erviewMosaic Legal Group, PLLC, United States.
The Respondent is Fundacion Privacy Services LTD, Panama. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2020. On May 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 8, 2020, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 14, 2020. 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 May 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 4, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 24, 2020. The Center appointed Knud Wallberg as the sole panelist in this matter on July 14, 2020. 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 owner of several registrations of the trademark JAZZERCISE including US registration no. 1,079,083, registered on December 6, 1977 for services in International class 41. The Complainant uses the mark in connection with physical fitness and exercise services, forms of exercise equipment, exercise clothing, and numerous other related products, including the provision of online dance fitness classes, which service it provides under the brand name JAZZERCISE ON DEMAND. The Respondent registered the disputed domain name The Complainant submits that the disputed domain name is confusingly similar to the trademark and service mark JAZZERCISE in which the Complainant holds rights. The disputed domain name contains the mark in its entirety and the remaining words in the disputed domain name, “on demand”, carry no trademark or service mark significance but merely inform the customer that the goods or services are available instantly, usually through technology. The Complainant further submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name that is the subject of the Complaint. Before any notice to the Respondent of the dispute, there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. The Complainant coined its famous trademark JAZZERCISE and has been the only rightful owner of that brand name since its first use in 1974. To the best of the Complainant’s knowledge, the Respondent (as both an individual and/or as a business) has neither been known nor commonly known by the disputed domain name. Further, the Respondent has never acquired any trademark or service mark rights in the corresponding name. Finally, and based on the content on the disputed domain name, the Respondent is not making, nor has it ever made a legitimate noncommercial or fair use of the disputed domain name. The Complainant finally asserts multiple circumstances, which indicate that the Respondent registered and is using the disputed domain name in bad faith, whether primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant, or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name, or in order to prevent the Complainant from reflecting the mark in a corresponding domain name, which the Complainant wishes to do. The Complainant further asserts that the Respondent has engaged in a pattern of such conduct, including behavior that has disrupted the business of the Complainant. This Respondent and/or its affiliate has thus been a Respondent in numerous domain name disputes, all wherein the Complainant has alleged bad faith registrations of domain names that are comprised of brand names and misspelled brand names. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Paragraph 4(a) of the Policy directs that a complainant must prove each of the following: (i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate. A. Identical or Confusingly Similar The Panel finds that the disputed domain name is confusingly similar (in the sense of the Policy) to the Complainant’s registered trademark because it contains the Complainant’s registered trademark JAZZERCISE in its entirety with the addition of the dictionary term “on demand”. The generic Top-Level Domain (“gTLD”) “.com” is a standard registration requirement and as such is disregarded under the first element confusing similarity test. See Section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name. B. Rights or Legitimate Interests It follows from the information that is included in the Complaint, that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark in any way. Further, given the circumstances of this case, the Panel is of the opinion that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not rebutted this, and the way the Respondent has been and is using the disputed domain name (see below in Section 6.C) does not support a finding of rights or legitimate interests. Consequently, the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances, which shall be evidence of registration and use in bad faith: (i) circumstances indicating that the holder has registered or has 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 the holder’s documented out-of-pocket costs directly related to the domain name; or (ii) the holder has 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 the holder has engaged in a pattern of such conduct; or (iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location. Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith. Given the circumstances of the case, in particular the extent of use and reputation of the Complainant’s trademark JAZZERCISE, as well as the distinctive nature of the Complainant’s mark, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant’s marks. Further, the Panel finds that the Respondent could not have been unaware of the fact that the disputed domain name it chose could attract Internet users in a manner that is likely to create confusion for such users. The Panel therefore finds that the disputed domain name was registered in bad faith. Also, the Respondent is using the disputed domain name actively for a pay-per-click (“PPC”) page that contained links to websites of third parties some of which appear to offer services of competitors of the Complainant. It is thus obvious to the Panel that the Respondent uses the disputed domain name in bad faith by intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. See section 3.5 of the WIPO Overview 3.0. The fact that the named Respondent has been involved in several similar cases under the UDRP supports this finding, cf. section 3.1.2 of the WIPO Overview 3.0. Noting that the disputed domain name incorporates the Complainant’s well-known trademark, that no response has been filed, that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain name, that the disputed domain name effectively prevents the Complainant from registering the identical domain name and considering all the facts and evidence, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 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 Knud Wallberg
Sole Panelist
Date: July 28, 2020
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