WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lonsdale Sports Limited v. Ying Jun Wu / Wu Ying Jun

Case No. D2016-2042

1. The Parties

The Complainant is Lonsdale Sports Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), represented by Reynolds Porter Chamberlain LLP, United Kingdom.

The Respondent is Ying Jun Wu / Wu Ying Jun of Quanzhou, Fujian, China.

2. The Domain Names and Registrars

The disputed domain name <lonsdale.cc> is registered with HiChina Zhicheng Technology Ltd. The disputed domain names <lonsdale.club> and <lonsdale.top> are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn). Henceforth, <lonsdale.cc>, <lonsdale.club> and <lonsdale.top> shall be collectively referred to as the “Disputed Domain Names”.

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2016. On October 6, 2016, the Center transmitted by email to HiChina Zhicheng Technology Ltd. and Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) a request for registrar verification in connection with the Disputed Domain Names. On October 8, 2016, HiChina Zhicheng Technology Ltd. and Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center regarding the Registrar information, the Complainant filed an amended Complaint on October 13, 2016.

Between October 8 and October 11, 2016, several emails were received from the Respondent enquiring how to deal with this dispute. The Center acknowledged receipt of these email communications.

On October 12, 2016, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On October 13, 2016, the Complainant confirmed its request that English be the language of the proceeding. On the same day, the Respondent requested that Chinese be the language of the proceeding.

The Center verified that the Complaint together with the amended 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 in both Chinese and English of the Complaint, and the proceedings commenced on October 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 8, 2016. The Respondent did not submit any response to the contentions in the Complaint. On November 9, 2016, the Center informed the Parties that it would proceed with panel appointment.

The Center appointed Kar Liang Soh as the sole panelist in this matter on November 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 part of the Sports Direct group which includes the London Stock Exchange (FTSE 250) company and Sports Direct International Plc. The trademark LONSDALE has been in use since 1959. The first retail store under the trademark LONSDALE opened in London in 1960. Clothing and sports equipment under the trademark LONSDALE is presently licensed and sold worldwide. Products under the trademark LONSDALE has been worn by or associated with famous boxers like Muhammed Ali, Sir Henry Cooper, Sugar Ray Robinson, Carl Froch and Marc Diakiese. Such products are also sold online via the website “www.sportsdirect.com”, “www.lonsdale.com” and other country specific websites which offer international delivery including to China.

The Complainant owns many registrations for the trademark LONSDALE around the world including:

The Complainant is also the holder of 40 domain names incorporating the trademark LONSDALE, including <lonsdale.com> and <lonsdale.com.hk>. The trademark LONSDALE has been the subject of past domain name disputes (e.g., Lonsdale Sports Limited v Holger Doelle, WIPO Case No. D2016-1140).

There is very little information about the Respondent in this proceeding beyond the WhoIs information relating to the Disputed Domain Names. The Respondent appears to be an individual based in Quanzhou City, China. The Respondent appears to be the holder of at least 50 other domain name registrations. The Disputed Domain Names were all registered on June 9, 2016. By a letter dated August 16, 2016 to the Respondent, the Complainant demanded transfer of the Disputed Domain Names in exchange for payment of reasonable documented out-of-pocket costs. The Complainant did not receive a reply from the Respondent. As of September 30, 2016, all the Disputed Domain Names resolved to a parking page which states in Chinese and English: “This domain is for sale. Please contact us for details. Thank you.” By October 19, 2016, none of the Disputed Domain Names appear to resolve to any website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

a. The Disputed Domain Names are identical or confusingly similar to a trademark in which the Complainant has rights. The trademark LONSDALE is a highly recognizable and well-known brand around the world. The Disputed Domain Names combines the trademark LONSDALE in its entirety with Top-Level Domains (“TLDs”) “.top”, “.club” and “.cc” which are descriptive and compound confusion among customers and potential customers;

b. The Respondent has no rights or legitimate interests in respect 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. There is no evidence that the Respondent is commonly known by the Disputed Domain Names. At the time of the Complaint, the Disputed Domain Names directed users to pages which advertise the sale of the Disputed Domain Names. The Respondent intends to take advantage of the association of the Disputed Domain Names with the business of the Complainant; and

c. The Disputed Domain Names were registered and are being used in bad faith. The Complainant’s registrations for the trademark LONSDALE pre-date the registration of the Disputed Domain Names. The Respondent has a pattern of registering domain names incorporating well-known third party brands, namely, <buick.family>, <buick.work>, <hummel.vip>, <hummel.xin>, <gola.site> and <globalshoes.top>, demonstrating a pattern of conduct forbidden by paragraph 4(b)(ii) of the Policy. The Respondent is in the business of cybersquatting on domain names with the intention of confusing consumers and diverting them to the Respondent’s websites. The Disputed Domain Names were registered primarily for the purpose of selling, or otherwise transferring the registrations for valuable consideration in excess of out-of-pocket costs. The Respondent is not actively using the Disputed Domain Names and is passively cybersquatting. The Disputed Domain Names are so similar to the trademark LONSDALE that it is not possible to conceive plausible circumstances in which the Respondent could legitimately use the Disputed Domain Names. The Respondent’s actions suggest “opportunistic bad faith”.

B. Respondent

Although the Respondent acknowledged the dispute in relation to the Disputed Domain Names and requested Chinese be the language of the proceeding, the Respondent did not submit a response to the contentions of the Complainant.

6. Discussion and Findings

6.1 Language of the Proceeding

The Registration Agreements for the Disputed Domain Names are in Chinese. As such, the default language of the proceeding is Chinese. The Complainant has requested that English be adopted as the language of the proceeding instead. The Panel is empowered to grant the request pursuant to paragraph 10 of the Rules. Having considered the circumstances, the Panel orders that English be adopted as the language of the proceeding, with a comment that the Panel would have accepted the Respondent’s response in either English or Chinese.

In coming to this decision, the Panel considered the following factors:

a. The Complainant’s working language is English and has no working language of Chinese;

b. The Respondent did not file a response;

c. The websites resolved from the Disputed Domain Names as of September 30, 2016 contained well-formed grammatical English statements;

d. No apparent procedural benefit may be achieved by requiring that the Complaint be filed in Chinese, and there will likely be delay and additional costs arising should such requirement be imposed at this stage of the proceeding; and

e. While the Respondent indicated to the Center that it did not understand any other languages than Chinese, the Panel believes the Respondent is clearly aware of the proceeding and the Panel does not doubt that the Respondent has ready access to the Registration Agreements as well as Chinese language versions of the Policy and Rules. Moreover, all of the Center’s communications have been transmitted to the Respondent in Chinese and English explaining in detail the nature of the proceeding. Accordingly, the Panel believes the Respondent is well able to determine why and how he should respond to the Complaint.

6.2 Substantive Issues

In order to succeed, paragraph 4(a) of the Policy dictates that the Complainant must establish all of the following:

(i) The Disputed Domain Names are identical or confusingly similar to a trademark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and

(iii) The Disputed Domain Names were registered and are being used in bad faith.

A. Identical or Confusingly Similar

The evidence in the proceeding confirms that by virtue of various trademark registrations, the Complainant owns rights in the trademark LONSDALE in many jurisdictions. All the Disputed Domain Names patently incorporate the trademark LONSDALE in its entirety. The only difference between the Disputed Domain Names and the trademark LONSDALE is the addition of the TLDs “.cc”, “.club” and “.top”. In accordance with the consensus view of past UDRP panels as outlined in paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), TLDS are generally disregarded when comparing a domain name with a trademark. In the presence instance, disregarding the TLDs, the Disputed Domain Names are identical to the trademark LONSDALE and the first limb of paragraph 4(a) is accordingly established.

B. Rights or Legitimate Interests

It is the consensus view of past UDRP panels that a complainant only needs to establish a prima facie case of lack of rights or legitimate interests in a disputed domain name. Once a prima facie case is made out, the burden shifts to the respondent to show otherwise.

The Complainant has maintained that the Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Names in connection with a bona fide offering of goods or services. The Complainant has also asserted that the Respondent is not commonly known by the Disputed Domain Names. The Panel finds no evidence otherwise in this proceeding. It is noted that the Complainant did not expressly allege that the Complainant has neither authorized nor consented to the Respondent’s registration of the Disputed Domain Names. Nevertheless, the circumstances, not the least of all the Complainant’s objection to the registration of the Disputed Domain Names and the Complainant’s demand letter, strongly indicate that the Complainant has in fact neither given such authorization or consent. As such, the Panel is satisfied that there exists in the circumstances a prima facie case that the Respondent lacks rights to or legitimate interests in the Disputed Domain Names.

The Respondent has not filed any response to the contentions in the Complaint to deny or refute the prima facie case. In the absence of any evidence or explanation to the contrary, the prima facie case has not been rebutted. The Panel holds that the second limb of paragraph 4(a) of the Policy is also established.

C. Registered and Used in Bad Faith

Paragraph 4(b)(ii) of the Policy identifies an example of bad faith registration and use by a domain name registrant as follows:

“you have 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 you have engaged in a pattern of such conduct.”

The Complainant’s registrations for the trademark LONSDALE date back to at least as early as October 14, 2004. The Panel accepts the Complainant’s unrefuted claim that the trademark LONSDALE has been used extensively for many decades. The trademark LONSDALE does not appear to be an ordinary word in English. With such extensive history of use and trademark registrations, the Panel finds it most unlikely that the Respondent derived the Disputed Domain Names purely by coincidence. The reasonable conclusion, in the absence of evidence to the contrary, must be that the Respondent was aware of the trademark LONSDALE at the time of registering the Disputed Domain Names.

In addition, the Complainant has made very serious allegations that the Respondent has engaged in a pattern of conduct of registering domain names incorporating well-known third party brands, not the least of all the Disputed Domain Names. The Panel would expect a reasonable person in the shoes of the Respondent who may have been maligned would have issued a vehement denial. The absence of any response to the Complainant’s contentions leads the Panel to draw an adverse inference that the Respondent is unable to refute the allegations.

The Panel also finds it difficult to ignore the web pages resolved from the Disputed Domain Names which offer them for sale. Although it is inconclusive as to the price at which the Disputed Domain Names are offered for sale, it is inconceivable that the Respondent would go through the effort of incurring the cost of registering such a large number of domain names and offer them for sale only to recover out-of-pocket expenses.

In the light of the above, the Panel holds on a balance of probabilities that the third limb of paragraph 4(a) of the Policy is established.

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 Names <lonsdale.cc>, <lonsdale.club> and <lonsdale.top> be transferred to the Complainant.

Kar Liang Soh
ole Panelist
Date: December 6, 2016