WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Groupe Go Sport v. Jean Mclean / Whois Agent, Domain Whois Privacy Protection Service
Case No. D2016-2288
1. The Parties
The Complainant is Groupe Go Sport of Sassenage, France, represented by Nameshield, France.
The Respondent is Jean Mclean of Sezincote, United States of America (“United States”) / Whois Agent, Domain Whois Privacy Protection Service of Shanghai, China.
2. The Domain Names and Registrar
The disputed domain names <gosportfr.com> and <gosportsnl.com> (the “Domain Name(s)”) are registered with Shanghai Meicheng Technology Information Development Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2016. On November 10, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On November 11, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 14, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center transmitted an email to the Parties requesting the Complainant to amend a typo in the Complaint. The Complainant filed a first amended Complaint and a second amended Complaint on November 15, 2016.
On November 14, 2016, the Center transmitted an email to the Parties in English and Chinese regarding the language of the proceeding. The Complainant submitted a request for English to be the language of the proceeding on November 15, 2016. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint together with the first amended Complaint and the second 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 in English and Chinese, and the proceeding commenced on November 30, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 20, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 21, 2016.
The Center appointed Linda Chang as the sole panelist in this matter on December 28, 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, a French company founded in 1979, specializes in distributing sporting goods and owns three brands including Go Sport, Courir and Twinner. The Complainant is the owner of several GO SPORT trademarks such as International Registration No. 523820 registered on February 29, 1988, International Registration No. 702165 registered on August 6, 1998, International Registration No. 1221297 registered on June 19, 2014, and International Registration No. 1221790 registered on June 20, 2014.
The Complainant also operates websites at domain names incorporating the trademark GO SPORT such as <go-sport.com> since September 28, 1997.
The Respondent registered the Domain Names, <gosportfr.com> on May 18, 2016, which used to resolve to a website offering shoes, and <gosportsnl.com> on June 2, 2016, which did not resolve to any active website at the time of filing this Complaint.
5. Parties’ Contentions
The Complainant contends that the Domain Names include the entirety of the trademark GO SPORT, and the addition of terms “fr” and “nl” and the generic Top-Level Domain (“gTLD”) “.com” is not sufficient to escape the finding that the Domain Names are related to the Complainant. The Domain Names are therefore confusingly similar to the Complainant’s trademark GO SPORT.
The Complainant further contends that the Respondent is not affiliated with it nor authorized by it in any way to use its trademark. Thus the Respondent has no rights or legitimate interest in the Domain Names. Once the Complainant makes out a prima facie case that the Respondent lacks rights or legitimate interests, the Respondent carries the burden of demonstrating rights or legitimate interests in the Domain Names.
The Complainant finally contends that the Respondent knew of the Complainant since the Respondent is selling sport shoes on the website to which the Domain Name <gosportfr.com> resolves. The content of the website creates a false impression that the Respondent is in some way connected to the Complainant. With regard to the Domain Name <gosportsnl.com>, the Respondent has not used or made demonstrable preparations to use it given its inactive status. The Domain Names were therefore registered and are being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of the Proceeding
The Registrar confirmed that the Registration Agreements of the Domain Names are in Chinese, while the Complainant requested for English to be the language of the proceeding.
The Complainant’s arguments include that English is the most widely used language in international relations and one of the working languages of the Centre; that the Domain Names are formed of the association of English terms “go” and “sport” in Roman characters, instead of in Chinese script; that the website associated with the Domain Name <gosportfr.com> displays a content in French language and not in Chinese language; and that the use of Chinese being the language of the proceeding would impose a burden on the Complainant.
It is established practice to take paragraphs 10(b) and 10(c) of the Rules into consideration for the purpose of determining the language of the proceeding to ensure that the parties are treated with equality and that each of them is given a fair opportunity to present its case.
The Panel notices that the Respondent appears to be located in the United States, and the content of the website associated with the Domain Name <gosportfr.com> is displayed in French, not Chinese. The Panel further considers that the Complainant has submitted all documents in English, and additional expense and delay would likely be incurred if the Complaint is requested to be translated into Chinese.
Considering that the Respondent has been notified of the proceeding in both Chinese and English and given a fair opportunity to object to the use of English as the language of the proceeding but did not do so, the Panel finds that using English as the language of the proceeding would not be prejudicial to the Respondent in its ability to articulate the arguments for the case. The Panel thus determines the language of the proceeding shall be English and the decision will be rendered in English.
B. Identical or Confusingly Similar
The Complainant has produced sufficient evidence to prove that it is the registered proprietor of the trademark GO SPORT around the world.
The Panel finds the “.com” is not a distinguishing factor. The Panel further considers that the Domain Names consist of “gosport(s)” which reproduces the Complainant’s trademark GO SPORT in its entirety, and of the country code “fr” for France, and “nl” for Netherlands respectively.
The Panel agrees that the addition of the country codes “fr” and “nl” cannot avoid a finding of confusing similarity, but instead may reinforce the risk of confusion since Internet users are likely to mistakenly believe the Domain Names are registered by the Complainant for local business in France and Netherlands. Similarly, the addition of the single letter “s” in <gosportsnl.com> does not affect the Panel’s assessment given the prominence of the Complainant’s trademark in the Domain Name.
Accordingly, the Panel holds the Domain Names are confusingly similar to the Complainant’s trademark GO SPORT, and the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainant contends that the Respondent is not affiliated with it nor authorized by it in any way to use its trademark, and that the Complainant does not carry out any activity for nor has any business with the Respondent.
The Domain Name <gosportfr.com> used to resolve to a website offering for sale shoes which is competitive to the Complainant’s business. The Domain Name <gosportnl.com> was inactive at the time of filing this Complaint. Therefore the Panel does not consider the above legitimate noncommercial or fair use of the Domain Names under the Policy. Accordingly, the Panel determines that there is no indication that the Respondent may have rights or legitimate interests in respect of the Domain Names.
The Panel is satisfied that the Complainant has established prima facie evidence that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(c) of the Policy, and the burden of production shifts to the Respondent. See International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683. The Respondent however chose not to respond and prove its rights or legitimate interests in the Domain Names.
For all of the above reasons, the Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
D. Registered and Used in Bad Faith
Based on the evidence presented on the record, the Panel agrees that the Respondent knew or should have known of the trademark GO SPORT when registering the Domain Names. The Panel is not convinced that the Respondent’s choice of “gosport” is a random combination of the words “go” and “sport” and its only purpose is to reflect their generic meanings. This could be supported first by the addition of country code “fr” corresponding to France, the origin of the Complainant’s home country, and secondly by the Respondent’s use of the Domain Name <gosportfr.com> in operating a footwear retailing business, which competes with the Complainant.
Without opposite evidence from the Respondent, the Panel agrees that by using the Domain Name <gosportfr.com>, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its own website, by creating a likelihood of confusion with the Complainant’s trademark GO SPORT as to the source, sponsorship, affiliation, or endorsement of its own website or of a product or service on the website.
The Domain Name <gosportsnl.com> resolves to an inactive page. The Panel finds that the Respondent engages in passive holding of the Domain Name, which satisfies in the context of the case the requirements as clarified in the landmark case Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and constitutes bad faith.
Moreover, the Respondent used a privacy service to hide its true identity. The use of privacy shield is not in itself constitutive of bad faith, but if combined with all the above-mentioned elements, the Panel determines that it conveys a finding of bad faith.
In light of the above facts and reasons, the Panel therefore determines that the Domain Names were registered and are being used in bad faith pursuant to the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <gosportfr.com> and <gosportsnl.com>, be transferred to the Complainant.
Date: January 18, 2016