WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cricket South Africa v. Domain Privacy Service FBO PrivacyProtect.org / Nisanth Sasidharan
Case No. D2018-0119
1. The Parties
The Complainant is Cricket South Africa of Johannesburg, South Africa, represented by Mota Attorneys, South Africa.
The Respondent is Domain Privacy Service FBO PrivacyProtect.org of Burlington, Massachusetts, United States of America (“United States”) / Nisanth Sasidharan of Abu Dhabi, United Arab Emirates.
2. The Domain Name and Registrar
The disputed domain name <t20gl.com> is registered with Domain.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2018. On January 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 22, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 30, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 3, 2018.
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 February 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 25, 2018. The Center received email communications from the Respondent on January 30, 2018, January 31, 2018, February 1, 2018, February 3, 2018, February 5, 2018, February 6, 2018 and March 1, 2018. The Respondent did not file a formal Response.
The Center appointed Adam Taylor as the sole panelist in this matter on March 1, 2018. 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 non-profit company incorporated in South Africa, is the administrator and promoter of professional cricket in South Africa.
The Complainant is the operator of a proposed new cricket league in South Africa known as “T20 Global League” and “T20GL” for short.
The disputed domain name was registered on February 5, 2017.
The Complainant’s lawyers emailed a cease and desist letter to the Respondent on June 9, 2017.
The same day the Respondent responded: “I buy the domain if they want I am ready to sell. I will fix the price ok. Did you got it.” Later that day, the Respondent sent a further email stating:
“… If you guys or any one in the world need my domain: www.t20gl.com, which is under my name the domain price is Ten Million USD. OK. I buy it for my business if someone else ask it that’s the price for my domain….”
The Respondent added that the Complainant should approach it politely if it wished to acquire the disputed domain name.
The Respondent sent a few chaser emails to the Complainant’s lawyers and, on June 13, 2017, he emailed the Complainant directly inviting it to contact him direct if it wanted the disputed domain name.
As of January 31, 2018, the disputed domain name resolved to a web page headed:
T20 GROUP LEAGUE – E-COMMERCE @ INDIA, SOUTH AFRICA, ENGLAND”
Beneath this, there was a heading “POSTS”, followed by a WordPress welcome message plus an invitation to the site operator to create a first post.
5. Parties’ Contentions
The following is a summary of the Complainant’s contentions:
The Complainant is the proprietor in South Africa and worldwide of the trade marks TG20L and T20 GLOBAL LEAGUE (“the Marks”) in classes 9, 16, 18, 22, 25, 28, 35, 37 and 41. The marks are well-known in South Africa and worldwide.
In February 2017, the Complainant launched a new league known as “T20 GL”, which is short for “T20 Global League”. The Complainant has expended a considerable amount of time, money and effort in advertising, marketing and promoting the Marks, with advertising expenditure in 2017 in excess of USD 10 million.
The Complainant has acquired substantial goodwill and reputation in the Marks in relation to professional cricket and related activities in South African and internationally.
The Complainant released an invitation to tender for franchise ownership in the new league across international press and publications on February 4, 2017, a day before the Respondent registered the disputed domain name.
The Complainant has made extensive use of the Marks via its website at “www.t20.gl” as well as on its social media platforms.
The disputed domain name is confusingly similar to the Marks.
The Respondent has no rights or legitimate interests in the disputed domain name, which has been registered and used in bad faith.
The Complainant has not authorized the Respondent’s registration of the disputed domain name or use of the Marks on the related website.
There is no evidence that the Respondent has any business or rights in, or has been commonly known by, any name including the Marks.
The Complainant’s official release of February 4, 2017 must have come to the attention of the Respondent. The league and the Marks were commonly referred to in the media even before that date. The Respondent’s knowledge of the Complainant is also evidenced by the fact that his website displays the mark “T20GL” in the same manner as used by the Complainant.
The Respondent is passing off the website at the disputed domain name as that of the Complainant in order to create confusion with the Marks.
The Respondent has registered the disputed domain name primarily to block the Complainant, disrupt its business or extort money from it.
The Respondent’s emails show that the Respondent’s primary intention was to sell the disputed domain name to the highest bidder, which is suggestive of bad faith.
The following is a summary of the Respondent’s contentions:
The Respondent is using the disputed domain name for “re-marketing strategies”.
The Respondent claims to be running an affiliate business on the disputed domain name which reflects the name “T20 Group League”. The Respondent claims to have 1,000 daily visitors to his site via Facebook and Twitter, and to have acquired more than 1,000 Facebook followers and 888 Twitter followers.
The Respondent is doing business “in [his] name”. He is not using the Complainant’s name. The Complainant should instead buy <t20globalleague.com> which reflects its name.
The disputed domain name is in line with the name “T20GL”, which the Respondent uses in his Facebook and Twitter URLs, whereas the Complainant uses “T20GlobalLeague” for its social media URLs.
The disputed domain name is the Respondent’s property, he bought it legally and it is related to his business. It is solely the Respondent’s decision whether or not to sell the disputed domain name.
This case is as if the Respondent’s neighbour tried to take the Respondent’s Nissan car because the neighbour’s son’s name is Nissan. The neighbour must instead ask to buy the car.
The Respondent is instead entitled to file a case against the Complainant for using his business name “T2GL” in India.
If the Complainant wanted the disputed domain name, it should have bought the disputed domain name when it was available. If the Complainant wants the disputed domain name now, it must do a business deal.
After the Respondent bought the disputed domain name, someone from South Africa offered the Respondent USD 10,000 for the disputed domain name, which the Respondent rejected.
Mark Zuckerberg paid USD 700 to buy a domain name which reflected the name of his daughter.
An Indian cyberlaw expert says that cybersquatting is not a breach of Indian cyberlaw, just a civil rights violation and action can only be taken under WIPO arbitration rules.
The Complainant has cancelled the intended launch of the league in November 2017 in the context of a dispute between the Complainant and its former CEO. Yet the Complainant has not said anything about this on social media since October 2017. The Complainant is therefore a poor business operator and it is now trying to “steal” the Respondent’s name. The Respondent will not be paid for the time that he spent over one year trying to attract users to his website and social media channels.
The Respondent plans in due course to convert the affiliate website into an e-commerce website selling sports goods.
6. Discussion and Findings
The Respondent considers that the disputed domain name is the Respondent’s property, that he only he can decide whether or not the disputed domain name is transferred or sold to someone else and that the Complainant cannot simply come along and take it without the Respondent’s permission.
As the Respondent does not appear to fully understand the nature of this proceeding, the Panel will briefly explain this before discussing the issues in the case.
Like other registrants of “.com” domain names, the Respondent agreed to a contract when he registered the disputed domain name. This contract allows someone else, a “complainant”, to start an “administrative procedure” under the UDRP. The administrative organisation through whom the case is filed (in this case the WIPO Center) processes the case and passes it to an independent panel.
The job of the panel is to weigh up the arguments and evidence put forward by the complainant and by the registrant of the disputed domain name (the “respondent”) and decide whether the complainant has successfully proved the following three factors. If so, then the disputed domain name is generally transferred from the respondent to the complainant.
The factors are:
1. the disputed domain name is identical or confusingly similar to a trade mark in which the complainant has rights;
2. the respondent has no rights or legitimate interests in respect of the disputed domain name; and
3. the disputed domain name has been registered and is being used in bad faith.
See further below.
B. Informal Response
As a preliminary matter, the Panel notes that the “Response” is in the form of a number of emails to the Center, which do not comply with the formal requirements set out in paragraph 5 of the Rules. The Panel has nonetheless decided to admit these emails as the Response in accordance with its powers under paragraph 10(d) of the Rules but to bear in mind the Response’s non-compliance with the Rules, including in particular the absence of a statement of truth, when weighing up the Respondent’s assertions in this case.
C. Identical or Confusingly Similar
Although it provides a list of goods and services for which its marks are apparently used, the Complainant has not provided the registration details of its trade marks (and it is not the Panel’s job to search the trade mark registers in different countries). The question, therefore, is whether the Complainant has established the relevant unregistered trade mark rights as of the date of the Complaint.
The Complainant has provided evidence which has satisfied the Panel that it has made substantial use of the name “T20 Global League” as well as the abbreviated version, “T20GL”, in connection with its proposed league including via the Complainant’s website at “www.t20.gl” and that the Complainant has therefore established unregistered trade mark rights in both names.
Disregarding the domain name suffix, the disputed domain name is identical to the Complainant’s unregistered trade mark “T20GL”.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
D. Rights or Legitimate Interests
Next, the Complainant has to show that the Respondent lacks “rights to and legitimate interests in” the disputed domain name.
As explained in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the consensus view is that, where a complainant makes out an initial case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element. Section 2.1 also makes clear that the overall burden of proof remains with the complainant.
Paragraph 4(c) of the Policy sets out three ways in which a respondent can demonstrate rights or legitimate interests.
1. Before having notice of the dispute, the respondent used or made demonstrable preparations to use, the disputed domain name for agood faith offering of goods or services.
Here, the only evidence of use of the Respondent’s use of the disputed domain name which has been provided to the Panel is the skeletal WordPress page mentioned above. This bears the date January 31, 2018, and so it appears that the page post-dates the Complainant’s first notice to the Respondent on June 9, 2017 (and indeed the date of filing of the Complaint). In any case, this page does not amount to an “offering” of goods or services.
The Respondent has mentioned some possible future uses of the disputed domain name but the requirement of “demonstrable preparations” means that such assertions must be supported by credible evidence. And the Respondent has produced no such evidence.
2. The respondent, whether as an individual, business or other organisation, has been commonly known by the domain name.
Whether or not the Respondent has been commonly known by the name “T20GL”, for reasons explained in section 6D below, the Panel has not been convinced that the Respondent adopted of the name in a legitimate manner, independently of the Complainant.
3. The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or tarnish the trade mark.
The Respondent is open about the fact that it registered the disputed domain name for commercial purposes.
For the above reasons, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
E. Registered and Used in Bad Faith
It is first necessary to consider the likelihood or otherwise that the Respondent selected the disputed domain name and the name “T20GL” independently of the Complainant. The Panel cannot of course know what was in the Respondent’s mind at the time. All that the Panel can do is to make its best assessment based on the evidence presented to the Panel.
The earliest evidence of the Complainant’s use of the name “T20GL” is its official release inviting tenders for franchise ownership in the new league. In fact, the documents exhibited by the Complainant are undated but there is a comment beneath one of them dated February 4, 2017, and the Panel is prepared to accept that that was the issue date of the release. While the Complainant has not provided proof of wide distribution of the release, it is nonetheless notable that the disputed domain name was registered on February 5, 2017, only one day later.
The Respondent claims that “T20GL” is his business name in India and that it reflects the name “T20 Group League”. He claims to be using it for “re-marketing strategies” and for an “affiliate business”.
The Respondent says that he is using name “T20G” as a handle on Twitter and Facebook, with approximately 900 Twitter followers and over 1,000 Facebook followers. The Respondent has provided links to his Twitter and Facebook pages. The Panel has viewed the Twitter and Facebook pages in accordance with section 4.8 of WIPO Overview 3.0.
The Respondent’s first Facebook post was apparently made on January 31, 2018, i.e., after the Complaint was filed. The Facebook page is therefore of little benefit in assessing the Respondent’s motive at the time of registering the disputed domain name.
When viewed by the Panel, the name of the Respondent’s Twitter page was “T20 Group League” and the Twitter handle was “T20GL”. The description stated: “The official Twitter page of T20 Group League. To share all sports league news.” The location was given as India. The Twitter logo comprised the words: “T20GL.COM / T20 GROUP LEAGUE / AFFILIATE MARKETING SHOPPING”. The page gave the following stats: 740 tweets, 329 following, 899 followers and 77 likes.
While the Twitter joining date was shown as January 2017 (and the Panel understands that the Twitter usernames / URLs can be changed), the first tweet is dated February 5, 2017, coinciding with the registration of the disputed domain name one day after the Complainant’s press release. That tweet states “@t20gl #t20gl announced by @official CSA” (the latter is the Complainant’s Twitter username). The tweet also refers to “T20GL.COM – The best affiliate marketing website in the world…”. The second tweet, on the same day, simply refers to the Complainant’s league “T20 Global League”, and again includes the Complainant’s username.
The above indicates that the Respondent had the Complainant’s league very much in mind on the day when he registered the disputed domain name. Indeed, the Respondent has not specifically denied awareness of the Complainant’s proposed league.
Furthermore, the Respondent has not explained why, if his business is in the field of affiliate marketing, he selected a name which included the word “League” (“T20 Group League”) and promoted his Twitter page as sharing “sports league news”.
The Panel also notes that the Respondent has not explained why the January 2018 webpage at the disputed domain name refers to South Africa, i.e. as well as England and India. (The Complainant adds that the page displays the mark “T20GL” in the same manner as the Complainant but this is not immediately obvious to the Panel and the Complainant has not provided any comparison evidence.)
Taking all of the above into account, including the co-incidence in timing between the Respondent’s registration of the disputed domain name / first tweet and the Complainant’s press release, the evidence indicates to the Panel that the Respondent registered the disputed domain name, and adopted the name “T20GL”, in order to unfairly capitalise on the (abbreviated) name of the Complainant’s proposed league. While the Complainant may not yet have developed trade mark rights in that name, section 3.8.2 of WIPO Overview 3.0 makes clear that bad faith can arise where a respondent targets nascent trade mark rights, i.e. in anticipation of the acquisition of future trade mark rights.
In view of the correspondence between the parties referred in section 4 above, the Panel considers it most likely the Respondent registered the disputed domain name for sale to the Complainant at a price which exceeded the Respondent’s out-of-pocket acquisition costs in accordance with paragraph 4(b)(i) of the Policy. This is one of the non-exhaustive examples of registration and use in bad faith.
Even if not, and notwithstanding the lack of evidence of active use of the disputed domain name before the Complaint was filed, in the Panel’s view the circumstances outlined above render the disputed domain name a passive holding in bad faith as explained in section 3.3 of WIPO Overview 3.0.
Finally, the Panel will deal with the other arguments put forward by the Respondent:
1. The fact that the Respondent is using “T20GL” in connection with its social media pages does not help the Respondent because this usage does not demonstrate that the Respondent adopted the name independently of the Complainant; on the contrary, as explained above, the first two tweets on the Twitter page suggest otherwise.
2. The disputed domain name is not the Respondent’s “property” in the sense that he has an absolute right to retain it in all circumstances. As explained in section 6A above, the Respondent registered the disputed domain name under a contract which enables a third party complainant who files a UDRP case to obtain transfer of the domain name provided that that complainant proves its case in accordance with the UDRP requirements. If so, then the domain name will normally be transferred to the complainant, i.e., without the complainant having to buy the domain name from the respondent.
3. This is therefore not analogous to the situation where a neighbour tries to take away the Respondent’s car on spurious grounds. Anyone who registers a “.com” domain name is liable to lose it, legitimately, to a third party complainant in accordance with the contract under which the domain name was acquired.
4. It does not help the Respondent that the Complainant did not itself register the disputed domain name, for whatever reason. This scenario does not of itself justify the Respondent acquiring the disputed domain name with reference to the Complainant’s name. There are many types and variations of domain names which can be used to reflect a name and complainants are not under a duty to acquire them all.
5. The Respondent criticizes the circumstances in which Complainant has delayed the launch of its league. Not only is the Panel not in a position to make any judgment regarding such matters, it is difficult to see how any perceived business failings of the Complainant could justify the Respondent registering the disputed domain name in the above circumstances. In any event, it appears that the delay arose well after the Respondent registered the disputed domain name.
6. It is correct that, if the disputed domain name is transferred to the Complainant, the Respondent will not be compensated for the time spent in trying to attract users to his website or social media pages. That is a consequence of the system to which the Respondent signed up when he registered the disputed domain name.
For the above reasons, the Panel finds that the Complainant has established the third element of paragraph 4(a) of 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 disputed domain name <t20gl.com> be transferred to the Complainant.
Date: March 16, 2018