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Jamdat Mobile Inc. v. MidletEarth Inc. [2004] GENDND 1494 (12 November 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Jamdat Mobile Inc. v. MidletEarth Inc.

Case No. D2004-0745

1. The Parties

The Complainant is Jamdat Mobile Inc., Los Angeles, California, United States of America, represented by Liner Yankelevitz Sunshine & Regenstreif LLP, United States of America.

The Respondent is MidletEarth Inc., Vaucluse, New South Wales, Australia.

2. The Domain Name and Registrar

The disputed domain name <jamdatcasino.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 14, 2004. On September 15, 2004, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On September 15, 2004, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 21, 2004. In accordance with the Rules, Paragraph 5(a), the due date for Response was October 11, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 14, 2004.

The Center appointed Luca Barbero as the sole panelist in this matter on October 22, 2004. 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 Complaint is based on the trademark registration No. 2,710,534 “JAMDAT” of January 19, 2001, and No. 2,710,533 “JAMDAT Mobile” of January 19, 2001, both in United States.

The Respondent registered the domain name on July 5, 2004.

5. Parties’ Contentions

A. Complainant

The Complainant informs the panel that “Jamdat is one of the world’s leading providers of mobile entertainment products, services, and enabling technologies to wireless carriers, independent developers, and publishers. It has been named by several well known entertainment software publications as a leader in the wireless game business. In only four years, Jamdat has become one of the most successful and influential wireless entertainment companies in the world. Jamdat owns a substantial fraction of the market in this field”. The Complainant provides the Panel with a declaration of Mr. Craig Gatarz, Jamdat’s General Counsel and Chief Operating Officer, attesting the above statements.

The Complainant has registered on the Principal Register of the United States Patent and Trademark Office January 19, 2001, the trademark No. 2,710,533 “JAMDAT Mobile” and No. 2,710,534 “JAMDAT”. Both marks are registered for the wireless game field and the Complainant provided the Panel with copies of the registrations for the JAMDAT and JAMDAT Mobile marks.

The Complainant indicates that it has sold its games and products since at least October 23, 2000, and has used its JAMDAT and JAMDAT Mobile trademarks in association with its products continuously in commerce since at least October 23, 2000. Jamdat has sold millions of its games throughout the United States and in the rest of the world, under the JAMDAT and JAMDAT Mobile marks.

The Complainant informs the Panel that it has also common law trademark rights in the name JAMDAT CASINO as it has used this mark in connection with the sale and promotion of a game entitled JAMDAT CASINO continuously in commerce since no later than August 20, 2002. The JAMDAT CASINO game, which Jamdat developed, published and currently sells, features blackjack, slots and video poker, annexing to the Complaint a copy of a promotional advertisement featuring the JAMDAT CASINO. In addition, Jamdat offers several other “Casino”-type games to its customers, including “Casino Video Poker”, “Casino Blackjack”, “Casino Slots” and “Hard Rock Casino”.

The Complainant states that the JAMDAT and JAMDAT MOBILE marks are famous within the wireless gaming community, and JAMDAT CASINO mark is at the very least well known within the wireless gaming community.

The Complainant informs the Panel that the Respondent has registered the domain name <jamdatcasino.com> and at the time the Complainant was filed the domain name resolved to a place-holder, which states: “www.jamdatcasino.com coming soon! This page is parked FREE at GoDaddy.com”, providing the panel with a copy of the place-holding webpage, printed September 9, 2004.

The Complainant underlines that the Respondent’s domain name incorporates the registered JAMDAT mark in its entirety.

With reference to the rights or legitimate interests in respect of the domain name, the Panel was advised that the Complainant bears the burden of showing that Respondent has no legitimate interest in the Domain Name. However, “it is sufficient for the Complainant to establish prima facie evidence showing that none of the three circumstances listed in Paragraph 4(c) of the Policy, and which could demonstrate the Respondent’s rights to and its legitimate interest in the domain name, applies”. Quoting the case UPIB, Inc. v. Domains Asia Ventures, WIPO Case No. D2004-0020.

The Complainant informs the Panel that it has never assigned or licensed to Respondent, or authorized Respondent to use, any of its marks, including the JAMDAT, JAMDAT MOBILE or JAMDAT CASINO marks. JAMDAT has never requested or authorized Respondent to register or make any use of the Domain Name.

The Complainant emphasizes that the Respondent has not used, or made 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 prior to notice of the dispute. The Domain Name does not currently offer or link to any site offering any goods or services; it is merely warehoused with the registrar, GoDaddy Software and Complainant therefore concludes that “this is manifestly insufficient to demonstrate a bona fide business use”.

The Complainant highlights that the Respondent’s name, as shown on the whois registration form, is Midletearth Inc., not “Jamdat Casino”, and the Complainant is unaware of any use of the mark JAMDAT CASINO to refer to any business, product or service, by any person or entity other than Jamdat.

The Complainant underlines that the Respondent is not making a legitimate noncommercial or fair use of the Domain Name; to the contrary, Respondent’s intent and purpose in using the Domain Name is to profit by misleadingly diverting consumers or tarnishing JAMDAT’s marks quoting Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (use of a word that one would not choose “unless seeking to create an impression of an association with Complainant” demonstrated lack of any legitimate interest in the name).

With reference to the issue that the domain name was registered and is being used in bad faith the Complainant provides the Panel with a detailed description of the contents and copy of the correspondence exchanges between the Complainant and the Respondent from August 3, 2004 to September 9, 2004, showing in essence that notwithstanding the Complainant provided the information requested by Respondent’s counsel, yet Respondent refused to transfer the Domain Name and repeatedly stated that he will not do so until the Complainant enteres into a business relationship with the Respondent or declares his availability to pay a “settlement fee”.

The Complainant underlines that the Respondent’ attempt to extract a fee from a trademark owner greater than the registrant’s “out of pocket expenses directly related to the domain name” in exchange for transferring a domain name constitutes prima facie evidence of bad faith registration and use of the domain name. The counsel for the Respondent stated that Respondent has “invested monies into the building of the early stages of the Jamdat Casino brand” and then demands his “settlement fee”, and according to the Complainant this conduct proves that the Respondent is seeking more than its out of pocket expenses directly related to the domain name.

The Complainant argues that the registration of the domain name by the Respondent for the purpose of disrupting a competitor’s business or for the purpose of confusing customers and trading on the fame and goodwill of a complainant’s mark is evidence of bad faith.

In the correspondence exchanged between the parties the Respondent indicates that it intends to use the Domain Name to compete with JAMDAT by offering “a mobile casino gaming application”.

The Complainant concludes that “the fact that the Domain Name resolves to a classic “under construction” page does not negate Respondent’s ill intent. Bad faith use can be established where a site is inactive, particularly where, as here, the domain name reproduces JAMDAT’s trademarks in full, making it difficult, if not impossible, for Respondent to use the domain name for commercial purposes without violating JAMDAT’s rights”.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and is in default.

6. Discussion and Findings

According to Paragraph 15(a) of the Rules: “A Panel shall decide a Complaint on the basis of the statements and documents submitted 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 the 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 a service in which the Complainant has rights; and

(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.

6.1. Domain Name Identical or Confusingly Similar

The Complainant has provided evidence of ownership of the trademark registration No. 2,710,534 “JAMDAT” of January 19, 2001, and No. 2,710,533 “JAMDAT MOBILE” of January 19, 2001, in United States.

It is well established in prior decisions that “when a domain name incorporates a complainant’s mark in its entirety, it is confusingly similar to that mark despite the addition of other words”. Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056 (“chase”, “girlsof”, “jobsat”, “sams”, “application”, “blackfriday”, “blitz”, “books”, “career(s)”, “check”, “flw”, “foundation”, “games”, “mart”, “photostudio”, “pictures”, “portrait”, “portraitstudio(s)”, “registry”, “retaillink” and “wire” added to WALMART mark); PepsiCo, Inc. v. Henry Chan, WIPO Case No. D2004-0033 (“chart”, “music”, “arena”, “sweep”, “nfl” and “coliseum” added to PEPSI mark); Experian Information Solutions Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095 (“credit” added to EXPERIAN mark); Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“parts” added to OKIDATA mark); Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505 (“buildingsociety” added to BRITANNIA mark); Chanel Inc. v. Estco Technology Group, WIPO Case No. D2000-0413 (“chanelstore” and “chanelfashion” found to be confusingly similar to the CHANEL mark).

In view of the above, the Panel finds that the Complainant has proved that the domain name is confusingly similar to the trademarks of the Complainant according to Paragraph 4(a)(i) of the Policy.

6.2. Rights and Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with Paragraph 4(c) of the Policy:

(a) that he has made 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 prior to the dispute;

(b) that he is commonly known by the domain name, even if he has not acquired any trademark rights; or

(c) that he intends to make 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.

By not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to Paragraph 4(c) of the Policy, any rights or legitimate interests in the domain name.

Furthermore, there is no relation, disclosed to the Panel, between the Respondent and the Complainant and Respondent is not a licensee of the Complainant, nor the Respondent has otherwise obtained an authorization to use Complainant’s trademark and name under any circumstance.

The Panel therefore finds that Respondent has no rights or legitimate interests in respect of the domain name, according to Paragraph 4(a)(ii) of the Policy.

6.3. Registration and Use in Bad Faith

For the purpose of Paragraph 4(a)(iii) of the Policy, 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 the Domain Name 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.

With reference to the registration in bad faith the Panel notes that in the correspondence exchanged between the parties the Respondent indicates plans to operate in the same market as the Complainant and admitted visiting the Complainant’s website before registering the Domain Name. Therefore, it can be inferred that the Respondent had prior knowledge of the sign JAMDAT at the time of registration.

The Panel notes that in the correspondence sent from the Respondent to the Complainant on August 13, 2004, the intention to use the Domain Name to support a “mobile casino gaming client/server application” was indicated and that the Respondent spoke of only “two options” by which to resolve this matter, requesting that either the Complainant “partner … with us in a mobile or wireless casino solution”, or pay a “settlement fee” in exchange for transfer of the Domain Name. The same request was reiterated in the mail addressed on September 9, 2004.

The Panel therefore concurs with the views expresses in prior decision see i.a. Wolter Verwaltungs and Kanner Corporation v. Susan Yocom, WIPO Case No. D2004-0021, where the Respondent’s offer to transfer the domain name to the complainant for an unstated amount of money evidenced the respondent’s bad faith registration and use of the domain name, and finds Paragraph 4(a)(i) of the Policy applicable to the present procedure.

Furthermore the fact that the Respondent claims to be active in the same field than the Complainant - where the Complainant’s products enjoy a considerable reputation since years - is to be considered an additional circumstance evidencing bad faith.

In view of the above, the Panel finds that the Respondent registered and used the Domain Name in bad faith, according to Paragraph 4(a)(iii) of the Policy.

7. Decision

In light of the foregoing, the Panel decides that a) the Domain Name registered by the Respondent is identical to the Complainant’s trademarks, that b) the Respondent has no rights or legitimate interests in respect of the Domain Name and c) that the Domain Name has been registered and used in bad faith.

Accordingly, the Panel requires that the registration of the domain name <jamdatcasino.com > be transferred to the Complainant.

Luca Barbero
Sole Panelist

Dated: November 12, 2004