WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
JD Sports Fashion PLC v. Whoisguard Protected, Whoisguard Inc / Dannette Bristol
Case No. D2016-1823
1. The Parties
The Complainant is JD Sports Fashion PLC of Lancashire, United Kingdom of Great Britain and Northern Ireland ("UK"), represented by Urquhart-Dykes & Lord LLP, UK.
The Respondent is Whoisguard Protected, Whoisguard Inc of Panama City, Panama / Dannette Bristol of Luzarches, Georgia, United States of America ("USA").
2. The Domain Name and Registrar
The disputed domain name <jdsportsmall.com> is registered with eNom, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 8, 2016, referring to two domain names. On September 9, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 12, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The verification response from the Registrar furthermore disclosed that there were different registrants for the two disputed domain names. Accordingly, the Center sent an email communication to the Complainant on September 15, 2016, providing the registrant and contact information disclosed by the Registrar for the two disputed domain names and inviting the Complainant to submit an amendment to the Complaint adding the Registrar-disclosed registrants, and/or file a separate Complaint for one of the disputed domain names. The Complainant filed an amended Complaint on September 16, 2016, including only one of the domain names.
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 of the Complaint, and the proceedings commenced on September 20, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 10, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 11. Due to an administrative oversight, the Notification of Complaint was re-sent to all Parties on October 13, 2016, adding one more email address and one fax number. The Respondent was also given an additional five days to respond. The Respondent again did not submit any response. Accordingly, on October 19, 2016, the Center sent out an email informing the Parties that the Panel Appointment Process had commenced.
The Center appointed Andrew F. Christie as the sole panelist in this matter on November 1, 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-fashion and outdoor brands retail company based in Manchester, UK. It was founded in 1981 and originally traded as "John David Sports" from a single store in Bury, Lancashire, before becoming known as "JD Sports" and opening multiple stores across the UK. It has been listed on the London Stock Exchange since October 1996 and is a member of the FTSE 250 Index. Today the Complainant has over 900 stores across Europe and Malaysia, offering for sale its own brand labels, and globally recognized brand labels such as Nike, Adidas and The North Face. The Complainant also operates successful e-commerce websites using domain names registered in various European country-codeTop‑Level Domains, including <jdsports.co.uk>, <jdsports.fr> and <jdsports.nl>.
The Complainant is the owner of numerous trademark registrations across the world for the trademark JD SPORTS, including European Union Trade Mark No. 008182611 filed on March 26, 2009, and registered on December 13, 2011. The Complainant is also the owner of European Union trademark registrations for the trademark JD (filed March 26, 2009; registered December 13, 2011) and for the trademark KING OF TRAINERS (filed December 18, 2002; registered October 11, 2005).
The disputed domain name was registered on August 2, 2016. The Complainant has provided screenshots, stated to have been obtained on September 8, 2016, of the pages of the website to which the disputed domain name then resolved. These screenshots show that the website was then advertising and offering for sale sports footwear, predominantly of the well-known brands that the Complainant also sells, and was clearly displaying the Complainant's registered trademarks JD and KING OF TRAINERS.
5. Parties' Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights because it consists of its registered trademark JD SPORTS in its entirety and without modification, plus the suffix "mall", which is a descriptive term for a retail outlet. The addition of the suffix is not sufficient to avoid confusion between the disputed domain name and the trademark of the Complainant.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) the disputed domain name is being used in relation to a website advertising and offering for sale predominantly well-known sports footwear, and displaying at the top of the webpage the Complainant's other registered trademarks JD and KING OF TRAINERS; (ii) the Complainant has no business or other relationship with the Respondent, and has not consented to the registration of the disputed domain name or its subsequent use by the Respondent; (iii) the Respondent is not commonly known by the disputed domain name; (iv) the Respondent is not making legitimate or noncommercial or fair use of the disputed domain name; and (v) the Respondent is using the disputed domain name, as well as registered trademarks and copyright material owned by the Complainant, with the intent of misleading consumers and/or harming the reputation enjoyed by the Complainant.
The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) the Respondent has, in breach of the Registration Agreement, provided false contact information to the Registrar, because the city and the postcode of the Respondent in the WhoIs do not correspond to a valid US address; (ii) given the reputation the Complainant enjoys in the trademark JD SPORTS, it is hard to believe that the disputed domain name was registered, or is being used, in good faith, without the Respondent having been aware of the Complainant and its JD, JD SPORTS and KING OF TRAINERS trademarks; (iii) by virtue of the longstanding and widespread use of the trademarks JD, JD SPORTS and KING OF TRAINERS in Europe, members of the public would believe that the website to which the disputed domain name resolved was operated by the Complainant or in association with the Complainant; (iv) the use of the disputed domain name amounts to a misrepresentation to consumers of an association with the Complainant and its goodwill in the trademarks JD, JD SPORTS and KING OF TRAINERS, which will result in an infringement of the trademarks of the Complainant; (v) the overall appearance of the website resolving from the disputed domain name, including the carousel, the layout of all the links and tabs, the use of registered trademarks, the graphics used and the color scheme, is either identical or very similar to the websites of the Complainant, such that it is a very deliberate attempt to copy the Complainant's websites and create an unauthorized association with them for the commercial gain of the Respondent.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name incorporates the whole of the Complainant's registered trademark JD SPORTS, with the addition of the descriptive term "mall" and the generic Top-Level Domain (gTLD) identifier ".com". The distinctive component of the disputed domain name is "jdsports", which is identical to the Complainant's JD SPORTS trademark. The Panel finds the addition of the term "mall" does not lessen the inevitable confusion of the disputed domain name with the Complainant's JD SPORTS trademark. This is because "mall" is a descriptive term for a retail outlet and the Complainant's business is the retail selling of sportswear under the JD SPORTS trademark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its JD SPORTS trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainant shows that the disputed domain name was used to resolve to a website which looked very similar to the Complainant's websites, was offering for sale the same types of goods as the Complainant offers, and did so using, without authorization, the Complainant's JD and KING OF TRAINERS trademarks. According to the present record, therefore, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The disputed domain name was registered many years after the Complainant first registered its JD SPORTS trademark. The evidence on the record provided by the Complainant with respect to its use of the JD SPORTS trademark and the content of the website to which the disputed domain name resolved, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time the disputed domain name was registered, the Respondent knew of the Complainant's JD SPORTS trademark and knew that it had no rights or legitimate interests in the disputed domain name. Furthermore, the evidence on the record provided by the Complainant with respect to the Respondent's use of the disputed domain name indicates that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainant. For all these reasons, the Panel is satisfied that the disputed domain name has been registered and is being used in bad faith.
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 <jdsportsmall.com> be transferred to the Complainant.
Andrew F. Christie
Date: November 13, 2016