WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sport 2000 Brand AG v. MegaWeb.com Inc d/b/a sport2000
Case No. D2013-1890
1. The Parties
The Complainant is Sport 2000 Brand AG of Zug, Switzerland, represented by Convey Srl, Italy, and Dr. Jochen M. Schaefer, Germany.
The Respondent is MegaWeb.com Inc d/b/a sport2000 of Wilmington, Delaware, United States of America.
2. The Domain Name and Registrar
The disputed domain name <sport2000.com> (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 6, 2013.
The Center transmitted its request for registrar verification to the Registrar on November 6, 2013. The Registrar replied the same day, stating that it had not received a copy of the Complaint, that it was the Registrar and the Respondent was the current registrant of the Domain Name, that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applied to the Domain Name, that the Domain Name would expire on September 27, 2014, that the Domain Name was on Registrar Lock and would remain locked subject to scheduled expiry, and that the registration agreement was in English. The Registrar did not dispute that the Respondent had submitted in the registration agreement to the jurisdiction of the courts where the Registrar was located. The Registrar also provided the full contact details held on its WhoIs database in respect of the Domain Name.
The Center verified that the Complaint satisfied the formal requirements of the 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 13, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was December 3, 2013. The Response was filed with the Center on November 30, 2013. The Complainant sent a supplemental submission to the Center by email on December 4, 2013.
The Center appointed Jonathan Turner as the sole panelist in this matter on December 18, 2013. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Complaint complied with formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant is a member of the SPORT 2000 Group, which has 3,500 retail outlets in 25 countries using the name “SPORT 2000” and an annual turnover of more than EUR 5.1 billion. The Complainant has numerous registered trademarks for logos of “Sport 2000”, some of which were filed in the 1970s. By 1998 the Complainant’s group had thousands of shops and it sponsored the French football team which won the World Cup in July 1998.
The Complainant’s group has numerous domain names with Second-Level Domains (“SLDs”) consisting of or containing the string “sport2000” that are directed to its websites. It has advertised the brand “SPORT 2000” since the 1980s in connection with sponsorship campaigns for various sports including volleyball, basketball, rugby, winter sports, water sports and, particularly, football. It sponsors several top teams in leading leagues and has been the official sponsor of the French national football team for more than 20 years.
The Respondent registered the Domain Name in September 1998 and has used it to display sponsored links to third party websites. In the original registration, the registrant was identified as MegaWeb.com Inc. This was changed to sport2000 in May 2010.
The Domain Name has been advertised for sale on the Sedo and DomainTools websites. In response to an email from the General Director of Sport 2000 International GmbH (but not identified as such) in September 2011 indicating that he would like to buy the Domain Name, the Respondent replied “$125,000. - USD”. In response to further emails in November 2012 from representatives of the Complainant, identifying themselves as such and indicating that the Complainant was extremely interested in buying the Domain Name, the Respondent replied “$350,000. – US Dollars, or best offer”.
The Complainant filed a complaint with the Center against the Respondent in respect of the Domain Name in December 2012. That complaint was rejected by a decision of January 28, 2013 (Sport 2000 Brand AG v. sport2000, WIPO Case No. D2012-2449). The panel held that the Domain Name was confusingly similar to a mark or marks in which the Complainant had rights, but that the Complainant had not provided sufficient evidence that the Respondent did not have a legitimate interest in the Domain Name by reason of its use for a web page containing pay-per-click links related to its descriptive signification. The panel found it unnecessary to determine whether the Domain Name had been registered and was being used in bad faith.
5. Parties’ Contentions
A. Complainant
(i) Re-filing
The Complainant accepts that this is a re-filing of its previous complaint and seeks to justify it on the ground that the Respondent has since changed the platform generating the pay-per-click links displayed on the website located by the Domain Name. According to the Complainant, the website now displays other links that have a serious negative effect on its business, by promoting direct competitors, unconnected third party portals which are not related to the Domain Name, and rogue websites selling counterfeit products.
The Complainant further contends that it could not have been aware, when it filed the previous complaint, of the mendacious content of the response to that complaint, and that it was not able to disabuse the panel because its request to the panel to invite a submission in reply was declined. The Complainant also relies on historic WhoIs data which it now has at its disposal, confirming the true identity of the Respondent and its registration of numerous other domain names in evident bad faith.
The Complainant submits in addition that the previous panel was misled by the Respondent’s claim that its use was purely descriptive and overlooked evidence in the previous complaint to the contrary; and that the previous panel should not have accepted the unsigned response. Finally, the Complainant points out that since the previous complaint, the Trademark Clearinghouse has accepted that “Sport 2000” is preponderant in the overall impression conveyed by its registered marks.
(ii) Laches
In its supplemental filing the Complainant submits that the defence of laches is only available to a defendant who acts in good faith and primarily if not exclusively where substantial damages are claimed, neither of which applies in this case. (The admissibility of this supplemental filing is discussed below.)
(iii) Identical or confusingly similar to a mark in which the Complainant has rights
The Complainant contends that the Domain Name is identical or confusingly similar to its SPORT 2000 marks in which it has registered and unregistered rights.
(iv) Rights or legitimate interests
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant states that it has never authorized the Respondent to use the Domain Name and that the Respondent is not an authorized reseller or dealer. The Complainant argues that the combination “Sport 2000” is not generic, that the links displayed on the Respondent’s website are not restricted to matters described by the phrase “Sport 2000” or even the word “sport”, and that three of the links during 2013 were to websites selling counterfeit products, although two of these sites had been shut down by the time this Complaint was filed. The Complainant also points out that in earlier years, the Domain Name was used for sponsored links unrelated to sports.
The Complainant further alleges that the Respondent is not commonly known by the Domain Name or by any corresponding name. According to the Complainant, the identification of the Respondent as “sport2000” in the registration of the Domain Name is a spurious gimmick, seeking to provide a bogus defence in the event of a dispute, and in breach of the registration agreement.
(v) Bad faith
The Complainant contends that the Domain Name was registered and is being used in bad faith. The Complainant points out that the Respondent MegaWeb.com Inc has registered numerous domain names that are identical or very similar to well-known marks and directed them to web pages displaying sponsored links using the same advertising platform. The Complainant notes that in a number of cases the name of the registrant has similarly been changed to reflect the domain name rather than the Respondent’s own name. The Complainant also draws attention to six previous cases where the Respondent MegaWeb.com Inc has been found to have registered and used domain names in bad faith.
The Complainant points out that it had registered trademarks in respect of logos consisting predominantly of “Sport 2000” many years before the Domain Name was registered in September 1998; that it already had thousands of shops by this date; and that the French national football team, which it sponsored, had just won the World Cup.
The Complainant alleges that by the sponsored links the Respondent has intentionally promoted the Complainant’s direct competitors as well as portals with no connection to sport, and that it has used and is using the Domain Name intentionally to attract Internet users to its web page for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the page.
The Complainant suggests that using the pay-per-click platform enables the Respondent to defray the costs of maintaining this and numerous other domain names while it tries to sell them, and that the latter is the Respondent’s real purpose. The Complainant points out that the Domain Name has been offered for sale on portals and that the Respondent replied to expressions of interest in purchasing the Domain Name by quoting figures greatly in excess of its out-of-pocket costs, with the figure going up substantially when the Respondent was told that the Complainant was very interested in acquiring it.
Finally, the Complainant suggests that the Respondent tried to take some remedial action by changing the design of its web page on becoming aware that the Complainant was monitoring it.
(vi) Remedy
The Complainant requests a decision that the Domain Name be transferred to it.
B. Respondent
(i) Re-filing
The Respondent states that the Complainant has not presented in this Complaint any information that was not reasonably available to the Complainant prior to the previous case. The Respondent observes that changing the design of the web page was immaterial. It notes that the parties, the Domain Name and the mode of use of the Domain Name (for pay-per-click links) are all the same.
The Respondent points out that its response was accepted in the previous case by the panel even though it was not formally signed and that this is common practice and consistent with the objective of the UDRP of providing an informal, quick and easy process. The Respondent contends that there was no serious misconduct on its part in the previous case and that all of its evidence was true; nor any misconduct by the panel, which was fully entitled not to accept the Complainant’s late filing, particularly when the Complainant had had so many years to prepare the complaint.
The Respondent also notes that the previous panel did not find it appropriate to record that a re-filed complaint might be accepted if certain conditions were met.
(ii) Laches
The Respondent submits that the Complaint should be barred by laches. It notes that the Domain Name was registered over 15 years ago and that the previous complaint was filed over 14 years after the registration, which it describes as a substantial delay by any measure and an eternity by Internet time. The Respondent points out that under paragraph 15(a) of the Rules the Panel shall decide a complaint on the basis of the Policy, the Rules and any rules and principles of law that it deems applicable, which would include laches.
The Respondent submits that the Complainant must have been aware of the Respondent’s registration of the Domain Name in July 1999 when the Complainant registered the domain name <sport2000international.com> and must have been reminded of it in 2006 when the Complainant registered <sport2000.at> and <sport2000.eu>; and yet the Complainant did not make any complaint of infringement or assert any rights to the Domain Name.
(iii) Identical or confusingly similar to a mark in which the Complainant has rights
The Respondent does not specifically address the question of whether the Domain Name is identical or confusingly similar to a mark in which the Complainant has rights. However in relation to the issue of bad faith the Respondent asserts that many entities are using the term “Sport 2000” and that no entity has an exclusive right to this generic word combination.
(iv) Rights or legitimate interests
The Respondent refers to the finding of the panel on the previous complaint that it has rights or legitimate interests in respect of the Domain Name.
(v) Bad faith
The Respondent denies that it registered the Domain Name in bad faith. It states that it did not and could not know of the Complainant’s existence until the Complainant wrote to the Respondent trying to buy the Domain Name. According to the Respondent, people visited its website for information about sports. The Respondent points out that even now there is no word trademark for “SPORT 2000” in the United States. As mentioned above, the Respondent also asserts that this phrase is used by other parties and is generic.
6. Discussion and Findings
A. Re-filing
As a panel observed in Sensis Pty Ltd., Telstra Corporation Limited v. Yellow Page Marketing B.V., WIPO Case No. D2011-0057,
“The Policy itself is silent on the question of refiled complaints (that is, complaints involving the same parties and domain names). There is no express prohibition against refiling complaints, and the Policy does not state any explicit standards for accepting or rejecting refiled complaints for consideration by a new panel. It is conceivable that a well-funded complainant could simply refile successive complaints until it found a panel willing to order the transfer of the disputed domain name. This would not be a fair burden to impose on respondents, it would not be an efficient use of the resources of the dispute resolution service provider, and it would not promote consistency and predictability in UDRP decisions.”
The panel went on to note that
“… paragraph 5(a) [sic] of the Rules, cited above, allows the panel to consider ‘any rules and principles of law that it deems applicable.’ UDRP panels have dismissed some refiled complaints after referring to widely accepted legal principles such as res judicata (preclusion of identical claims), judicial efficiency, and the fundamental fairness of not imposing on respondents the burden of replying to repetitious complaints, sometimes expressed as a principle of “natural law”, “fair process”, or “due process”. Such principles, as well as common exceptions to the doctrine of res judicata, are found in both common law and civil law jurisdictions, and with application to civil, criminal, administrative, and arbitral proceedings …”
Paragraph 4.4of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) sets out the consensus view of UDRP panels on the circumstances in which a refiled case can be accepted in the following terms:
“A refiled case may only be accepted in limited circumstances. These circumstances include when the complainant establishes in the complaint that relevant new actions have occurred since the original decision, or that a breach of natural justice or of due process has occurred, or that there was other serious misconduct in the original case (such as perjured evidence). A refiled complaint would usually also be accepted if it includes newly presented evidence that was reasonably unavailable to the complainant during the original case.
“In certain, highly limited circumstances (such as where a panel found the evidence in a case to be finely balanced, and that it was possible that the future behavior of the respondent might confirm bad faith registration and use after all), a panel in a previous case may have found it appropriate to record in its decision that, if certain conditions were met, a future refiled complaint may be accepted. Where this has occurred, the extent to which any such previously-stipulated panel conditions may have been met in any refiled complaint may also be a relevant consideration in determining whether such refiled complaint should be accepted.
“A re-filing complainant must clearly indicate the grounds allegedly justifying the refiling of the complaint. The provider with which such refiled complaint has been filed has responsibility for determining if, prima facie, the refiling complainant has indeed pleaded grounds which might justify entertaining the refiled complaint. An affirmative determination is a precondition for provider acceptance of the refiled complaint, and for panel determination of the refiling request and any decision on the merits. A re-filing complainant’s failure to clearly identify that its complaint is a re-filing of an earlier UDRP complaint may constitute a material omission for the purpose of any panel assessment of reverse domain name hijacking.”
The Panel agrees with these principles and it is clearly important for there to be consistency on an issue of this nature. The Panel will therefore apply these principles to the present case.
The Complainant has clearly met the procedural requirements set out above of identifying the Complaint as a re-filing and setting out the grounds on which it seeks to justify the re-filing.
Most of the points made in the present Complaint, including many of those set out in the Complainant’s grounds for re-filing, could have been made, and indeed were made, in the previous complaint. In particular, the previous complaint showed that the Domain Name resolved to a website which displayed sponsored links to the Complainant’s direct competitors and contained further evidence that this website also displayed sponsored links to unrelated websites, including websites relating to pornography and gambling. The previous complaint also drew attention to the true identity of the Respondent, its registration of other domain names apparently in bad faith, and its use of the name “sport2000” in the domain name WhoIs record allegedly to assist a bogus defence of the registration.
However, there was no allegation or evidence in the previous complaint that the sponsored links included links to websites for the sale of counterfeit products. Nor is it suggested by the Respondent that such links were displayed on its web page before the previous complaint and hence that such evidence was reasonably available to the Complainant when that complaint was filed. The Panel concludes that this evidence was not reasonably available to the Complainant at the time of the previous complaint.
As discussed further below, the Panel considers this new evidence to be relevant and significant. Applying the principles set out in paragraph 4.4 of WIPO Overview 2.0 cited above, the Panel accepts the re-filing and endorses its admission by the Center.
B. Complainant’s supplemental submission
It is necessary next to consider whether to admit the Complainant’s supplemental filing of December 4, 2013. As the panel stated in The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447:
“Under the Policy and the Rules, parties have no right to submit additional arguments or evidence. However, the Panel may, in its sole discretion, request further statements or documents from the parties under paragraph 10 of the Rules; and a party’s request may be regarded as an invitation to the Panel to exercise this discretion.
“The principles which should be applied in exercising this discretion have been considered in numerous cases decided under the Policy and Rules; see e.g. the decisions of WIPO Panels in WIPO Case No.s. D2000-0166 <plazahotel.com>, D2000-1151 <goldline.com>, D2000-1571 <tdwatergouse.com> et al., D2000-0270 <htmlease.com> and, recently, D2003-0229 <pepsibabies.com> et al. The principles adopted and confirmed in these decisions are that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimise prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.
“These principles are based on the purpose of the Policy and Rules of providing an expeditious and relatively inexpensive procedure for determining a certain type of domain name dispute, in which each party is entitled to make just one submission. One of the matters which the Panel has to bear in mind is that the admission of a further submission from one party may lead the other party to submit a further document in reply, which may lead to a further submission by the first party, and so on, thereby compromising the procedural economy sought to be established by the Policy and the Rules.”
Further decisions to the like effect are identified at paragraph 4.2 of WIPO Overview 2.0.
In this case, the Complainant first seeks to rebut an allegation in the Response that the name “Sport 2000” is used by a number of third parties, by showing that the examples identified by the Respondent relate in fact to use by or with the consent of the Complainant or are obsolete or in a different field or concern a different mark (paragraphs 1-3 of the supplemental submission). The Panel considers that the Complainant could not have anticipated that the Respondent would rely on these particular examples. Although this material is of limited relevance, the Panel decides to admit this part of the supplemental submission. On the other hand, since it is of limited relevance and since the Respondent had the opportunity to investigate the examples which it put forward earlier, the Panel does not find it necessary to afford the Respondent an opportunity to reply to the supplemental submission in this respect.
The next matter addressed in the Complainant’s supplemental submission (paragraph 4) concerns the allegation in the Complaint that the Respondent’s web page showed a link using the words “donne annunci”, indicating online dating with women in Italian. The Respondent contends that this link was generated through the user’s browsing history and the Complainant seeks to reply that it cleared its browsing history before accessing the web page. In the Panel’s view this evidence is immaterial. The Panel intends to discount this allegation in the Complaint because an allegation to this effect could have been made in the previous complaint. On the other hand, if the point were not discounted, it would not matter whether the link was displayed to users with or without browsing histories: misleading either category could be relevant in considering whether the registration is abusive within the meaning of the UDRP. The Panel therefore does not admit this part of the Complainant’s supplement submission.
The next matter addressed in the Complainant’s supplemental submission (paragraph 5) concerns laches. The UDRP does not mandate consideration of laches. The Panel considers that, if it is to be raised, it is a matter to be raised by the respondent, and that a complainant should not be expected to address it in the complaint. In these circumstances, the Panel considers it right to admit the Complainant’s supplemental submission in relation to laches. On the other hand, since the points made by the Complainant are general points which could reasonably have been anticipated by the Respondent when it decided to invoke laches, the Panel does not consider it necessary to afford the Respondent a further opportunity to reply to them.
Finally, in paragraph 6 of the supplemental submission the Complainant seeks to emphasise its allegation, already made in the Complaint, that the Respondent has adopted a fake identity. Applying the principles set out above, the Panel does not admit this part of the Complainant’s supplemental submission.
C. Laches
The UDRP does not contain any specific provision regarding laches, delay, prescription or limitation. It is true that paragraph 15(a) of the Rules requires a panel to decide the complaint “in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. However, one would have expected the authors of the UDRP to have included a specific provision had they intended laches or the like to give rise to a separate, substantive defence.
Furthermore, the requirement of paragraph 4(a)(ii) of the UDRP, that the respondent has no rights or legitimate interests, necessarily takes into account considerations that would also be relevant to a defence of laches or the like. This is particularly evident from the illustration in paragraph 4(c)(i) of the UDRP, which refers to the situation in which the registrant of a domain name has used it or made demonstrable preparations to use it in connection with a bona fide offering of goods or services before notice of a dispute. On the one hand, the existence of the requirement in paragraph 4(a)(ii) of the UDRP makes a separate defence of laches or the like unnecessary to secure just results. On the other hand, allowing a separate defence of laches or the like would be liable to conflict with this requirement and to undermine the consistency in the treatment achieved by applying it to situations in which there has been delay on the part of the complainant.
Panels have generally concluded that there is no separate defence of laches or the like, as noted at paragraph 4.10 of WIPO Overview 2.0. This Panel agrees in particular with the view expressed by the panel in Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011:
“The Respondent argues that the Complaint should be denied because the Complainant has allowed the Domain Name to be used unchallenged for fifteen years:
‘At some point, a domain name registrant is entitled to quiet enjoyment of his domain name, free from the fear that a trademark owner can take it from him by a UDRP.’
“The parties in the current proceeding are both located in the United States, where courts recognize the equitable doctrine of laches, which can result in the dismissal of a complaint for undue delay in asserting legal claims. However, in the United States, the defense of laches typically bars the recovery of damages incurred before the filing of a lawsuit, and courts have concluded that the rationale behind the doctrine of laches does not militate against injunctive relief in a trademark action that seeks to avoid future confusion in the marketplace. See 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition (4th ed. 2005) §31:10, p. 31-35 and cases cited therein. The remedies under the Policy are similarly injunctive rather than compensatory in nature, and the focus is on avoiding confusion in the future as to the source of goods or services. Thus, UDRP panels have generally declined to apply the doctrine of laches. See, e.g., Progman Consulting Oy v. Whois Watchdog, WIPO Case No. D2010-1393 (‘It is by now well established that trademark doctrines of laches or estoppel have not been incorporated into the Policy’); The E.W. Scripps Company, supra (the Policy does not contemplate a defense of laches, which is inimical to the Policy’s purposes); see also cases cited in the Index of WIPO UDRP Panel Decisions, sec. III(G)(1)(c).
“The Respondent cites a recent UDRP decision, The New York Times Company v. Name Administration Inc. (BVI), NAF Claim No. 1349045. There, the panel rejected the complainant’s contentions that the respondent had no rights or legitimate interests in the disputed domain name, and that the respondent had registered the domain name in bad faith, because the panel found that ‘Respondent’s rights are senior to Complainant’s.’ The panel also concluded that ‘the circumstances of this case are the type that support a decision for the Respondent based on laches.’ The panel opined that ‘the doctrine of laches should be expressly recognized as a valid defense in any domain dispute where the facts so warrant,’ on the theory that an administrative proceeding offering an essentially equitable remedy (transfer of a disputed domain name) should also recognize equitable defenses such as laches.
“The Panel in the current proceeding declines to endorse this approach. As noted above, the Policy offers a limited remedy to avoid future confusion in the marketplace, and it does not contemplate that such a remedy would be unavailable because of delay in instituting a Policy proceeding. However, the Panel observes that lengthy delays in seeking legal or administrative remedies can often have the effect of eroding or undermining the complainant’s arguments with respect to the respondent’s rights or legitimate interests in the disputed domain name, or the respondent’s alleged bad faith in registering and using the domain name. The Panel considers it more appropriate to address such issues squarely within the terms of paragraphs 4(a)(ii) and (iii) of the Policy, rather than analyzing them under the equitable doctrine of laches.”
This Panel concludes that the Respondent cannot rely on laches or the like as a separate defence to the Complaint. It is therefore necessary to consider whether the three requirements of a valid complaint, set out in paragraph 4(a) of the UDRP, have been established in all the circumstances of the case.
D. Identical or confusingly similar to a mark in which the Complainant has rights
The Panel finds that the Complainant has registered trademark rights in logos containing “Sport 2000”. The Panel also finds that the Complainant has unregistered rights in these logos and in the combination “Sport 2000” as such for the purpose of the Policy. In the Panel’s view, this combination is not wholly descriptive, even though each of the elements “sport” and “2000” has a descriptive signification. Furthermore, it is clear that there has been very extensive use of the combination as a mark in numerous countries. The Panel has no doubt that this use has been such as to give rights in the mark SPORT 2000 under applicable unfair competition laws.
The Panel further finds that the Domain Name is confusingly similar to these marks. A similar conclusion was reached by the previous panel and neither party has adduced any evidence casting any doubt on it. In any case, the Panel is satisfied that many Internet users would assume that the Domain Name identifies a website of the Complainant by reason of its similarity to the Complainant’s marks.
The first requirement of the UDRP is established.
E. Rights or Legitimate Interests
The previous panel concluded that the Complainant had not established that the Respondent had no rights or legitimate interests in respect of the Domain Name, since the registration and trade in domain names containing generic words and their use to locate web pages displaying pay-per-click links genuinely relating to their generic character can constitute a legitimate use of them, as indicated in paragraph 2.6 of WIPO Overview 2.0.
The position taken by many UDRP panels was summarized by the panel in Havanna S.A. v. Brendan Hight, Mdnh Inc, WIPO Case No. D2010-1652, as follows:
“Complainant argues that a domainer operating a domain name linked to a link farm parking page to generate income through PPC advertisements can per se not have a right or legitimate interest in the domain name. Prior decisions under the UDRP show there may well be a legitimate interest if the domain name is a generic word or a geographic indicator, provided it is not used to trade on the trademark owner’s goodwill. See, Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 ‘[a]lthough PPC landing pages appear to provide little societal benefit, mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141, that does not mean that they automatically violate the Policy […] when the links on the PPC landing page ‘are based on the trademark value of the domain names, the trend in UDRP decisions is to recognize that such practices generally do constitute abusive cybersquatting. See, e.g., Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006 (PPC landing page not legitimate where ads are keyed to the trademark value of the domain name); The Knot, Inv. v. In Knot we Trust Ltd, WIPO Case No. D2006-0340 (same); Brink’s Network, Inc. v. Asproductions, WIPO Case No. D2007-0353 (same)’”.
This Panel has some doubt as to whether the direction of a descriptive domain name to a page of automatically generated links, involving no investment and producing no goodwill attached to the domain name, gives rise to a right or legitimate interest in the domain name within the meaning of paragraph 4(a)(ii) of the UDRP. However, if it does, as the previous panel found, then the right or legitimate interest is of a very slight and precarious character, given the lack of investment by the registrant and limited societal benefit provided by such use.
In this Panel’s view, a right or legitimate interest under paragraph 4(a)(ii) of the UDRP can be lost as well as gained by a respondent’s conduct. The present tense is used in this provision, suggesting that a right or legitimate interest in the past which no longer exists or has not been retained by the respondent does not suffice. It would be strange if a respondent could immunize itself from complaint for all time by (for example) using the domain name or a corresponding name for a short period for a bona fide offering of goods or services before reverting to use in bad faith. One would certainly expect a complaint to succeed where a former owner, partner or distributor of a business that owns and uses a particular mark has registered and is using a corresponding domain name in bad faith, even though it once had (but no longer has) a right or legitimate interest in the mark.
Where a respondent has made a significant bona fide investment creating a substantial goodwill of its own in good faith under the domain name or a corresponding mark, the right or legitimate interest may well survive a minor lapse in conduct. However, in this Panel’s view, where the right or legitimate interest is merely based on the direction of a descriptive domain name to a page of automatically generated links, it is of such slight character that it is liable to be lost by any unfair trading which is more than de minimis.
The Respondent has not disputed the Complainant’s specific evidence that, since the determination of the previous complaint, the web page located at the Domain Name has displayed links to websites trading in counterfeits of well-known brands identified by these links. Furthermore, there is no suggestion that the Respondent took any steps to avoid the generation of such links or that it has now taken any steps to forestall the presence of such links on the web page in the future.
The Panel regards this as unfair trading which is more than de minimis and such as to terminate any right or legitimate interest that the Respondent previously had by virtue of its use of the Domain Name for a web page containing sponsored links referable to any descriptive character.
The Panel also accepts the Complainant’s evidence that the Respondent is not commonly known by the Domain Name and that the Complainant has not consented to the Respondent’s registration or use of the Domain Name. It is not disputed that the Respondent is not making noncommercial use of the Domain Name.
In all the circumstances, the Panel concludes that the Respondent now has no rights or legitimate interests in respect of the Domain Name and that the second requirement of the UDRP is now satisfied.
F. Registered and used in bad faith
The previous panel did not make any finding on the third requirement for a successful complaint under the UDRP, that the Domain Name was registered and is being used in bad faith. In view of the conclusions reached by this Panel on the first two requirements, it is now necessary to address this issue.
It is clear from the last sentence of paragraph 4(a) of the UDRP that the burden of proof on this requirement, as well as on the other requirements of the UDRP, falls on the Complainant. The consensus view of UDRP panels is that the standard of proof is on the balance of probabilities, as recorded at paragraph 4.7 of WIPO Overview 2.0, so that the Complainant must show that it is more likely than not that the Domain Name was registered and is being used in bad faith.
The Panel notes that by the time the Domain Name was registered, the Complainant’s group already had thousands of shops and that it sponsored the French football team which had just won the World Cup. Despite the Respondent’s denial, this Panel considers it more likely than not that the Respondent was aware of the Complainant and its use of the mark SPORT2000 when the Respondent registered the Domain Name. The Panel considers that the Respondent’s denial is undermined by the improbability of its claims in its Response in the present proceeding that it did not know and could not know of the existence of the Complainant until the latter wrote trying to buy the Domain Name 14 years after the registration.
The Panel further notes that the Respondent has registered numerous domain names identical or similar to well-known marks and that several of these have been held to be abusive registrations, made and used in bad faith, in other decisions under the UDRP. The Panel also takes into account the fact that the Domain Name has been offered for sale.
In all the circumstances, the Panel finds on the balance of probabilities that the Respondent registered the Domain Name primarily for the purpose of sale to the Complainant for valuable consideration in excess of its out-of-pocket costs. This constitutes evidence of registration and use in bad faith under paragraph 4(b)(i) of the UDRP.
In addition, the Panel finds that by using the Domain Name the Respondent has intentionally attempted to attract Internet users to its web page for commercial gain, in the form of click-through commissions on sponsored links, by creating a likelihood of confusion with the Complainant’s marks as to the source of this web page. In this regard, it is well-established that it is irrelevant that most Internet users would realize on viewing the Respondent’s web page that it is not a web page of the Complainant. Having landed on this page as a result of confusion with the Complainant’s marks, at least some consumers are liable to be tempted to click on a link, thereby enabling the Respondent to profit from the confusion. This constitutes evidence of registration and use in bad faith under paragraph 4(b)(iv) of the UDRP.
Taking into account all of the evidence provided by the parties, the Panel concludes that the Domain Name was registered and is being used in bad faith. The third requirement of the UDRP is satisfied.
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 Domain Name <sport2000.com> be transferred to the Complainant.
Jonathan Turner
Sole Panelist
Date: January 1, 2014