WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sportsdirect.com Retail Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Anwar Rehman
Case No. D2016-0926
1. The Parties
The Complainant is Sportsdirect.com Retail Limited of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Reynolds Porter Chamberlain LLP, United Kingdom.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama / Anwar Rehman of Alberta, Canada, self-represented.
2. The Domain Names and Registrars
The disputed domain names <sports-direct.online>, <sportsdirect.club>, <sportsdirect.website> and <sportsdirect.site> are registered with GoDaddy.com, LLC. The disputed domain names <sportsdirect.space> and <sportsdirect.xyz> are registered with NameCheap, Inc. (the "Registrars").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 9, 2016. On May 9, 2016, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On May 10, 2016, the Registrars transmitted by email to the Center their verification responses confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on May 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 8, 2016. By request of the Respondent on June 3, 2016, an automatic extension of the Response due date was granted until June 12, 2016 under paragraph 5(b) of the Rules. A late Response was filed with the Center on June 14, 2016.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on June 22, 2016. 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 a sports retailer which was established in 1982 that has over 665 stores worldwide. The Complainant operates also an online retail store at "www.sportsdirect.com".
The Complainant is the owner of the trademark SPORTSDIRECT.COM registered in Canada, the United States, the European Union, and several other jurisdictions. In addition the Complainant has registered on August 3, 2012 the trademark No. 2597152B SPORTSDIRECT in the United Kingdom.
The Respondent owns an Inmigration service in Canada.
The disputed domain names <sports-direct.online>, <sportsdirect.club>, <sportsdirect.website> and <sportsdirect.site> were registered on January 6, 2016.
The disputed domain names <sportsdirect.space>, <sportsdirect.xyz> were registered on January 26, 2016.
The disputed domain names resolve to parking websites.
5. Parties' Contentions
The Complainant states that the disputed domain names are identical to Complainant's registered trademark SPORTSDIRECT because they combine the Complainant's trademark and the generic Top-Level Domains ("gTLDs") ".online", ".club", ".website", ".site", ".space" and ".xyz".
With respect to the lack of rights and legitimate interests of the Respondent in the disputed domain names, the Complainant states that:
- there is no evidence that Respondent is or has been known by any of the disputed domain names.
- there is no evidence of the Respondent's use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services.
- on February 22, 2016, Complainant´s representative wrote to the Respondent to request the transfer of the disputed domain names <sports-direct.online>, <sportsdirect.club>, <sportsdirect.website> and <sportsdirect.site>. At that time, none of the disputed domain names directed to an active website. The Respondent later registered the disputed domain names <sportsdirect.space> and <sportsdirect.xyz>. At the time of submitting this complaint, all of the disputed domain names direct to parking websites.
- the intention of the Respondent must be to take advantage of the disputed domain names' association with the business of the Complainant, which demonstrates that there is no legitimate interest in respect of the disputed domain names.
With respect to bad faith registration and use, the Complainant states that:
- the Complainant's trademarks predate the registration of the disputed domain names. Therefore at the time of registration the Respondent must have been aware of the reputation and goodwill of the Complainant and its trademarks SPORTSDIRECT.COM and SPORTSDIRECT. This is particularly the case with respect of the two disputed domain names registered on February 26, 2016, since the Respondent had already been put on notice of the Complainant´s trademark.
- the Respondent has a pattern of registering domain names incorporating well-known third party trademarks in which the Respondent has no rights. This is a pattern of conduct that is expressly forbidden by paragraph 4(b)(ii) of the Policy. In this sense, Complainant points out that the domain names registered by the Respondent include, by way of example the following: <mastercardsplus.com, <watchbbcnews.com>, <watchcnnnews.com>, <watchlivebbc.com>, <nofeevisacard.com>, <listencnn.com>, <visavsamex.com>, <visavsmastercard.com>, <mastercardorvisa.com>, <listenbbc.com> and <myonlinegoogle.com>.
- the Respondent is in the business of "cybersquatting" domain names with the intention of confusing consumers and diverting them from well-known and highly trafficked websites, to websites owned by the Respondent.
- the Respondent is clearly in the business of registering domain names incorporating well-known third party brands with the intention of selling, renting or otherwise transferring the disputed domain names to their owners for valuable consideration in excess of any documented out-of-pocket costs.
- In response to Complainant´s letter dated February 22, 2016 requesting the transfer of the disputed domain names <sports-direct.online>, <sportsdirect.club>, <sportsdirect.website> and <sportsdirect.site>, the Respondent offered to sell those disputed domain names for a sum vastly in excess of its out-of-pocket expenses. According to evidence submitted with the Complaint, the Respondent quoted a value of USD 25,000 in relation to the domain name <sportsdirect.online>. The Complainant states that because this domain name is, in fact, already owned by the Complainant, it is assumed that the Respondent intended to make reference to the disputed domain name <www.sports-direct.online>.
- Shortly after the Complainant legal representative's letter dated February 22, 2016 was sent to the Respondent, the Respondent registered the disputed domain names <sportsdirect.space> and <sportsdirect.xyz>. These additional domain names were registered on February 26, 2016 and the Respondent chose to conceal its identity through the use of a Privacy shield.
- the disputed domain names are not in use. This demonstrates that the Respondent has no reason to register the disputed domain names other than to act as a passive cyber-squatter. Irrespective of whether or not the disputed domain names are actively being used, they are considered to be "in use" for the purposes of establishing bad faith where the Respondent is passively cybersquatting.
The Complainant requests transfer of the disputed domain names.
A late Response was filed with the Center on June 14, 2016.
The Respondent requests the Panel to terminate this case and allow the Respondent to keep all the disputed domain names.
The Respondent states the following in his answer that:
- the Complaint´s allegation are only on an assumption basis.
- the Respondent states that he had no intention to sell the disputed domain names or to compete with the Complainant.
- the Respondent wanted to open a sporting tickets and sporting events business. The Complainant's trademark is only for retail and the Respondent has no intention to use the disputed domain names for retail.
- the Complainant has no presence in Canada and its website has no option to choose the Canadian currency (Canadian Dollar).
- Canada and more particularly Respondent's province Alberta is well-known for hockey. The Respondent has decided to open an online "Sports Ticket Brokerage" and to that end the Respondent started communications with an existing Ticket Broker to be partner and expand the business to Western Canada.
- the Respondent also express that due to certain personal issues he is behind with his sports tickets business but he may start in early August.
- the Respondent have checked the Complainant's webpage before registered the disputed domain names and was confident that he was not infringing any trademark rights because his plan is not to open a retail market to compete with the Complainant.
- the Complainant is an established organization but that does not mean that it owns the right to register domain names in all the new gTLDs. If these domain names were that important for the Complainant, the Respondent wonders why the Complainant did not register them as soon as they were available to register.
- There are several domain names in well-known gTLDs consisting of "sportsdirect" which are registered by other individuals or businesses, and the Complainant has not acted against them.
- the Respondent never ever sold any domain names for money and none of its present domain names are listed for sale with any domain name brokerage or at the Registrars' websites.
- None of the domain names listed in section 26.4 of the complaint are active as of today.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain names, the Complainant must demonstrate each of the following:
(i) the disputed domain names are identical 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 names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The Panel will accept the late submission in order to allow the Respondent defense in this case.
A. Identical or Confusingly Similar
There is no dispute that the Complainant has trademark rights in SPORTSDIRECT, nor is there any dispute that the disputed domain names <sportsdirect.club>, <sports-direct.online>, <sportsdirect.site>, <sportsdirect.space>, <sportsdirect.website> and <sportsdirect.xyz> are confusingly similar to the trademark SPORTSDIRECT if one discounts the gTLDs ".club", ".online", ".site", ".space", ".website" and ".xyz" as is typically done for the purposes of the first element analysis.
The only difference with Complainant's SPORTSDIRECT mark is the addition of a hyphen in the disputed domain name <sports-direct.online>. The addition of this sign in this disputed domain name does not dispel confusion.
The Respondent stated that that the Complainant's trademarks are only registered to be used in relation to retail services. However, the Panel notes that the Policy does not require the trademarks to be protected in certain classes (Comcast Corporation v. Tonic Marketing Ltd., WIPO Case No. D2015-1617).
The Policy requires that the Complainant has rights in a trademark; it does not require that the trademark be registered or used in the Respondent's country, or that the Complainant have operations in the Respondent's country. However in this case the Panel notes that Complainant's trademark is also registered in Canada.
The Panel concludes that the disputed domain names are confusingly similar to a trademark in respect of which Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Although these examples are presented in terms of a showing that could be made by the Respondent, the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the consensus among panels is that a complainant need only show a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy, after which the burden of production shifts to the respondent to rebut complainant's prima facie case (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1).
Here, the Complainant has made the necessary prima facie showing. In particular, the Complainant alleges that the Respondent is not known by the disputed domain names, nor has the Respondent offered evidence of use or demonstrable preparation for using the disputed domain names. In fact the Complainant is arguing a passive use of the disputed domain names.
The Panel is of the view that the Respondent's mere assertions to demonstrate preparations for using the disputed domain names are just conclusory statements. The consensus view is that these statements, unsupported by evidence which merely repeat or paraphrase the criteria or scenarios under the Policy, would typically be insufficient to establish a valid defense (WIPO Overview 2.0, paragraph 4.7). In sum, the Respondent's clear lack of use of the disputed domain names and the fact that the Respondent is willing to sell the disputed domain names at a price is a clear contradiction with his alleged intention to start a business at them.
The Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
With respect to bad faith registration, the Panel finds that the evidence shows that the Respondent knew of the Complainant's trademarks at the time of registering the disputed domain names.
The Respondent explains in his answer that he checked the Complainant's webpage before registering the disputed domain names and was able to verify that the Complainant's website was not operating in Canadian currency1. The Respondent did this in order to make sure that the Complainant was not operating in Canada. Thus, on the basis of the Respondent's assertions, it is clear that the Respondent was aware of the Complainant. In addition the Respondent registered the six disputed domain names using the Complainant's trademark in the same month. Two of the disputed domain names were registered using a WhoIs privacy service after Respondent received a cease and desist letter from the Complainant.
In response to the Complainant's letter dated February 22, 2016 requesting the transfer of the first four disputed domain names, the Respondent offered on March 7, 2016 to sell those disputed domain names for a sum vastly in excess of its out-of-pocket expenses. Respondent affirmed in his Response to having sent this email to the Complainant.
The email from Respondent clearly stated: "I am not willing to transfer these domain to your client for nothing. You may be aware that online will be millon dollars domain especially for online businesses and where the future trend is going .Club is another future hot name. Just www.sportdirect.online is over US$25,000. If your client is willing to buy these domains at future market value, I am willing to sacrifice".
It is true that Respondent mentioned the domain name <sportsdirect.online> and not <sports-direct.online> but from the circumstances of the case and the correspondence exchanged between the Parties it is obvious that the Respondent intended to make reference to <sports-direct.online> because the Complainant already owned the domain name <sportsdirect.online>.
There can be no doubt that, looking at the case as a whole, this statement must be viewed as an offer to sell the disputed domain names and reveals the Respondent's true intentions.
Thus it is the view of the Panel that the Respondent registered the disputed domain names primarily "for the purpose of selling them or otherwise transferring" them to the Complainant "for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name" as required by paragraph 4(b)(i) of the Policy.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been met.
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 names <sportsdirect.club> <sports-direct.online> <sportsdirect.site> <sportsdirect.space>, <sportsdirect.website> and <sportsdirect.xyz> be transferred to the Complainant.
Pablo A. Palazzi
Date: July 10 2016
1 Respondent asnwer states: "I do not see any presence in Canada. At their website, they do not have options to select even Canadian Currency. I have checked them out before registered the disputed domains and was confident that I am not violating any trade mark rights...".