Complainant is Jam City, Inc., United States of America (“United States”), represented by Cooley LLP, United States.
Respondent is Marcel Odiagbe, Digitaltims, Nigeria.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 14, 2021. On July 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 15, 2021, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 Respondent of the Complaint, and the proceedings commenced on July 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 16, 2021. On July 31, 2021, the Center received an email communication from Respondent regarding possible settlement. Respondent did not submit any formal response. Accordingly, the Center notified the Parties on September 2, 2021, that it would proceed to the panel appointment process.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on September 16, 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 BackgroundComplainant is a company organized under the laws of the United States that is a global leader in mobile entertainment, including the creation of gaming software.
Complainant has provided evidence that it is the registered owner of various trademarks worldwide relating to its company name and brand ”Jam City”, including, inter alia, the following:
- Word mark JAM CITY, United States Patent and Trademark Office (USPTO), registration number: 4,570,017, registration date: July 15, 2014, status: active;
- Word mark JAM CITY, European Union Intellectual Property Office (EUIPO), registration number: 1333781, registration date: November 22, 2016, status: active.
Moreover, Complainant has evidenced to own, inter alia, the domain name
Respondent, according to the WhoIs information for the disputed domain name, is a resident of Nigeria who registered the disputed domain name on April 19, 2021. According to the Complaint and some limited research undertaken by the Panel within its general powers set forth by paragraph 10 of the Rules, the disputed domain name so far does not seem to have ever resolved to any valid content on the Internet, but rather to varying error pages.
Complainant has undertaken various attempts to contact Respondent, e.g. on May 11, 2021, as well as on June 21, 2021, however did not receive any response prior to the filing of the present dispute.
Complainant requests that the disputed domain name be transferred to Complainant.
5. Parties’ Contentions A. ComplainantComplainant contends to have used its JAM CITY trademark since at least as early as October 2013 and that, due to Complainant’s meanwhile evolved business as well as related advertising efforts and media attention, such trademark may nowadays be considered well-known.
Complainant submits that the disputed domain name is confusingly similar to Complainant’s JAM CITY trademark, as it incorporates the trademark entirely, and merely adds the descriptive term “game”. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Complainant has not authorized or licensed Respondent to use any of Complainant’s trademarks in any way, and Respondent apparently is not commonly known by the disputed domain name or any name containing Complainant’s JAM CITY trademark, and (2) Respondent cannot claim to be offering bona fide goods or services under the disputed domain name nor using it for a legitimate noncommercial or fair purpose. Finally, Complainant argues that Respondent has registered and is using the disputed domain name in bad faith since (1) due to the unique qualities of the arbitrary JAM CITY trademark and the related website thereunder, it is extremely unlikely that Respondent created the disputed domain name independently, and (2) such finding is also supported by the fact that the disputed domain name merely adds the descriptive term “game” to Complainant’s JAM CITY trademark, which is a term that highly relates to the goods and services offered by Complainant, thus demonstrating that the disputed domain name was meant to be confusingly similar to Complainant’s JAM CITY trademark.
B. RespondentRespondent did not formally reply to Complainant’s contentions, but indicated in an email correspondence sent to the Center on July 31, 2021, that it had bought the disputed domain name on behalf of a client, that he would be open to discuss possible settlement terms, and that his understanding as a web developer was that the purchase of a domain name was on a “first come first serve” basis.
6. Discussion and FindingsUnder paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Respondent's lack of formal response in the case at hand does not automatically result in a decision in favor of Complainant, however, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from Respondent's failure to submit a formal Response as it considers appropriate.
A. Identical or Confusingly SimilarThe Panel concludes that the disputed domain name is confusingly similar to the JAM CITY trademark in which Complainant has rights.
The disputed domain name incorporates the JAM CITY trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see, e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),
WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among UDRP panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8), that the addition of other terms (whether e.g. descriptive or otherwise) would not prevent the finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the descriptive term “game”, which even points to Complainant’s core business, does not prevent a finding of confusing similarity arising from the incorporation of Complainant’s JAM CITY trademark in the disputed domain name.
Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i).
B. Rights or Legitimate InterestsThe Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.
Respondent has neither been granted a license nor has it been otherwise authorized by Complainant to use its JAM CITY trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the term “jam city” on its own. Finally, Respondent obviously so far has not used the disputed domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair purpose. UDRP panels have recognized that the mere registration of a domain name does not by itself automatically confer rights or legitimate interests in the disputed domain name (see WIPO Overview 3.0, section 2.10.1).
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Respondent has not formally responded to the Complaint. On top, even Respondent’s allegations set forth in the email correspondence with the Center of July 31, 2021, do not contain any substantiated facts that would allow the Panel to conclude that Respondent, e.g., was at least in the stage of undertaking demonstrable preparations to ever use the disputed domain name for a good faith purpose.
Against this background, Respondent obviously has brought nothing forward in order to substantiate or at least indicate that Respondent enjoys rights or legitimate interests in respect of the disputed domain name, which is why the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.
C. Registered and Used in Bad FaithThe Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
Complainant contends, and Respondent has not challenged this contention, that its JAM CITY trademark meanwhile enjoys a well-known character, particularly in the gaming industry. Moreover, Respondent has failed to submit any explanation as to why it needed to rely exactly on the term “jam city” in combination with the term “game”, if not to create a domain name that aims at profiting unjustifiably from the reputation that Complainant’s JAM CITY trademark enjoys.
Against this background, the passive holding of the disputed domain name by Respondent is not in contrast to hold that Respondent has still registered and is using the disputed domain name in bad faith within the larger meaning of paragraph 4(b) of the Policy. As a general rule, Panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding (see WIPO Overview 3.0, section 3.3). While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include e.g.: the degree of distinctiveness or reputation of Complainant’s mark, the failure of Respondent to submit a response or to provide any evidence of actual or contemplated good faith use, or the implausibility of any good faith use to which the domain name may be put.
In this context, the Panel has certainly also taken into account Respondent’s allegations set forth in the email correspondence sent to the Center on July 31, 2021, according to which Respondent claims to have bought the disputed domain name on behalf of a client and that Respondent’s understanding as a web developer was that the purchase of a domain name was on a “first come first serve” basis. The Panel, however, takes the view that such allegations either must be considered as an unsubstantiated pretext to avoid a finding of bad faith on the part of Respondent, or that Respondent was nevertheless financially profiting from having created and registered the disputed domain, which is violating Complainant’s rights in the JAM CITY trademark, for an unknown third person, thus still taking unfair advantage of or otherwise abusing Complainant’s trademark as set forth by paragraph 4(b) of the Policy (see also WIPO Overview 3.0, section 3.1).
Therefore, Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii).
7. DecisionFor 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
Stephanie G. Hartung
Sole Panelist
Date: September 27, 2021