WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
National Hockey League v. Jean Lucas, Domcharme Group
Case No. D2016-0315
1. The Parties
The Complainant is National Hockey League of New York, New York, United States of America, represented by Greenberg Traurig, LLP, United States of America.
The Respondent is Jean Lucas, Domcharme Group, of Montreal, Canada.
2. The Domain Name and Registrar
The disputed domain name <nhl.net> (hereafter the “Domain Name”) is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2016. On February 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date the Registrar transmitted by email to the Center its verification response 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 February 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 13, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 14, 2016.
The Center appointed Jon Lang as the sole panelist in this matter on March 16, 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 Domain Name, <nhl.net>, was registered by the Respondent on March 19, 1999. Not much is known of the Respondent as it has not taken part in these proceedings. However, as a matter of public record, and as the Complainant points out, it has registered several other domain names and has had a number of UDRP decisions against it. These matters shall be dealt with further below.
The Complainant is the world’s premier professional hockey league and is followed by tens of millions of fans spanning more or less every country in the world. It has operated for over ninety-five years and consists of thirty member clubs, of which twenty-three are located in the United States and seven in Canada.
The Complainant also operates a website accessible at “www.nhl.com”, which it registered on October 18, 1994. It features general information regarding its member teams and their respective players, including statistics, schedules, TV and Internet broadcast and other information. The website also offers visitors the ability to purchase officially licensed products featuring the trademarks and logos of the Complainant and its member teams.
The Complainant owns several trademark registrations for its NHL trademark with the United States Patent and Trademark Office (“USPTO”). Many were registered prior to the registration of the Domain Name, including Registration No. 883,569 (with a registration date of December 30, 1969) and Registration No. 1,904,540 (with a registration date of July 11, 1995), both for the trademark NHL.
The Complainant also has rights in at least 160 trademark registrations for its NHL trademarks in 29 other countries, including the following registrations in Canada where Respondent is located: Registration No. TMA299293 (with a registration date of January 18, 1985), for NHL & design and Registration No. TMA460527 (with a registration date of July 26, 1996), for NHL.
5. Parties’ Contentions
The key contentions of the Complainant are as follows:
The Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights, Out of the almost 1 billion active websites on the Internet, the Complainant’s website, which prominently displays the Complainant’s NHL trademark, is the 420th most visited site in the United States and the 883rd most visited website in the world.
The Complainant’s trademarks have achieved worldwide fame and recognition and the public and trade recognize and rely upon these marks as identifying the Complainant and distinguishing it from other leagues, teams, products and services.
In addition to the Complainant’s several trademark registrations, it has very strong common law rights in its NHL and related trademarks.
The Domain Name is identical to the Complainant’s NHL mark. The mere addition of the generic Top-Level Domain (“gTLD”) “.net” fails to produce a domain name distinct from the Complainant’s mark. The Domain Name is identical and confusingly similar to the Complainant’s NHL mark, as well as the Complainant’s domain name, <nhl.com>.
The Respondent has no rights or legitimate interests in respect of the Domain Name.
The Domain Name, which the Respondent is holding passively, was registered long after the Complainant established its rights in its NHL trademark. Such passive holding does not constitute a bona fide or legitimate business use, or a legitimate noncommercial or fair use.
The Respondent is not commonly known by the Domain Name, has not used or prepared to use it in connection with a bona fide offering of goods or services, and has not been authorized, licensed or otherwise permitted by the Complainant to register and/or use the Domain Name.
There are no prior trademark applications or registrations in the name of the Respondent for any mark incorporating NHL, anywhere in the world. Moreover, nothing in the WhoIs information relating to the Domain Name indicates that the Respondent is commonly known by the designation NHL and thus it has no legitimate reason to use the Domain Name.
The Respondent lacks rights or legitimate interests in the Domain Name.
The Domain Name was registered and is being used in bad faith. The Respondent had actual knowledge of the Complainant’s NHL mark, as evidenced by its use in the Domain Name. The mere fact that the Respondent has registered a domain name which incorporates the famous trademark of a well-known company, is alone sufficient to give rise to an inference of bad faith.
At the time of registration, the Respondent had at least constructive knowledge of the Complainant’s mark due to its many registrations with the USPTO and in Canada, as well as worldwide.
The passive holding of the Domain Name by the Respondent demonstrates the Respondent’s bad faith. The Respondent has shown no evidence of good faith use of the Domain Name.
The Complainant is not aware of any use of NHL as a trademark in the United States and Canada, in any way other than in connection with the Complainant. Accordingly, the Domain Name is so obviously connected with the Complainant and its services that its very use by someone with no connection to the Complainant suggests opportunistic bad faith.
The Policy provides that registration of a domain name to prevent the owner from using its trademark in a domain name is evidence of bad faith where it is part of a pattern of such conduct. There have been at least ten decisions against the Respondent under the Policy in the last five years, involving instances of the Respondent registering domain names incorporating well-known marks in which it was found not to have any rights or legitimate interests, four of which have occurred in the last year. This number is likely to increase significantly as the Respondent is also the owner of hundreds of domain names that are identical to, or incorporate, the well-known marks of other companies including: Abercrombie & Fitch, Armani, Amazon.com, Laura Ashley, Banana Republic and Barnes & Noble.
In view of these other registrations, it is clear that the Respondent was aware of the Complainant’s rights in its NHL trademark when the Domain Name was acquired.
On December 30, 2015, the Complainant’s counsel sent, by email, a letter to the Respondent advising it of the Complainant’s rights and demanding that it cease and desist from all use of the Complainant’s NHL mark, and immediately transfer the Domain Name to the Complainant. The Respondent has never responded to the Complainant’s letter, which also suggests that the Domain Name has been registered and is being used in bad faith.
The Respondent’s conduct constitutes bad faith registration and use of the Domain Name under the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed.
A. Identical or Confusingly Similar
The Complainant clearly has both registered and long-standing unregistered rights in the NHL trademark for the purposes of the Policy. The Panel is satisfied that it is a trademark that has acquired worldwide fame.
Ignoring the gTLD “.net” (as the Panel may do for comparison purposes), the Domain Name consists only of the Complainant’s NHL mark.
The Panel finds that the Domain Name is identical to the Complainant’s NHL mark for the purposes of the Policy and thus this element of paragraph 4(a)(i) of the Policy has been established.
B. Rights or Legitimate Interests
By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and, as such, the burden of production shifts to the Respondent to come forward with appropriate arguments or evidence demonstrating that it does, in fact, have such rights or legitimate interests. The Respondent has not done so and, accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Before doing so, however, the Panel will consider whether such a finding would, in any way, be inappropriate.
A respondent can show it has rights to, or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with a complainant. For instance, it can show that it has been commonly known by the domain name, or that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark in issue.
Here, however, the Respondent is not known by the Domain Name. Further, no obvious positive use is being made of the Domain Name, let alone legitimate noncommercial or fair use. Importantly, however, any noncommercial or fair use must be without intent to mislead, but it is likely in fact that a false impression of association with the Complainant would readily arise on any positive use, (and would be known to so arise), given that the Domain Name is identical to the Complainant’s trademark.
A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services (and was doing so before any notice of the dispute). Again, there is no evidence of any positive use, let alone an offering of goods or services, bona fide or otherwise. In any event, it is difficult to conceive of an offering of goods or services (using the Domain Name) without creating an impression of association with the Complainant.
In short, given that the Domain Name is identical to the Complainant’s famous NHL trademark, it seems inconceivable that any legitimate use could be made of the Domain Name, at least without permission of the Complainant. Any use is likely to result in an impression of association with the Complainant. No explanation for registration has been provided by the Respondent and it seems very unlikely that it would have chosen the Domain Name unless intending to seek, at some point, some advantage by creating an impression of association with the Complainant.
There is no evidence before this Panel that the Respondent has rights or legitimate interests in the Domain Name. The contentions of the Complainant, by which it has made out a prima facie case that the Respondent has no rights or legitimate interests, have not been contradicted or challenged, or cast into doubt by the brief analysis above. Accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Policy sets out a number of grounds upon which a finding of bad faith registration and use may be based. It is a non-exhaustive list, but a very useful guide as to what might constitute bad faith registration and use. One of the grounds described is the presence of evidence of the respondent registering the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct. Given the Respondent’s undoubted appreciation of the importance of trademarks, it is inevitable that it would have been aware of the Complainant’s NHL trademark and that registration of the Domain Name would make it impossible for the Complainant to reflect its mark in its own “.net” domain name. As to a pattern of conduct, this can involve multiple UDRP cases with similar fact situations or a single case where the respondent has registered multiple domain names which are similar to trademarks. The Complainant has annexed to its Complaint a list of UDRP decisions against the Respondent and the Panel is satisfied that a pattern of conduct does exists for the purposes of the Policy. The Panel should add that that the Complainant has also annexed a list of several domain names in respect of which the Respondent is the registrant or with which it is otherwise concerned, that one could anticipate may be the subject of future UDRP complaints.
The fact that the Respondent is passively holding the Domain Name does not prevent a finding of bad faith registration and use. Many UDRP panels have found that lack of active use of a domain name e.g. to resolve to a website, does not prevent a finding of bad faith. UDRP panels must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. As paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition states on this issue “The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa”.
The Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith. It should add that, even if there were no pattern of conduct established, in the circumstances of this Complaint, including the fame of the Complainant’s trademark, the Respondent’s other registrations and its failure to respond to the cease and desist letter sent on behalf of the Complainant or to participate in these proceedings, the Panel would have no hesitation in finding against the Respondent on this issue.
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, <nhl.net>, be transferred to the Complainant.
Date: March, 29, 2016