part, computer game software and programs), 16, 18, 25, 28 and 41 (entertainment services, namely, providing on-line computer games and an online virtual world featuring online computer games and temporary use of online non-downloadable computer and video game software).
The Complainant is also the owner of the domain name , which is created and registered since as early as October 15, 2007. In early 2016, Animal Jam was named the fastest growing game site in the United States with over 50 million users registered worldwide.
The Disputed Domain Name is registered on September 21, 2015, and was purchased by the Respondent on February 15, 2016. Before the commencement of the UDRP proceeding, the Respondent was using the Disputed Domain Name to redirect Internet users to an unauthorized copy of the Animal Jam game, as well as offering copies and pay-per-click advertisements of other online games.
As indicated in the case file, the Complainant’s attorneys sent to the Respondent a notice of infringement on February 4, 2016. The Respondent did not reply to the said notice, but began using the Disputed Domain Name to redirect users to another of its domain names, , which contains the same unauthorized uses of the Complainant’s trademarks and copyrights as well as offerings and advertisements for the Complainant’s competitors. 5. Parties’ Contentions A. The Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:
(i) The Disputed Domain Name is confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant contends that the Complainant is the right holder of the trademark Animal Jam in a number of countries worldwide, including in Viet Nam, for, among others, computer game software in Class 9 and entertainment services of providing on-line computer games and an online virtual world featuring online computer games in Class 41.
The trademark ANIMAL JAM is recognizable within the Disputed Domain Name. The addition of the common, descriptive word “online” in the Disputed Domain Name should be disregarded as it does not prevent a threshold Internet user from being confused about the source of the Disputed Domain Name. Internet users may believe there is a real connection between the Disputed Domain Name and the ANIMAL JAM trademark because of the overall impression of the Disputed Domain Name (which provides an unauthorized version of the Animal Jam online game) and the nature of the Animal Jam online video game. The addition of the word “online” creates no distinguishing value to the Disputed Domain Name, but rather reinforces confusion for Internet users seeking to play the Animal Jam online video game.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Complainant contends that the Respondent is not, and never has been, a licensee or business associate of the Complainant, nor has the Respondent been otherwise authorized by the Complainant to use the ANIMAL JAM mark in any manner, including as a domain name. The Respondent is not and never has been known by, or done business in connection with the Animal Jam game. The Respondent has no legitimate interests with respect to the Disputed Domain Name. The Respondent is not using the Disputed Domain Name in connection with a bona fide offering of its own goods and services, nor is the Respondent using the Disputed Domain Name solely in connection with the Animal Jam game. Rather, the Respondent is using the Disputed Domain Name to redirect Internet users to an unauthorized and infringing copy of the Animal Jam game, as well as offering copies and advertisements of other online games in order to profit from pay-per-click advertising revenue generated on the site.
The Respondent has no interest in the Animal Jam mark other than reaping commercial gain from misleading consumers seeking the Complainant’s website and diverting these consumers to the Respondent’s website or websites to which it links this diverted traffic. Further, the Respondent fails to disclose anywhere on its site its relationship (or lack thereof) with the Complainant, thereby creating a likelihood of confusion among the public by falsely suggesting that the Complainant is the source, sponsor, affiliate or endorser of the Respondent and/or any of the Respondent’s websites that may be offered at or linked to the Disputed Domain Name.
(iii) The domain name is registered and used in bad faith.
The Complainant contends that the Respondent has violated paragraph 4(b)(iv) of the Policy and is using the Disputed Domain Name in an intentional attempt to attract for commercial gain, Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s ANIMAL JAM mark. The Respondent is using the Complainant’s ANIMAL JAM mark in the Disputed Domain Name to confuse and divert consumers to another of the Respondent’s sites that displays the Complainant’s trademarks, copyright protected images, characters, logos, and Animal Jam game software without license or authorization, mimicking the look and feel of an official or authorized website of the Complainant in an attempt to benefit from the pay-per-click advertising on the Respondent’s site.
Further, the Respondent is well aware that the Complainant considers the Respondent’s registration and operation of the domain an act of infringement. On or about February 4, 2016, the Complainant sent the Respondent a notice of infringement regarding the Respondent’s unauthorized uses of the Complainant’s trademarks and copyrights on the Respondent’s site, “www.”. Thereafter, in an attempt to frustrate the Complainant’s efforts to protect its trademarks, the Respondent began using the Disputed Domain Name to redirect users to another of its domain name, , which contains the same infringing and unauthorized uses of the Complainant’s trademarks and copyrights as well as offerings and advertisements for the Complainant’s competitors. B. The Respondent
Despite several communications sent to the Center, the Respondent did not file any formal Response directly to the issues raised by the Complainant, but rather stated in its email dated May 25, 2016 that it agreed to transfer the Disputed Domain Name to the Complainant. 6. Discussion and Findings A. Procedural Issues (i) Language of the Proceeding
The Complaint was filed in the English language on May 11, 2016. On May 17, 2016, the Registrar informed that the language of the Registration Agreement is Vietnamese.
As the Complaint was filed in English, the Center, in its notification dated May 18, 2016 in English and Vietnamese, invited the Complainant to submit either (i) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English, or a translation of the Complaint in Vietnamese, or (ii) a substantiated request for English to be the language of the proceeding.
On May 20, 2016, the Complainant reiterated its request that English be the language of the proceeding. On May 21 and 24, 2016, the Respondent sent its comments on the language of the proceeding.
According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Similar to previous UDRP decisions, the Panel finds that the spirit of paragraph 11(a) is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors (see, e.g., Deutsche Messe AG v. Kim Hyungho,WIPO Case No. D2003-0679).
In the present case, in consideration of the above circumstances of the proceeding, including, but not limited to the nationality of the parties; the fact that through its correspondence with the Center, it is proved and also admitted by the Respondent itself that it could read, understand the English language and respond in English at basic level, and that the Complainant, a US entity, does not appear to be able to communicate in Vietnamese, and therefore, if the Complainant was required to have the documents submitted translated into Vietnamese, the proceeding would be unduly delayed, and the Complainant would have to incur substantial expenses for translation; and for the purpose of easy comprehension of the Complainant (the only party actively taking part in the proceeding) of the Panel’s decision without any necessity of translations, and in the interest of fairness to both parties as well as the Panel’s obligation under paragraph 10(c) of the Rules, which provides that “the Panel shall ensure that the administrative proceeding takes place with due expedition”, the Panel hereby decides, under paragraph 11(a) of the Rules, that the language of the proceedings shall be English and shall render its decision in English. (ii) The Respondent’s Failure to Respond
The Panel notes that the Respondent did send to the Center several emails, but not directly and specifically respond to the statements and allegations contended by the Complainant. Thus, the Panel does not consider these emails as a formal Response by the Respondent. The Respondent’s failure to file a formal Response does not automatically result in a decision in favor of the Complainant (see, e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn,WIPO Case No. D2010-1413 and M. Corentin Benoit Thiercelin v. CyberDeal, Inc.,WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent’s default.
In accordance with paragraph 4(a) of the Policy, in order to decide on the remedy sought by the Complainant, the Panel will examine whether each of the following three elements are present:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or 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. B. Identical or Confusingly Similar
The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the Disputed Domain Name is identical or confusingly similar to its trademark.
First of all, the Panel finds that the Complainant has clearly evidenced that it had registered trademark rights to ANIMAL JAM well before the Disputed Domain Name was registered. Also, the Complainant has sufficiently demonstrated and evidenced that it had a lengthy use of its trademark for its commercial activities, and in particular to offer a virtual playground for kids worldwide.
Secondly, the Disputed Domain Name comprises the Complainant’s distinctive and widely-known Animal Jam mark in which the Complainant has exclusive rights. The difference between the Disputed Domain Name and the trademark is the addition of the suffix “online”, which is a descriptive term. The Panel finds that “Animal Jam” remains the dominant element in the Disputed Domain Name. It is well established that the addition of descriptive terms (such as “online”) to a trade mark does not prevent confusing similarity, thus, in the Panel’s view, the addition of the said suffix does nothing to distinguish the Disputed Domain Name from the Animal Jam trademark, nor to dispel the risk of confusing similarity, as it was found in previous UDRP decisions (see e.g. AB Animal Jam v. Ilgaz Fatih Micik,WIPO Case No. D2009-0777; Aktiebolaget Animal Jam v. ibp,WIPO Case No. D2013-0795; AB Animal Jam v. Ong Bui TrungKien,WIPO Case No. D2012-2320).
Thirdly, the Panel finds, similarly to other UDRP panels, that the addition of the generic Top-Level Domain “.com” to the Disputed Domain Name does not constitute an element so as to avoid confusing similarity for trademark purposes (see e.g. Volkswagen AG v. Privacy Protection Services,WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz,WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc.,WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, the Panel finds and concludes that the Disputed Domain Name is confusingly similar to the Complainant’s ANIMAL JAM trademark, and the first element under paragraph 4(a)(i) of the Policy is established. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:
“When you receive a complaint, you should refer to paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization of any kind to use the Complainant’s Animal Jam trademark has been granted to the Respondent and there is no evidence that the Respondent holds such rights. Thus, the Respondent has no own rights in the ANIMAL JAM trademark.
Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have rights or legitimate interests in the domain name if its use meets certain requirements, which are described in the decision Oki Data Americas, Inc. v. ASD, Inc,WIPO Case No. D2001-0903 (Oki Data):
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);
- the site itself must accurately disclose the respondent’s relationship with the trademark owner; and
- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.
The Panel finds, similarly to other UDRP panels, that the Oki Data criteria are appropriate even when the respondent is not an authorized reseller, such as it is the case in this dispute (see e.g. National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc.,WIPO Case No. D2007-1524). However, in this particular case, the Panel finds that it does not fulfill the Oki Data criteria.
Indeed, the Respondent did not use the Disputed Domain Name solely in connection with the Animal Jam game, but after receiving the notice of infringement by the Complainant, the Respondent began using the Disputed Domain Name to redirect users to another of its domain name’s, , which contains the same allegedly infringing and unauthorized uses of the Complainant’s trademarks and copyrights as well as offerings and advertisements for the Complainant’s competitors. Before the infringement notice, Respondent was using the Disputed Domain Name to redirect Internet users to an unauthorized and allegedly infringing copy of the Animal Jam game, as well as offering copies and advertisements of other online games in order to profit from pay-per-click advertising revenue generated on the site.
Moreover, in the website under the Disputed Domain Name, the Respondent lacks of any statement or disclaimer disclosing the actual relationship with the Complainant. Further, the use of the Complainant’s logo-typed Animal Jam trademark and copyrighted images in a way mimicking the “look and feel” of the Complainant’s website may be further evidence on the Respondent’s intention to create a false relationship with the Complainant. For all the foregoing reasons, the Panel finds the Respondent’s use of the Disputed Domain Name cannot be considered to be a bona fide offering of goods or services. Moreover, the Panel finds that there is no evidence that would suggest that the Respondent, as an individual, business, or other organization, has been commonly known by the Disputed Domain Name.
The Panel further finds that no evidence has been presented that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. In fact, as it appears following the Complainant’s assertions and evidence with regard to the Respondent’s registration of the Disputed Domain Name and the Panel’s independent researches, the Respondent had full knowledge of the Trademark and had an intention to gain profit by riding on the good reputation of the Complainant.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and the second element under paragraph 4(a)(ii) of the Policy is established. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an instance of “registration and use of a domain name in bad faith”.
The Panel finds that the Complainant has put forth sufficient evidence that the Respondent has registered and used the Disputed Domain Name in bad faith. The Respondent did not reply directly to the Complainant’s contentions and, therefore, has not refuted the Complainant’s contentions. Registration in bad faith
The Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registration of the Disputed Domain Name. In this regard, the Panel finds that the Complainant’s ANIMAL JAM trademark has been registered in a variety of countries. The Complainant’s Animal Jam website can be accessed by users worldwide, including Viet Nam, where the Respondent resides.
The Disputed Domain Name comprises the ANIMAL JAM trademark in their entirety, adding only the descriptive word “online”. The Complainant’s ANIMAL JAM trademark, and domain name , well predate the registration of the Disputed Domain Name.
Also, the Panel finds that given the fact that the Complainant’s ANIMAL JAM trademark, which is an arbitrary phrase, is not descriptive of the Complainant’s products/ services, it is very unlikely that the Respondent would have registered the Disputed Domain Name incorporating the ANIMAL JAM trademark without knowledge of the Complainant’s trademark (see in the same way Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne,WIPO Case No. D2010-0240; Volkswagen AG v. Swiss Recruitment,WIPO Case No. D2013-0534) and that it defies common sense to believe that the Respondent coincidentally selected this precise domain name without any knowledge of the Complainant and its trademark (see in the same way Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415; Volkswagen AG v. Swiss Recruitment,WIPO Case No. D2013-0534).
These facts show that the Respondent did not register the Disputed Domain Name in a fortuity. The Respondent knew or should have known of the Complainant and its ANIMAL JAM trademark before its registration of the Disputed Domain Name, and the Panel considers the registration an attempt by the Respondent as to take advantage of the Complainant’s goodwill. Use in bad faith
Further, on the date of this Decision, the Panel accesses the Disputed Domain Name and finds that it is resolving to an inactive website. However, it is well proved and evidenced by the Complainant that by the date on which the Complaint was filed, the Disputed Domain Name was used to redirect Internet users to an unauthorized, and allegedly infringing copy of the Animal Jam game, as well as offering copies and pay-per-click advertisements.
In this regard, the Panel also finds that the Respondent has used the Complainant’s ANIMAL JAM trademark in their entirety, and the trademark is recognizable as such in the Disputed Domain Name. Further, the Panel finds that in addition to the adoption of the Complainant’s trademark as a uniquely distinctive part in the Disputed Domain Name, the Respondent used the Complainant’s logo-typed ANIMAL JAM trademark and copyrighted images on the website at the Disputed Domain Name and did not disclose the actual relationship with the Complainant on that website.
With the Respondent’s use of the Complainant’s logo-typed trademark/ copyrighted images in the website and the non-disclosure of the actual relationship with the Complainant, the Panel finds that the Respondent intentionally registered and used the Disputed Domain Name for commercial gain and that the Respondent’s actual use of the Disputed Domain Name appears to mislead consumers and confuse them by making them believe that the website is associated, fostered or recommended by the Complainant. Such misleading behavior is indicative of bad faith within the meaning of paragraph 4(b)(iv) of the Policy, on the part of the Respondent (see in the same way Aktiebolaget Animal Jam v. Jose Manuel,WIPO Case No. D2010-2031).
In addition, the Panel notes the fact that after receiving the notice of infringement by the Complainant, the Respondent began using the Disputed Domain Name to redirect users to another of its domain names, , which contains the same unauthorized uses of Complainant’s trademarks and copyrights as well as offerings and advertisements for the Complainant’s competitors. This is a further indication of the Respondent’s bad faith by trying to capitalize on the reputation and goodwill of the Complainant’s trademark even after it is informed by the Complainant under the notice of infringement.
Taking into account all of the above and the available record, the Panel finds that the Disputed Domain Name was registered and used by the Respondent in bad faith under paragraph 4(b)(iv) of the Policy, and the third element under paragraph 4(a)(iii) of the Policy is established.
In light of the foregoing, the Panel finds that the Disputed Domain Name was registered and used by the Respondent in bad faith under the Policy, and the third element under paragraph 4(a)(iii) of the Policy is established. 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 be transferred to the Complainant.
Pham Nghiem Xuan Bac
Sole Panelist
Date: July 13, 2016
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