WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sportsdirect.com Retail Limited v. Nicole Missell and Dreamless Brand
Case No. D2015-1946
1. The Parties
Complainant is Sportsdirect.com Retail Limited of London, United Kingdom of Great Britain and Northern Ireland ("UK"), represented by Reynolds Porter Chamberlain LLP, UK.
Respondents are Nicole Missell and Dreamless Brand of Glen Waverley, Victoria, Australia, self-represented.
2. The Domain Name and Registrar
The disputed domain name <sportsdirect.online> (the "Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 29, 2015. That same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 29, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondents are as 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 Respondents of the Complaint, and the proceedings commenced on November 16, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 6, 2015. On that date, Respondents sent an email to the Center in response to the Complaint.
The Center appointed Harrie Samaras as the sole panelist in this matter on December 17, 2015. 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
Complainant is a sports retailer operating under the SPORTSDIRECT and SPORTSDIRECT.COM brands. It is part of the well-known Sports Direct group of companies, which includes Sports Direct International Plc. Sports Direct was established in 1982 and has over 665 stores worldwide. Sports Direct International Plc is a publically listed company, listed on the London Stock Exchange (FTSE 100), i.e., it is one of the 100 largest companies on the London Stock Exchange. According to the 2015 Annual Report, Sports Direct's global revenue was in excess of GBP 2.8 billion, with online retail sales alone in excess of GBP 383 million.
Complainant's online retail store at "www.sportsdirect.com" is accessible throughout the world and has currency options for countries including Australia, New Zealand, United States of America ("USA") and China. In addition, the website offers users the opportunity to view country specific websites for countries worldwide, including Australia and New Zealand.
The "About Us" section of Complainant's website states: "Alongside our retail outlets, www.sportsdirect.com provides a full multi-channel approach to improve your shopping experience. The site gives you access to a huge range of quality sports apparel being sold by our retail partners, which you can arrange to have delivered to your door from our extensive online catalogue."
Sports Direct also operates a number of gyms under the name Sports Direct Fitness.com (Sports Direct Fitness).
Complainant owns many trademark registrations worldwide for the marks SPORTSDIRECT and SPORTSDIRECT.COM, for example, Registration No. 1465930 (registered October 3, 2013) for SPORTSDIRECT.COM in Australia and Registration No. 2597152B (registered August 3, 2012) for SPORTSDIRECT in the UK (the "SPORTSDIRECT Mark" or the "Mark").
Complainant also owns over 500 domain names containing the terms "sportdirect", "sportsdirect", "sports-direct" including as indicated above <sportsdirect.com>.
Respondents registered the Domain Name on September 6, 2015.
5. Parties' Contentions
The Domain Name is identical and/or confusingly similar to the Marks. It combines Complainant's famous mark SPORTSDIRECT in its entirety with the new generic Top-Level Domain (gTLD) ".online". The gTLD functions as a descriptive term of the online service compounding confusion amongst customers and/or potential customers. That ".online" has been added to SPORTSDIRECT does not remove the identity of the Domain Name with the Complainant's Mark as the gTLD suffix is generally disregarded for this comparison.
Complainant has not found any evidence that Respondents, whether individually as a business or other organization, commonly have been known by the Domain Name. Complainant also has not found any evidence of Respondents' use 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. On September 10, 2015, Complainant's counsel wrote Respondents on behalf of Complainant requesting the transfer of the Domain Name. At that time the Domain Name did not resolve to an active website. Since that date, presumably in response to the counsel's letter, Respondents have set up a holding page referring to "Sports Direct Trainers" and a website which indicates it is "launching soon". It is submitted that this is a cynical attempt by Respondents to give the misleading impression of a legitimate use but there is no evidence to suggest that there is any substance behind the statements made on the website. Should Respondents launch the website, this would support Complainant's case as it demonstrates the potential for confusion, particularly in light of Complainant's established Sports Direct leisure and fitness business. Respondents' intention must be to take advantage of the association of the Domain Name with Complainant's business, which demonstrates that there is no legitimate interest in respect of the Domain Name.
Respondents registered and used the Domain Name in bad faith for the following reasons: (1) Complainant's registered rights pre-date registration of the Domain Name. When registering the Domain Name Respondent must have been aware of the reputation and goodwill of Complainant and its Marks; (2) Respondent has a pattern of registering domain names incorporating well-known third-party brands, in which Respondent has no rights. This conduct is expressly forbidden by paragraph 4(b)(ii) of the Policy (e.g., <menshealth.online>; <afr.online>; <theage.online>; and <jewishnews.online>). It is self-evident Respondents are in the business of using the ".online" gTLD to "cyber-squat" domain names with the intention of confusing consumers and diverting them from well-known and highly trafficked websites, to websites owned by Respondents; and/or with the intention of selling, renting or otherwise transferring the disputed domain names to the well-known brands for valuable consideration in excess of any documented out-of-pocket costs; and (3) the Domain Name is not in active use, demonstrating that Respondents have no reason to register the Domain Name other than to act as a passive cyber-squatter.
Complainant requests that the Panel transfer the Domain Name to Complainant.
The Domain Name has not been used for pay-per-click advertising or to promote any product or service directly or indirectly relating to Complainant's products or services, nor have Respondents targeted Complainant for sale or offered the Domain Name for sale generally and Respondents have no intention of doing any of these. Even though Respondents have incurred charges and costs for development, when they were first notified about the Complaint, they put all activities on hold out of respect for the process.
Citing to other domain names using the Marks owned by other third parties (e.g., <sportsdirect.com> and <sportsdirect.com.au>) Respondents question whether Complainant has lodged proceedings against them.
The sunrise process and procedure allows trademark holders in advance the opportunity to register domain names corresponding to their trademarks before the domain names under the new gTLD program are made available to the public. Based upon registered domain names using the Marks, it appears that Complainant only registered domain names once they knew that others have an interest in running a business or service online – a reactive rather than proactive mindset, not conducive to fair business.
A basic search today on an Australian government agency database shows many company and business names containing "Sports Direct". They, like Respondents, surely had never heard of Complainant.
Respondents' state the following questions in the Response:
"1. Does the global trademark sportsdirect.com include covering Australia in all possible categories outside of sporting goods and was this trademark approved prior to the domain name sportsdirect.online being registered?
2. Is there a global trademark for sportsdirect.online and was it registered by SPORTSDIRECT.com prior to sportsdirect.online domain name being registered.
3. Does the trademark sportsdirect.com also include the word sportsdirect on its own and without logo?
4. Does the sportsdirect.com trademark cover all countries including Australia and made prior to sportsdirect.online being registered?
5. Was sportsdirect.com being marketed directly to the Australia market before sportsdirect.online was registered as we had never heard of the business at all. If this is the case and the complainant has invested considerable on a marketing campaign in Australia, can you please share with us what that marketing was made up of?
6. Does the company sportsdirect.com have a trademark covering all categories across the board without exception?
7. Does the complainant have a trademark on infomercial and information website services that are created to inform the community on personal trainers and training venues. These offerings are to be at no cost to the consumer. If the answer to this point is no, we have not breached any trademark relating to the complainant."
The accusatory and unfounded accusations about some of the other domain names have no bearing on this case. Before registering the Domain Name Respondents bought an online platform, giving them the ability to launch 7 websites, 6 of these sites will be used as community service portals. In response to Complainant's accusations, Respondents have not yet launched the IT company has not yet made the purchase available to Respondents. The most preposterous claim has been that because Respondents are not running or wanting to establish a profit generating commercial entity, the suggestion is that a commercial venture has more rights than that of a charity or nonprofit entity. Those who cannot afford expensive personal trainers and associated services need to be lead to better health, that is much of what we are wanting to achieve with the Domain Name.
Respondents understand Complainant has a number of trademarks that they have shared with Respondents in the way of documentation. They include the SPORTSDIRECT name (stylised) and a number of specified trademark classes. These have not been breached.
Some of the information in the Complaint is not completely correct and designed to mislead and misrepresent. For example the Complaint suggests Complainant offers country specific websites for countries worldwide, including Australia and New Zealand, implying specific websites for Australia. Respondents request Complainant to point out such sites. Also, Respondent states Complainant implies that a company has the right to own any and all country domain names to protect against confusion but Respondents' concept is not a profit-generating concept nor will Respondents be offering any products for sale.
Before registering the Domain Name Respondents searched the Australian Government intellectual property database and there is not a single trademark in Australia for SPORTS DIRECT. Respondents state they took every precaution to do the right thing. The Domain Name was registered in good faith and Respondent have not breached any law, regulation or their credibility.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that a complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by the respondent is 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has demonstrated its rights in the mark SPORTSDIRECT by virtue of its Registration No. 2597152B (registered August 3, 2012) in the UK. Those rights substantially predate the date Respondents registered the Domain Name on September 6, 2015. The only difference between the Domain Name and Complainant's SPORTSDIRECT Mark is the gTLD ".online". The Panel finds that the Domain Name is identical to Complainant's SPORTSDIRECT mark insofar as SPORTSDIRECT is incorporated in its entirety in the Domain Name and it is well-established that gTLDs such as ".com", ".org" or, in this case, ".online", may be disregarded when determining if there is identity or confusing similarity. Where a domain name incorporates complainant's mark, this is sufficient to establish that the domain name is identical or confusingly similar for purposes of the Policy. See Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
Complainant alleges that Respondents have no rights or legitimate interests in the Domain Name insofar as Complainant has not found any evidence Respondents have been (individually, as a business or other organization) commonly known by the Domain Name. Respondents have not produced any evidence to the contrary.
Also, Complainant argues that it has not found any evidence of Respondents' use 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. On September 10, 2015, Complainant's counsel wrote Respondents requesting the transfer of the Domain Name. At that time the Domain Name was not connected to an active website. Since that date Respondents set up a holding page referring to "Sports Direct Trainers" and a website which states it is "launching soon". Complainant submits the holding page is an attempt to give the misleading impression of a legitimate use but there is no evidence to suggest that there is any substance behind the statements made on the website. They also argue that should Respondents launch the website, this could cause confusion, particularly in light of Complainant's established Sports Direct leisure and fitness business. Complainant argues that Respondents' intention must be to take advantage of the Domain Name's association with Complainant's business, which demonstrates that there is no legitimate interest in respect of the Domain Name. The Panel finds that Complainant has set forth a prima facie case of no rights or legitimate interests that Respondents must rebut.
Respondents have provided lots of questions but not much useful evidence. Respondents claim that before registering the Domain Name they bought an online platform that gives them the capability to launch 7 websites and that 6 of these sites will be used as community service portals. Respondents further claim that they have yet to launch their websites because their IT provider has not made the purchase available to them. They do admit that much of what they want to achieve with the Domain Name is a website for people who cannot afford expensive personal trainers and associated services.
The Panel finds that Respondents have not shown that they have rights or legitimate interests to use the SPORTS DIRECT Mark under the Policy. In short, they chose a Domain Name that is identical to Complainant's registered mark without any authority from Complainant to use it. There is no evidence that Respondents have any basis to claim prior rights in the SPORTS DIRECT Mark. Furthermore, Respondents have confirmed in this proceeding what is evident from their holding page that they intend to launch a website in the fitness field, specifically for personal trainers and associated services. Fitness is the same field that Complainant has been in for many years and it also uses personal trainers. Despite Respondents' protestations to the contrary, this is not a bona fide use of the SPORTS DIRECT Mark under the Policy.
For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
The Panel concludes that Respondents have registered and used the Domain Name in bad faith. Sports Direct was established in 1982 and has over 665 stores worldwide. Sports Direct International Plc is a public company, listed on the London Stock Exchange (FTSE 100). According to the 2015 Annual Report, Sports Direct's global revenue was in excess of GBP 2.8 billion, with online retail sales alone in excess of GBP 383 million.
Complainant's online retail store at "www.sportsdirect.com" is accessible throughout the world and has currency options for countries including Australia, New Zealand, USA and China. In addition, the website offers users the opportunity to view country specific websites for countries worldwide, including Australia and New Zealand. Also, Complainant operates a number of gyms under the name "Sports Direct Fitness.com" (Sports Direct Fitness). Considering the evidence of Complainant's substantial use and strong reputation particularly in the fitness field, combined with the fact that Respondents registered the Domain Name years after Complainant established its rights in the SPORTS DIRECT Mark worldwide, Respondents have not persuaded the Panel that they were not aware of Complainant and its rights and reputation in the Mark at the time they registered the Domain Name.
Furthermore, there is no credible basis upon which it may be assumed that Respondents registered the Domain Name and continued to use it for any reason other than to take commercial advantage of the Complainant's reputation in the Mark insofar as the Domain Name is identical to Complainant's Mark, Respondents have no rights or legitimate interests in the Domain Name, and they have admitted that they are seeking to pursue a business in fitness, Complainant's field of business.
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 name <sportsdirect.online> be transferred to Complainant.
Date: December 31, 2015