The Complainant is Joox Impressões e Comunicação Ltda of Curitiba, Brazil, represented by Urban, Cornehl Advogados, Brazil.
The Respondents are Shenzhen Tencent Computer System Co. Ltd. of Shenzhen, China, represented by Hogan Lovells, China and Whoisguard Protected, Whoisguard, INC. of Panama / Joox, Christopher Bubach of Trollhattan, Sweden. 2. The Domain Name and Registrar
The disputed domain name is registered with MarkMonitor Inc. The disputed domain name is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 15, 2016. On September 15, 2016, the Center transmitted by email to the Registrars requests for registrar verification in connection with the disputed domain names. On September 20, 2016, the Registrar MarkMonitor Inc. transmitted by email to the Center its verification response confirming that the Respondent Shenzhen Tencent Computer System Co. Ltd. is listed as the registrant for the disputed domain name and providing the contact details.
On September 16, 2016, the Registrar eNom, Inc. 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 September 20, 2016 providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Center has requested the Complainant to either: (i) amend the Complaint adding the Registrar-disclosed registrant as formal Respondent and provide relevant arguments or evidence demonstrating that all named Respondents are, in fact, the same entity and/or that all disputed domain names are under common control; and/or (ii) file a separate complaint.
The Complainant filed an amended Complaint on September 25, 2016, adding the Registrar-disclosed registrant and providing a consolidation argument.
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 Respondents of the Complaint, and the proceedings commenced on September 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 18, 2016. The Respondent Christoffer Bubach filed submissions on September 21, 2016, September 28, 2016 and October 1, 2016. On October 17, 2016 the Respondent Shenzhen Tencent Computer System Co. Ltd. requested an extension to file its Response Pursuant to the Rules, paragraph 5(b). The Center notified the parties of the extension and that the new due date for Response was October 22, 2016. The Response was filed by the Respondent Shenzhen Tencent Computer System Co. Ltd. with the Center on October 20, 2016.
The Center appointed Nick J. Gardner, Luiz E. Montaury Pimenta and Sebastian M.W. Hughes as panelists in this matter on November 9, 2016. The Panel finds that it was properly constituted. Each member of 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. Consolidation
As appears from the Procedural History (see above) the Complainant alleges in the amended Complaint that consolidation of proceedings against the two Respondents would be appropriate as the two disputed domain names are under common control. In determining whether to allow this approach the Panel adopts the consensus view set out in paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), which states as follows: “WIPO panels have articulated principles governing the question of whether a complaint filed with WIPO by multiple complainants may be brought against (one or more) respondents. These criteria encompass situations in which in the case of complaints brought (whether or not filed by multiple complainants) against more than one respondent, where (i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.”
In the present case the Panel concludes, for reasons explained below, that the Complainant has failed to establish that the disputed domain names or the websites to which they resolve are under common control:
- The Respondent Shenzhen Tencent Computer System Co. Ltd is the subsidiary of a major Chinese corporation (see below). It has confirmed it is the registrant of the disputed domain name . It has filed credible evidence to support its claim that it has nothing to do with the disputed domain name or the website to which it resolves.
- The Respondent Christoffer Bubach is an individual residing in Sweden. He has confirmed he is the registrant of the disputed domain name . In his communication with the Center he has provided credible evidence to support his claim that that he has nothing to do with the disputed domain name or the website to which it resolves.
- The website linked to the disputed domain name is clearly a music streaming site and has been widely publicized as such and been promoted by the Respondent Shenzhen Tencent Computer System Co. Ltd as a competitor to well-known services such as Spotify and Deezer, aimed at the Asian market.
- The historical evidence concerning websites linked to the disputed domain name shows these to have been video streaming or linking services materially different to the music streaming service linked to the disputed domain name .
- The disputed domain name was originally registered in 2001 and was acquired by the Respondent Shenzhen Tencent Computer System Co. Ltd in 2014 from the disputed domain name’s previous owner. The Complainant had previously tried to buy the disputed domain name from the same owner but had failed to agree terms (see below). The disputed domain name has a completely different history to the domain name and was registered in 2006 by the Respondent Christoffer Bubach.
- The Complainant presents only one piece of evidence which is said to support its allegation of common control of the disputed domain names, which is some text on the website linked to the disputed domain name which reads as follows: “Get in touch. If you have any questions about the practices of this site, or your dealings with this site, please contact us at: Joox ”. This link provided seems to the Panel not to make sense (Mr. Bubach describes it as a “misprint in contact information mixing .net with .com”) and appears to be a mistake. There is no evidence the Complainant has tried to use the link provided to establish whether it in fact worked and, if so, whether it provided any further evidence of common control.
In all the circumstances the Panel concludes that the Complainant has failed, by a significant margin, to establish that the disputed domain names are under common control.
It accordingly follows that the Panel considers this case should have been brought as two separate complaints. Ordinarily in such circumstances the Panel would have issued a procedural order inviting the Complainant to identify which of the disputed domain names it wished to remain the subject of the present Complaint, and to file (if it wished) a further complaint, with appropriate fees, in respect of the other disputed domain name. However in the present case the Respondent Shenzhen Tencent Computer System Co. Ltd has elected to have the case determined by a three-person panel and paid the applicable fee in that regard. The Panel in these circumstances considers it is fair and equitable that this Complaint should proceed as against Shenzhen Tencent Computer System Co. Ltd in relation to the disputed domain name . The Complaint is hereby dismissed without prejudice to the Complainant’s right to file (if it wishes) a further complaint (with the applicable fee) against Respondent Whoisguard Protected, Whoisguard, INC. / Joox, Christopher Bubach in relation to the disputed domain name .
For convenience in this decision unless otherwise stated all further references to the “Respondent” are to the Respondent Shenzhen Tencent Computer System Co. Ltd and to the “Disputed Domain Name” are to the disputed domain name . 5. Factual Background
The Complainant is a company incorporated in Brazil and was founded in 2010. It describes its business as follows “Using VDP, and industry 4.0 technology [these terms are not explained], placing multiple images on the same project which allows anybody to create Personal Cards Minicards and Stickers with many different photos, images and colors innovating the way people introduce themselves”. So far as the Panel can tell from this description, and the associated filed evidence, its business allows customers to purchase, via an on line application, personalized business cards and related products. No evidence has been provided as to the size of its business in terms of sales figures, advertising expenditure, number of customers or any other quantitative data. Nor has any evidence been provided as to the international geographical breakdown of the Complainant’s business (beyond the existence of various registered trademarks in different jurisdictions).
The Complainant owns a number of registered trademarks for the term “joox”, or that term in stylized form, including in particular Brazilian Registration No. 904317579, for JOOX (word mark), filed on December 2, 2011, and granted on October 27, 2015, covering printing services included in international class 40 and European Union Registration No. 1302142, for “JOOX” (figurative), filed on June 16, 2014, and granted on October 6, 2014, covering printing services included in international class 40. No evidence has been provided of any relevant registered trademarks in China or Hong Kong, China. No evidence has been provided of any use of the term “Joox” by the Complainant prior to the registration of the trademarks in question which would be sufficient to establish unregistered trademark rights in the term “Joox”.
The Complainant owns various other domain names comprising the word “joox” including which was registered with effect from June 11, 2014.
The Disputed Domain Name was originally registered in 2001. The Complainant in June 2014 sought to purchase the Disputed Domain Name from its then owner. An exchange of correspondence took place which involved the owner asking for a sum of USD 20,000 and the Complainant counter-offering USD 2,000. The owner then asked for USD 18,000. That offer was not accepted and negotiations did not proceed any further.
The Respondent is a company based in China and is a subsidiary of a major Chinese corporation, Tencent Holdings Limited (“Tencent Holdings”). As of September 2016, Tencent Holdings had a market capitalization of over USD 250 billion.
With effect from November 9, 2014, the Disputed Domain Name resolved to a website operated by the Respondent promoting its music streaming service. Following trial releases, on or around December 19, 2014, the Respondent officially launched a music streaming mobile application under the name “Joox” on both the Apple and Android operating systems for consumers in the Hong Kong, China market. The Joox mobile application has since been further released in Thailand, Malaysia, Macau, China and Indonesia. The download of the mobile application and music streaming on the mobile application are free. The Respondent charges a fee for a premium membership which offers high-definition songs on-demand or listening offline without adverts.
The Respondent has also filed trademark applications for JOOX. Its earliest registration is its Hong Kong, China trademark registration No. 303082194 which was registered on July 28, 2014.
With effect from early in 2015 onwards the Respondent and the Complainant have been in dispute about their respective rights to use the term “Joox” on Apple’s on line store.
The Respondent (or an associated company) in 2014 agreed to purchase the Disputed Domain Name from its previous owner. This transaction was agreed by on July 16, 2014 (the relevant invoice has been placed in evidence by the Respondent) and completed on August 5, 2014 when registration of the Disputed Domain Name in the Respondent’s name took place. 6. Parties’ Contentions A. Complainant
The Complainant’s case can be summarized as follows:
a) The Disputed Domain Name is identical to the JOOX trademark.
b) The Respondent does not have any rights or legitimate interests in the Disputed Domain Name.
c) The Complainant appears to say that the previous owner of the Disputed Domain Name had registered and used it in bad faith. This is to be inferred from what it says in relation to the attempt it made to buy the Disputed Domain Name, namely: “The complainant declined the offer, since the amount was disproportionate for a domain name which the complainant had prior rights. All companies should be aware that buying a domain name, under this circumstances, would only encourage the cybersquatting business. This action causes so much damage for trademarks owners.”
The Complainant goes on to say that the Respondent registered and uses the Disputed Domain Name in bad faith. The Complainant’s arguments in this regard are not easy to follow but appear to be based on the allegation that the Respondent knew of, or should have known of, the Complainant or its business. The Complainant explains this as follows:
“With reference to the circumstances are pure evidence of bad faith, since at the time of obtaining the domain name all indicates that the Respondent knew that ‘JOOX’ was a trademark of the Complainant, since there is no credible and justifiable reason to select it. It is clear that the respondent has acted in bad faith obtaining the domain of ‘strong-catchy’ brand owned by a startup related to their core business (Music – Jokebox – Joox). The complainant was online since 2011, in addition at the Apple store since 26–Sep-2014….(we must emphasize that a simple search would have brought up several evidences from the prior trademark use)”. B. Respondent
The Respondent has produced a very detailed Response with accompanying documentary evidence, and set out numerous authorities in relation to its case. It is not necessary to repeat all that the Respondent has said here. The salient points the Respondent makes are as follows.
The Respondent says that it agreed to obtain the Disputed Domain Name (through an associated company) in July 2014 and that the transaction was completed on August 5, 2014 when it was registered as the proprietor of the Disputed Domain Name. It says it purchased the Disputed Domain Name because “joox” is a short memorable term with an aural resemblance to an abbreviation of the word “jukebox” which is directly applicable to music services. It says it had no knowledge of the Complainant, or its business, at that time.
The Respondent says the Complainant’s rights in the term JOOX post-date the Respondent’s purchase and that its registration of the Disputed Domain Name cannot be in bad faith. It also says its activities in offering its music streaming service are entirely legitimate.
The Respondent makes many more points in support of its arguments but it is not necessary to consider those further – where relevant they are addressed below. 7. Discussion and Findings
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel in respect of the Disputed Domain Name that:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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 has established that it owns various registered trademarks in respect of the term “JOOX”. The Panel holds that the Disputed Domain Name is identical to the JOOX trademark. It is well established that where the specific top-level of a disputed domain name (in this case “.com”) serves no purpose other than a purely technical one (contrast, for example, a domain name such as ), it may be ignored for the purpose of determining whether the disputed domain name is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
The Respondent is correct in noting that the earliest registration of the Complainant’s JOOX trademark was in October 2014 which was after the Respondent agreed to buy the Disputed Domain Name in June 2014 and after when that transaction was completed on August 5, 2014. Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under paragraph 4(a)(i) of the UDRP - see WIPO Overview 2.0 paragraph 1.4 which states in response to the question “Does the complainant have UDRP-relevant trademark rights in a trademark that was registered, or in which the complainant acquired unregistered rights, after the domain name was registered?” as follows:
“Consensus view: Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under the UDRP. The UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired rights. However, in such circumstances it may be difficult to prove that the domain name was registered in bad faith under the third element of the UDRP.”
The Panel agrees with this view. Accordingly the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that demonstrate a right or legitimate interest in the domain name:
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 organisation) 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 non-commercial 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 concludes that in the present case (i) applies. The Respondent set about developing its music streaming service during 2014 and launched that service in December 2014 under the Joox name. It says it was not at that date aware of the Complainant or its business. Given the available evidence the Panel sees no reason to doubt that was the case. The Respondent did not have any notice of this dispute until sometime in 2015 at the earliest, which is when the Complainant and Respondent started disputing their respective rights in the term Joox. Accordingly the Complainant has failed to establish that the Respondent has no rights or legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith
The Panel finds that there is no evidence to suggest that the Disputed Domain Name has been registered or used in bad faith. The Respondent says it had never heard of the Complainant or its use of the term “Joox” when it agreed to purchase the Disputed Domain Name in June 2014 or when that registration was effected in August 2014. Given the evidence before the Panel that account seems to the Panel to be entirely credible and the Panel again sees no reason to doubt the Respondent’s statement. The term “joox” is not a recognizable word but the Panel accepts the Respondent’s evidence that it is a short and readily memorable term which has aural similarity to an abbreviated form of the word “jukebox” which is a word relevant to a music streaming service, and as such was chosen by the Respondent as a good name to use for its new music streaming service.
In reaching this conclusion the Panel declines to accept the Complainant’s argument that the previous owner of the Disputed Domain Name had registered and used it in bad faith. The original registration of the Disputed Domain Name was in 2001 which was long before the Complainant existed. In this context paragraph 3.1 of WIPO Overview 2.0 states the following consensus view:
“Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date…, when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right.”
The Panel concludes that is precisely the situation in the present case so far as the previous owner of the Disputed Domain Name is concerned. Furthermore the fact that owner offered the Disputed Domain Name for sale is not of itself objectionable – – see Allocation Network GmbH v. Steve Gregory,WIPO Case No. D2000-0016 for an example of a case where the relevant considerations were discussed in relation to this issue.
It follows that the previous owner of the Disputed Domain Name was entitled to offer it for sale at a price of its choosing. The fact that the Complainant was not prepared to pay that price does not alter that analysis.
It therefore follows that the relevant question is whether the Respondent’s acquisition of the Disputed Domain Name in 2014 was itself in bad faith? This is because where there has been a change of ownership the relevant date for assessing whether the registration was in bad faith is the date at which the Respondent acquired the Disputed Domain Name. See the WIPO Overview 2.0 as follows:
“3.7 Does the renewal of the registration of a domain name amount to a registration for the purposes of determining whether the domain name was registered in bad faith?
While the transfer of a domain name to a third party does amount to a new registration, a mere renewal of a domain name has not generally been treated as a new registration for the purpose of assessing bad faith. Registration in bad faith must normally occur at the time the current registrant took possession of the domain name.”
For present purposes it does not matter whether the relevant date is in July 2014 when the Respondent agreed to purchase the Disputed Domain Name or August 2015 when the registration in the Respondent’s name was effected, as the material facts are the same at each date. The Panel notes that no evidence has been advanced by the Complainant to suggest that it has had at either date, or at any other time, any public reputation (apart from its registered trademarks) in the term “Joox”, and no real case is advanced to explain why the Respondent would have had, or should have had, any knowledge of the Complainant or its products or its trademark when it agreed to purchase the Disputed Domain Name or when its registration was effected. It is true that the Complainant has said that “a simple search would have brought up several evidences from the prior trademark use” but it is not clear to the Panel exactly what searches the Complainant says the Respondent should have done or what it would have learnt had it done so. The Panel does not accept that the Respondent was under some sort of duty to carry out unspecified searching of the type the Complainant appears to suggest. In any case even had it done so, on the evidence before the Panel, it might at most (depending on exactly what searching it did) have discovered a Brazilian company in a different line of business using the term ‘joox’, presumably in Brazil, and without, so far as the Panel is aware, any relevant activity or reputation or rights in Asia. In circumstances where the Disputed Domain Name had been in existence for many years and predated the Brazilian company the Panel cannot see why that knowledge, even if the Respondent had obtained it, should have led it to conclude it could not acquire the Disputed Domain Name to use for its new music streaming service in Asia.
In essence this is a case where two companies, in different parts of the world and operating in different business areas have independently decided to use the name Joox for their business and each has done so at approximately the same time. So far as the Panel can tell the Complainant’s business slightly predates that of the Respondent, although there is no evidence that the Respondent was or should have been aware of the Complainant when it decided to adopt the JOOX name. The domain name had been registered many years previously and was owned by a third party (about whom no complaint could be made, given its registration long predated the existence of either the Complainant or the Respondent). The Complainant had the opportunity to buy the Disputed Domain Name from its previous owner but was not prepared to pay the price that was sought. That meant the Respondent, when it independently decided to use the name Joox, was able to purchase the Disputed Domain Name from its previous owner. Given that there is nothing to establish that when it did so the Respondent either knew of, or should have known of, the Complaint or its business, its registration cannot have been in bad faith.
Taking into account all the above factors the Panel concludes that the registration and use of the Disputed Domain Name by the Respondent is not in bad faith. Accordingly the Complainant has failed to establish that the third condition of paragraph 4(a) of the Policy has been fulfilled. 8. Decision
For the foregoing reasons, the Complaint in relation to the disputed domain name is denied. The complaint in relation to the disputed domain name is dismissed without prejudice to the Complainant’s right to file a further complaint in that regard if so advised.
Nick J. Gardner
Presiding Panelist
Sebastian M.W. Hughes
Panelist
Luiz E. Montaury Pimenta
Panelist
Date: November 22, 2016
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