WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ERREA’ SPORT S.p.A. v. Reagan Striker
Case No. D2018-2470
1. The Parties
The Complainant is ERREA’ SPORT S.p.A. of Torrile, Italy, represented by Crea Avvocati Associati, Italy.
The Respondent is Reagan Striker of Lancaster, Ohio, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <strikerrea.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 October 30, 2018. On October 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 30, 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. In response to a notification by the Center dated November 7, 2018, that the Complaint was administratively deficient, the Complainant filed an amended Complaint on November 12, 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 November 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 3, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 5, 2018.
The Respondent sent an email communication on December 6, 2018, indicating that the Complainant can take the disputed domain name. The Center sent an email regarding possible settlement to the Parties on December 7, 2018. Further to the Complainant’s request for suspension, the Center sent the notification of suspension to the Parties on December 11, 2018, notifying them that the proceeding will be suspended until January 10, 2018. On December 17, 2018, and on December 27, 2018, the Complainant sent email communications to the Respondent, but did not receive any reply. On January 7, 2019, the Complainant requested to reinstitute the proceeding. Accordingly, the Center notified the Parties of the reinstitution of the proceeding on January 9, 2019.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on January 17, 2019. 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 in the business of technical sports equipment and related products internationally. The Complainant holds trademarks in more than 200 countries for ERREA, of which the following are representative for the purposes of this proceeding:
ERREA, stylised with design, International Trademark, registration number 621285, registration granted August 23, 1994, class 25;
ERREA, stylised with design, International Trademark, registration number 759602, registration granted January 23, 2001, classes 18, 25, 28;
ERREA, stylised with design, European Trademark, registration number 812891, registration granted October 21, 1999, class 25.
ERREA’, European Trademark, registration number 9284191, registration granted April 1, 2011, classes 3, 9, 14, 16, 18, 25, 28, 35, 41.
The Complainant also holds over 170 domain names, most of them incorporating ERREA, including particularly <errea.dk>, <errea.it>, <errea.com>, <erreasport.it>, <erreasports.com>, <erreasport.ru> and <erreasport.hu>.
The Respondent has not formally supplied any background information. The disputed domain name was first registered on September 1, 2017, and does not resolve to an online presence.
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. The first part, “strik”, is the Danish word for “knitwear” and the Complainant produces items such as T-shirts. In English the word “strike” has various meanings, including “blow”, “success”, and “hit” (the last being relevant to the sport of bowling), which may pertain to the Complainant’s business. The second part of the disputed domain name is the Complainant’s trademark ERREA, thus there is confusing similarity with the Complainant’s trademark, and the generic prefix “strik” does not differentiate, but increases, the confusing similarity.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The registered trademark ERREA is exclusively the Complainant’s and it has not granted any right to the Respondent to use it in any jurisdiction.
The Complainant says the Respondent is not commonly known by the disputed domain name. Irrespective of the Respondent having given the name “Reagan Striker”, the disputed domain name does not resemble this. In order for the Respondent to have rights in the disputed domain name, according to previous UDRP decisions, there would need to be a genuine connection with the Respondent’s name supported by evidence. There has been no use of the disputed domain name.
The Complainant says the Respondent has failed to rebut the Complainant’s prima facie case and has never answered the Complainant’s cease and desist letter.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The Complainant believes the Respondent to be based in Denmark where the Complainant and its products are well known, in part through the Complainant’s sponsorship of the national volleyball team. The Complainant says its trademark is so well known, it may be concluded that the Respondent was aware of it when registering the disputed domain name.
The Complainant says that because the disputed domain name is passively held and has not been used, it may be inferred that the Respondent intends to divert Internet users by use of the Complainant’s trademark. Owing to the strength of the Complainant’s trademark, the absence of actual or contemplated good faith use of the disputed domain name by the Respondent, and the lack of any plausible actual or contemplated active use, there has been bad faith on the part of the Respondent.
The Complainant has cited a number of previous decisions under the Policy that it considers to support its case.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply formally to the Complainant’s contentions.
In a brief email to the Center dated December 6, 2018, the Respondent expressed disinterest in the disputed domain name and indicated that it could be taken by the Complainant.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute resolution provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The Complainant’s European Trademark registration number 9284191 is for ERREA’, incorporating a trailing apostrophe, as also appears in the Complainant’s name ERREA’ SPORT S.p.A. Four other registration documents produced by the Complainant show the trademark incorporating the word ERREA written in stylised font in which the terminal letter “a” is slightly adapted to suggest an apostrophe. Where, as in European Trademark registration number 812891, the stylised word is represented also in standard characters, the terminal apostrophe is omitted. The Panel is satisfied that the Complainant has rights in the trademark ERREA. An apostrophe cannot be included in a domain name.
The disputed domain name <strikerrea.com> could be read as “striker rea”, “strike rrea” or “strik errea”. The Complainant has made repeated references to a presumed association of the Respondent with Denmark, for example, “the national volleyball team in the country where it is supposed the Respondent is based – Denmark”, and “In this case the Respondent home Country should be Denmark”. The motivation for this assertion is apparently that the word “strik” has a meaning in Danish, namely “knitwear”, thereby supporting an assertion of potential confusion between the disputed domain name and the Complainant’s trademark associated with sports clothing.
The Panel can find no significant evidence of the Respondent, who has given a United States domicile, having any Danish connection, but it is of no consequence. A finding of confusing similarity under paragraph 4(a)(i) of the Policy requires an objective comparison of the Complainant’s trademark with the disputed domain name. The latter contains the Complainant’s trademark in its entirety, and the prefix “strik” is found not to be distinguishing. The Respondent has not argued any interpretation to the contrary. Accordingly the Panel finds for the Complainant under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has stated that the Respondent has no rights or legitimate interests in respect of the disputed domain name and has not been granted any right to use the Complainant’s trademark.
Paragraph 4(c) of the Policy provides for the Respondent to rebut the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent has not responded formally or asserted any rights or legitimate interests in the disputed domain name. Since the disputed domain name has not apparently been in use, there could be no claim of right under paragraphs 4(c)(i) or 4(c)(iii) of the Policy. The Respondent’s stated name is “Reagan Striker”. Whilst a person might plausibly choose to shorten the name “Reagan” to “Rea”, the Respondent has made no claim to have been known as “Rea Striker”, and on the contrary, has sent an email to say he does not want the disputed domain name <strikerrea.com>. The Panel finds for the Complainant under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant is required to prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found alternatively by the Panel. No direct evidence has been produced as to the Respondent’s intentions for the disputed domain name. It appears not to be in use and resolves to a notice that states inter alia: “Unable to locate the server named ‘strikerrea.com’ – the server does not have a DNS entry”. The Wayback Machine (at “www.archive.org”) does not record any history.
Whilst previous decisions under the Policy do not have precedential status, the principles discussed in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (“Telstra”) have commonly been followed in cases where the passive holding of a domain name without use might otherwise conflict with the requirement under the Policy to prove use or intended use in bad faith. The circumstances are partly different in the present case, however according to the evidence, the Complainant has a strong, apparently unique and contrived trademark, and the Respondent has provided no evidence or claim of any actual or contemplated legitimate and good faith use of the disputed domain name. Furthermore the Respondent did not act upon a cease, desist and transfer letter sent by the Complainant on October 12, 2018.
On December 6, 2018, in a late informal reaction to the service of the Complaint on November 13, 2018, the Respondent expressed disinterest in keeping the disputed domain name, whereupon the Complainant agreed to a 30 day suspension of proceedings to enable the necessary exchange of documentation. The Respondent failed to sign a transfer agreement provided to him for the purpose and Consequently the proceedings were delayed by a month.
As discussed by the Panelist in the Telstra decision, “the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith”. The circumstances listed as examples under paragraph 4(b) of the Policy are without limitation. In all the circumstances of the present case, and on the balance of probabilities, the Panel finds the disputed domain name to have been registered and used in bad faith within the meaning of paragraph 4(a)(iii) 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 <strikerrea.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: January 24, 2019