WIPO Arbitration and Medition Center
ADMINISTRATIVE PANEL DECISION
Supersport lnternational (Pty) Limited v. Domain Admin, Hush Whois Protection Ltd.
Case No. D2019-0051
1. The Parties
The Complainant is Supersport lnternational (Pty) Limited of Johannesburg, Gauteng, South Africa, represented by Adams & Adams Attorneys, South Africa.
The Respondent is Domain Admin, Hush Whois Protection Ltd. of Providence, Mahé, Seychelles.
2. The Domain Name and Registrar
The disputed domain name <supersportz.com> is registered with Key-Systems GmbH (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2019. On January 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 10, 2019, 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 January 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 7, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 8, 2019.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on February 13, 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 a media organisation. Its activities cover particularly Internet, pay television and print media, under brands including DSTV and GOTV in at least 50 Sub-Saharan African countries. The Complainant has been a provider of sports content under various SUPERSPORT channels since 1988. Major events broadcast by the Complainant have included the Olympic Games and the English Soccer Premier League.
The Complainant owns the South African trademark SUPERSPORT, filed on June 6, 1997, registration number 1997/08492, in class 41.
The Respondent has not provided any background information or location and holds the disputed domain name through a privacy service. The disputed domain name was registered on March 25, 2005 and variously has resolved to a holding page with advertising links, or has been unreachable.
5. Parties’ Contentions
The Complainant contends that the disputed domain name wholly incorporates and is confusingly similar to the Complainant’s trademark. The only difference is the terminal letter “z” in the disputed domain name, which does not negate confusing similarity with the Complainant’s trademark.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant had not previously heard of the Respondent and the latter’s use of the Complainant’s trademark is not authorised. The Complainant’s rights and reputation in its trademark predate the registration of the disputed domain name. There is no evidence that the Respondent has been commonly known by the disputed domain name. No other party could have granted the Respondent the right to use the trademark SUPERSPORT.
The Complainant says the Respondent has made no demonstrable preparations to use the disputed domain name in relation to an offering of goods or services prior to these proceedings. It has been parked at a pay‑per-click page with sponsored links, also annotated “buy this domain”. There is no evidence of any noncommercial or fair use of the disputed domain name.
The Complainant says the disputed domain name was registered and is being used in bad faith.
The Complainant says it is unlikely that the Respondent was not aware of the Complainant’s trademark at the date of registering the disputed domain name because DSTV television, including SUPERSPORT content, is available in the Seychelles. Even if the Respondent is not based in the Seychelles, the SUPERSPORT trademark is well-known globally and the Respondent is unlikely to have been unaware of it at the date of registration of the disputed domain name.
The Complainant says that on November 22, 2017, it sent a cease and desist letter, with a request that the disputed domain name be deleted, to the named registrant organisation as representing the Respondent. There was no reply.
A reminder was sent on December 8, 2017. A reply was received from Team Internet AG on the same date stating that the disputed domain name was blocked and would no longer be serving advertisements. The Complainant does not know how Team Internet AG is connected with the registrant organisation or the Respondent.
On January 3, 2018, the Complainant repeated its cease, desist and delete requirements to Team Internet AG, which replied to say that it was not the disputed domain name owner but a provider for monetising domain names, referring the Complainant to the owner of the disputed domain name.
The disputed domain name has since been inactive.
The Complainant contends that the disputed domain name, being passively held after having been offered for sale and used to host pay-per-click links, was registered and is being used in bad faith for the purpose of profitable sale, such as to the Complainant.
The Complainant has cited previous decisions under the Policy that it considers relevant.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Procedural Matters
Paragraph 1 of the Rules nominates “the holder of a domain-name registration against which a complaint is initiated” as the Respondent. The WhoIs in this instance shows the registrant name of the disputed domain name to be Domain Admin and the registrant organisation to be Hush Whois Protection Ltd. The Registrar confirmed these registration details and did not identify any other underlying registrant. The Respondent is therefore correctly identified under the Rules for the purposes of this proceeding.
The Complainant’s cease and desist letters to the Respondent were sent to the same email address as the Notification of Complaint and Commencement of Administrative Proceedings. The receipt of a reply from Team Internet AG on December 8, 2017, shows that communications, including the Complaint, were correctly sent to an address at which communications were handled on behalf of the Respondent.
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.
B. Identical or Confusingly Similar
The Panel is satisfied by the evidence produced that the Complainant has rights in the registered trademark SUPERSPORT.
The disputed domain name is <supersportz.com>, which comprises the entirety of the Complainant’s trademark, suffixed with the letter “z”. The generic Top-Level Domain (“gTLD”) “.com” may be disregarded. The Complainant’s trademark is clearly recognizable in the disputed domain name and the letter “z” is found to be inconsequential and not distinguishing. Accordingly the Panel finds confusing similarity between the disputed domain name and the Complainant’s trademark and finds for the Complainant under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainant has stated a prima facie case to the effect that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not heard of the Respondent and has not authorised the Respondent to use the Complainant’s trademark.
Paragraph 4(c) of the Policy provides for the Respondent to contest 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 availed itself of the opportunity to assert rights or legitimate interests in the disputed domain name with reference to paragraphs 4(c)(i), (ii) or (iii) of the Policy or otherwise, and on the available evidence, the Panel cannot reasonably conceive of any way in which the Respondent could do so. Accordingly the Panel finds for the Complainant under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered in bad faith 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 illustrative provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found otherwise by the Panel.
Since the disputed domain name was registered under the name and address of a privacy service, identified herein as the Respondent, the reasonable presumption is that the privacy service represents an undisclosed underlying owner. The Seychelles address of the privacy service in itself gives little or no reason to infer that the guiding mind behind the disputed domain name is necessarily domiciled in the Seychelles. Given the long-standing reputation of the Complainant internationally, particularly in Africa (and, as it happens, the Seychelles), with a 1997 trademark and a claimed association with SUPERSPORT channels since 1988, and in the absence of any denial by the Respondent, it may reasonably be concluded that the disputed domain name was registered with knowledge of that trademark.
The Complainant has produced a screen capture of the website to which the disputed domain name resolved on October 14, 2017. At top right an orange placard announced “BUY THIS DOMAIN”. Under the heading “supersportz.com” the website, which is shown partly cropped, displays a list of what appear to be link categories mainly related to motorcycles, such as “Motorcycle Scooter Dealers” and “Custom Yamaha Motorcycles”. On January 18, 2019, the disputed domain name resolved only to a “connection refused” page.
Thus, on the totality of the evidence, the Panel finds it to be more probable than not that the disputed domain name was acquired by the Respondent for the purpose of eventual profitable sale, the Complainant being the most probable anticipated buyer. As is common, the disputed domain name has been monetised in the interim, that is to say, populated with pay-per-click links provided in this instance by Team Internet AG, whereby a share of the advertising revenue would normally accrue to the Respondent. Pay-per-click revenue would be generated by visitors, at least some of which would likely have been attracted to the website by confusion with the Complainant’s trademark, before being shown the lists of links.
Accordingly, on the balance of probabilities, the Panel finds the disputed domain name to have been registered for the purpose of sale to the Complainant or a competitor of the Complainant within the meaning of paragraph 4(b)(i) of the Policy; and to have been used intentionally to attract Internet visitors by confusion with the Complainant’s trademark for the purpose of commercial gain under paragraph 4(b)(iv) of the Policy. Registration and use of the disputed domain name in bad faith are found in the terms 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 <supersportz.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: February 19, 2019