WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sportsdirect.com Retail Limited v. Emanuele Terracina

Case No. D2017-1162

1. The Parties

The Complainant is Sportsdirect.com Retail Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Reynolds Porter Chamberlain LLP, United Kingdom.

The Respondent is Emanuele Terracina of Rome, Italy.

2. The Domain Name and Registrar

The disputed domain name <sportsdirect.cloud> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2017. On June 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 June 19, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 9, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 10, 2017.

The Center appointed Christian Schalk as the sole panelist in this matter on July 14, 2017. 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.

The Panel has reviewed the record and confirms the Complaint’s compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with paragraph 2(a) and (b) of the Rules. The language of the proceeding is English.

4. Factual Background

The Complainant is a sports retailer and forms part of the Sports Direct group of companies. The Complainant was established in 1982 and has over 665 stores worldwide which operate under the brands SPORTSDIRECT / SPORTSDIRECT.COM. The Complainant’s online retail store “www.sportsdirect.com” has specific country websites, including websites directed to consumers living in Italy, France, Germany, New Zealand, Switzerland and in the United States of America. According to the 2016 Annual Report, the Complainant’s global revenue was in excess of GPB 2.9 billion.

The Complainant owns trademark rights in SPORTSDIRECT in numerous jurisdictions of the world, including:

- United Kingdom trademark registration No. 2597152B for SPORTSDIRECT and SPORTS DIRECT, registration date August 3, 2012, covering goods and services in International Classes 9, 18, 25, 28 35 and 39;

- European Union trademark registration No. 5427547 for SPORTSDIRECT.COM (logo), registration date September 29, 2011, covering services in International Classes 35, 36, 39 and 41;

- International trademark registration No. 1138595 for SPORTSDIRECT.COM, registration date April 17, 2012, covering services in International Class 35.

- The Complainant also owns several hundreds of domain names, which contain sportdirect, sportsdirect and “sports-direct”.

According to the material brought before the Panel the disputed domain name was owned in March 2017 by an entity based in Milan, Italy. The Complainant had sent a cease and desist letter to this entity on March 21, 2017 to which the Complainant did not receive any response. This entity had the same email address as the Respondent. After the disputed domain name had expired, the Respondent registered it on May 20, 2017.

The disputed domain name does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain name is identical and/or confusingly similar to the Complainant’s registered trademarks SPORTSDIRECT and/or SPORTSDIRECT.COM. The disputed domain name features the Complainant’s trademarks in their entirety. As far as the generic Top-Level Domain (“gTLD”) “.cloud” is concerned, the Complainant argues that its addition to the Complainant registered trademarks does not take away the identity or confusing similarity between the disputed domain name and the Complainant’s registered trademarks. The Complainant asserts that this principle, which has been developed in the context of gTDLs like “.com”, applies also to the new gTLDs such as “.cloud”. The Complainant cites in this context Sportsdirect.com Retail Limited v. Tong Ya Jun, WIPO Case No. D2015 -1069 and Sportsdirect.com Retail Limited v. Nicole Missell and Dreamless Brand, WIPO Case No. D2015 -1946, in order to support its arguments.

The Complainant alleges also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant argues in this context that there is no evidence of the Respondent’s use of, or demonstrable preparations to use the disputed domain name, or a name corresponding to the disputed domain name in connection with a bona fide offering of goods and services. The Complainant asserts further that there is no evidence that the Respondent has been commonly known by the disputed domain name and that the intention of the Respondent must have been to take advantage of the disputed domain name’s association with the business of the Complainant.

The Complainant alleges furthermore, that the disputed domain name was registered and is being used in bad faith. The Complainant contends that its trademark rights pre-date the registration of the disputed domain name and that at the time of registering the disputed domain name, the Respondent must have been aware of the reputation and goodwill of the Complainant and its trademarks SPORTSDIRECT and SPORTSDIRECT.COM. The Complainant argues further, that the disputed domain name is not in use and therefore, the Respondent has no reason to register it other than to act as a passive cybersquatter. The Complainant cites in this context BHP Biliton Pty Ltd. v. Whois Privacy Protection Services, Inc./Demand Domains, Inc., WIPO Case No. D2010-0657 to support this argument. The Complainant then refers to Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, in order to conclude that the Complainant’s trademark rights and the disputed domain name are so similar that it is not possible to conceive a plausible circumstance in which the Respondent could legitimately use the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established trademark rights in the trademarks SPORTSDIRECT and SPORTSDIRECT.COM. The disputed domain name is identical to the Complainant’s trademark SPORTSDIRECT and at least confusingly similar to the Complainant’s trademark SPORTSDIRECT.COM.

As it has been decided by previous UDRP panels, incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see, for instance, Yahoo! Inc. v. Blue Q Ltd., Romain Barissat, WIPO Case No. D2011-0702; Casa Editorial El Tiempo, S.A. v. Montanya Ltd, WIPO Case No. D2009-0103; Todito.com, S.A. de C.V. v. Francisco Gómez Ceballos, WIPO Case No. D2002-0717; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615; Compagnie Générale des Etablissement MICHELIN v. Lost in Space, SA, WIPO Case No. D2002-0504; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; and EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047). As far as the trademark SPORTSDIRECT.COM is concerned, the distinctive element is the term “sportsdirect” which is featured in its entirety in the disputed domain name.

Furthermore, the gTLD “.cloud” in the disputed domain name does not affect the determination that the disputed domain name is nearly identical to the Complainant’s trademark SPORTSDIRECT and that it is confusingly similar to the SPORTSDIRECT.COM trademark in which the Complainant has rights (see also Compagnie Générale des Etablissements Michelin v. Trendimg, WIPO Case No. D2010-0484; Köstrizer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936; and Laboratoire Pharmafarm (SAS) v. M. Sivaramakrishan, WIPO Case No. D2001-0615 and cases cited therein). It is well-established that gTLDs such as “.com”, “.org” or, in this case, “.cloud”, 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 Sportsdirect.com Retail Limited v. Nicole Missell and Dreamless Brand, WIPO Case No. D2015-1946 andKabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105.

For all these reasons, the Panel finds that the Complainant has fulfilled the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Based on the submissions and materials filed in this case, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

It is the consensus view of UDRP panels that once the complainant has made out a prima facie showing on this element, the burden of production shifts to the respondent (see section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”); Ustream.TV, Inc. v. Vertical Axis, Inc., WIPO Case No. D2008-0598; mVisible Technologies, Inc v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; and Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.

The Respondent has not provided any evidence of circumstances specified in paragraph 4(c) of the Policy or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. Specifically, the Panel finds no evidence that the Respondent has been or is commonly known by the disputed domain name. The Respondent is neither affiliated with the Complainant nor has a license to use its trademark. The Respondent has also not rebutted the Complainant’s allegations and has not provided the Panel with any explanations as to the Respondent’s rights or legitimate interests.

Searches for the term “sportsdirect” in a search engine such as Google revealed only the Complainant’s business on the first two pages. The Panel is therefore convinced that the Respondent was aware of the Complainant when it registered the disputed domain name and that the SPORTSDIRECT brand has been chosen by the Respondent in order to create an impression of an association with the Complainant (see also: Telstra Corporation Limited v. Nuclear Marshmallows, supra).

That there is no active website at or associated with the disputed domain name cannot constitute a bona fide or legitimate use.

For all these reasons, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and therefore, the requirement of paragraph 4(a)(ii) of the Policy is met.

C. Registered and Used in Bad Faith

The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Policy, paragraph 4(b) sets forth four non-exclusive circumstances, which evidence bad faith registration and use of a domain name:

(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has registered the disputed 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; or

(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.

It is a principle considered under prior UDRP decisions (see, for instance, Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022) and under the Policy (see paragraph 2), that a domain name registrant represents and warrants to the concerned registrar that to its knowledge, the registration of the disputed domain name will not infringe the rights of any third party.

The Panel finds that the Respondent must have been aware of the Complainant’s trademark and its products when it registered the disputed domain name. The Panel’s own searches in search engines such as Google or Bing showed only the Complainant and its business on its first two pages. Given this strong online presence of the Complainant, the Panel is therefore, convinced that the Respondent was aware of the Complainant when it registered the disputed domain name.

The Panel finds further, that the Respondent is also using the disputed domain name in bad faith.

The disputed domain name was not resolving to an active website at the time of filing. However, the consensus view amongst WIPO panelists is that “the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith (see “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Godaddy.com, Inc., WIPO Case No. D2017-0246; Telstra Corporation Limited v. Nuclear Marshmallows, supra.

Examples of what may be cumulative circumstances found to be indicative of bad faith include, for instance, the complainant having a well-known trademark and no response to the complaint having been filed (see section 3.3 of the WIPO Overview 3.0.). In this case, the Panel is convinced that the overall circumstancesof this case strongly suggest that the Respondent’s non-use of the Domain Name is in bad faith. Such circumstances include the strength and renown of the Complainant’s SPORTSDIRECT and SPORTSDIRECT.COM trademarks, the Respondent’s failure to take part in the present proceedings and the fact that the Respondent did not reply to the cease and desist letter but apparently registered the disputed domain name after its expiry again under another name. According to the material brought before the Panel, the owner of the disputed domain name at the time when the Complainant sent the cease and desist letter and at the time the Complainant filed the Complaint had both the identical email addresses. Therefore, the Panel believes that both owners are if not the same, are at least very closely related.

The Panel finds for all these reasons that the disputed domain name was registered and is being used in bad faith.

The Complainant has therefore satisfied paragraph 4(a)(iii) of the Policy.

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 name <sportsdirect.cloud> be transferred to the Complainant.

Christian Schalk
Sole Panelist
Date: July 29, 2017