WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lonsdale Sports Limited v. Dmitry Volkov
Case No. D2018-1084
1. The Parties
The Complainant is Lonsdale Sports Limited of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Reynolds Porter Chamberlain LLP, UK.
The Respondent is Dmitry Volkov of Rostov, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <lonsdale.store> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 15, 2018. On May 15, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 16, 2018, 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 May 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 7, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 8, 2018.
The Center appointed Stefan Naumann as the sole panelist in this matter on June 18, 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 is a UK company that sells sports apparel and equipment in brick and mortar stores as well as online in a number of countries. Although the Complainant did not provide evidence of its corporate registration, the Panel was able to confirm this with the publically accessible database of the UK Companies House using the company name provided by the Complainant. The Complainant is part of a group of companies known as Sports Direct.
The evidence shows that the Complainant owns a number of trademarks including in particular an international trademark designating the Russian Federation for the term “Lonsdale” (no.123 50 51) for products in classes 5, 18 and 25 registered on September 5, 2014 and a European Union Trade Mark for the term “Lonsdale”(no. 0040 20 541) for products and services in classes 3, 5, 9, 14, 16, 18, 21, 24, 25, 26, 28, 30, 32, 35, 41, and 45 registered January 31, 2006, duly renewed and in effect.
The Complainant has filed a list of domain names it claims to own, but has not provided evidence of ownership of any of these domain names. However, the evidence supports the Complainant’s claim that LONSDALE is a widely known consumer brand notably in the European Union and in certain Eastern European countries. As the Panel finds that the Complainant has established valid prior trademark rights in the term “Lonsdale”, it does not need to reach the issue of the Complainant’s domain names as prior rights in this matter.
The Respondent registered the disputed domain name <lonsdale.store> on February 5, 2018.
The evidence shows that the website at “www.lonsdale.store” is a GoDaddy webpage that is “parked for FREE, courtesy of GoDaddy.com”, allows the purchase of the disputed domain name, and features as “related links” “Harrington Lonsdale”, “London Lonsdale” and “Lonsdale T Shirt”.
5. Parties’ Contentions
In its Complaint, the Complainant asserts that its LONSDALE marks are well known, that the Respondent has no permission from the Complainant to use the Complainant’s trademarks or apply for a domain name with the Complainant trademarks, that the Respondent obviously knew of the Complainant’s trademark, that he does not have a right or legitimate interest in respect of the disputed domain name in connection with a bona fide offer of goods and services, that the Respondent has a pattern of registering domain names incorporating well-known third party brands, and that he did not respond to the Complainant’s offer to pay his out-of-pocket expenses in order to recover the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in its claim, the Complainant must demonstrate that all three elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name must be identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent must have no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name must have been registered and used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established trademark rights in the trademark LONSDALE as described in section 4 above.
The disputed domain name combines the term “Lonsdale” with the Top-Level Domain (“TLD”) “.store”. The addition of the TLD does not affect the fact the disputed domain name reproduces the Complainant’s LONSDALE marks. In this context, established UDRP practice considers that the addition of the TLD does not affect the comparison and determination of whether a domain name is identical or confusingly similar to a trademark. The Panel agrees with this principle.
The Panel is satisfied that the disputed domain name is identical to the Complainant’s trademarks for the purposes of the Policy.
B. Rights or Legitimate Interests
The Respondent has chosen not to reply to the Complaint. The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name <lonsdale.store>, and finds no indication in the evidence that the Respondent could have claimed rights or legitimate interests of his own in the term “Lonsdale”. Since the Respondent has no permission from the Complainant, his use of the disputed domain name is without rights or legitimate interests.
The Panel considers that in the present case, the Respondent does not have any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Respondent’s use of a parked webpage with links with the term “Lonsdale” that offers the domain name <lonsdale.store> for sale indicates that the Respondent registered and is using the disputed domain name in bad faith.
In order to find that the disputed domain name in the present matter was registered and used in bad faith, the Panel does not need to address the Complainant’s unsupported assertion that the Respondent has a pattern of registering domain names incorporating well-known third party brands in which the Respondent has no rights.
The Panel considers that the disputed domain name was 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 <lonsdale.store> be transferred to the Complainant.
Date: June 26, 2018