WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
IIC INTERSPORT International Corporation GmbH v. Michael Bogus, I.S.A. International Sport Arena & Hotel GmbH
Case No. D2019-0371
1. The Parties
Complainant is IIC INTERSPORT International Corporation GmbH of Bern, Switzerland, represented by Bourgeois Avocats, Switzerland.
Respondent is Michael Bogus, I.S.A. International Sport Arena & Hotel GmbH, of Kaarst, Germany.
2. The Domain Name and Registrar
The disputed domain name <intersportarena.com> (the “Domain Name”) is registered with PSI-USA, Inc. dba Domain Robot (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 18, 2019. On February 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 19, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 20, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 20, 2019.
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 Respondent of the Complaint, and the proceedings commenced on February 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 12, 2019. The Center received an email from Respondent in German on February 25, 2019. On March 13, 2019, the Center notified the Parties that it will proceed to panel appointment.
The Center appointed Marina Perraki as the sole panelist in this matter on March 15, 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
According to the Complaint, Complainant is the managing company of the Intersport group, which is a large network of affiliated companies with more than 5,000 retailers in 44 countries. The INTERSPORT mark is widely known, especially in European countries, and largely advertised.
Complainant is the owner of trademark registrations for the INTERSPORT mark, including: (a) the European Union trademark registration No. 000296574, INTERSPORT (word mark), filed on June 25, 1996, registered on July 22, 2004, for goods and services in international classes 35, 36, 37, 39 (including travel arrangement), 40, 41 (including sporting activities, health club services, holiday camp services), and 42 (including provision of hotel accommodation); and, (b) the international registration No. 610368, INTERSPORT (word mark), registered on October 1, 1993, for goods and services in international classes 9, 12, 18, 25, 28, 35, 36, 37, 39, 40, 41, and 42, protected also in the European Union.
The Domain Name was registered on May 20, 2005 and redirects to the website “www.internationalsportarena.de” which is the website of a hotel and sports facility apparently operated by Respondent’s company I.S.A. International Sport Arena GmbH, per the contact information found at this website.
On at least April 3, 2018 and September 4, 2018, Complainant sent a cease and desist letter to Respondent’s company, for inter alia, the Domain Name, to which Respondent did not reply.
5. Parties’ Contentions
Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for the transfer of the Domain Name.
Respondent’s communication with the Center merely defers discussion of the issues. It cannot be construed as a Response, as it does not substantively address the issues or includes the required certification of completeness, accuracy, and proper purpose (see Rules, paragraph 5(viii)). It does not present evidence or arguments on any element of the Complaint.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has demonstrated rights through registration and use of the INTERSPORT mark.
The Panel finds that the Domain Name <intersportarena.com> is confusingly similar to the INTERSPORT trademark of Complainant.
The Domain Name incorporates the said trademark of Complainant in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).
The word “arena” which is added in the Domain Name does not avoid a finding of confusing similarity (N. M. Rothschild & Sons Limited v. Super Privacy Services LTD c/o Dynadot / RothschildFintrade Co. Ltd, WIPO Case No. D2018-2036; KPMG International Cooperative v. Whois Privacy Services, Provided by Domain Protect LLC / Dmitriy Selivanov WIPO Case No. D2017-0988; Philip Morris Products S.A. v. Yang Jiang Nan, WIPO Case No. D2018-1869; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).
The generic top-level domain (“gTLD”) “.com” is also disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are generally required for technical reasons (Trodat GmbH v. Fuat Akkus, Yonkinya, WIPO Case No. D2016-0226; Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275).
Complainant has established Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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 Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.
Respondent has not substantively replied to Complainant’s contentions and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name.
Respondent did not demonstrate, prior to the notice of the dispute, any use of the Domain Name or a trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services.
On the contrary, as Complainant demonstrated, the Domain Name redirects to the website “ www.internationalsportarena.de”, which is the website of Respondent’s company. A respondent’s use of a complainant’s mark to redirect users to respondent’s own site would not support a claim to rights or legitimate interests (WIPO Overview 3.0, section 2.5.3).
Furthermore, as Complainant has demonstrated, Complainant and Respondent’s company had entered in 2006 into a written agreement whereby the latter undertook to refrain from using the domain name <intersportarena.de> and to cease any use of the INTERSPORT mark for hotel accommodation services and for providing sports installations, namely exactly the kind of services provided under the website where the Domain Name redirects.
The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.
Complainant has established Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and is using the Domain Name in bad faith. As per the Complaint, Complainant’s INTERSPORT trademark is widely known. Furthermore, INTERSPORT is a fictitious word and the Domain Name incorporates in whole Complainant’s mark plus the additional term “arena”. Because the INTERSPORT mark had been widely used and registered by Complainant at the time of the Domain Name registration, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering this Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
Furthermore, Respondent could have searched the European Union trademark registry and would have found Complainant’s prior registrations in respect of INTERSPORT (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata, WIPO Case No. D2012-1338).
Moreover, the contractual agreement entered into between the parties in 2006, whereby the Respondent undertook to refrain from using the domain name <intersportarena.de> and to cease use of the INTERSPORT mark for hotel accommodation services and for providing sport installations, served as actual notice to the Respondent of the Complainant’s mark INTERSPORT; thus, the Respondent’s registration of the disputed domain name incorporating the Complainant’s mark was done with notice of the Complainant’s rights and thus in bad faith.
Lastly, the redirection of the Domain Name to the website “www.internationalsportarena.de” of Respondent’s company, also supports registration in bad faith (WIPO Overview 3.0, section 3.1.4), reinforcing the likelihood of confusion, as Internet users are likely to consider the Domain Name as in some way endorsed by or connected with Complainant (Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen, supra; Marie Claire Album v. Whoisguard Protected, Whoisguard, Inc. / Dexter Ouwehand, DO, WIPO Case No. D2017-1367).
As regards bad faith use, Complainant demonstrated that the Domain Name redirects to the website “www.internationalsportarena.de” of Respondent’s company, as an attempt to attract, for commercial gain, Internet users searching for Complainant’s INTERSPORT mark, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship or affiliation of the website and this is a clear indication that the Domain Name is being used in bad faith (Pfizer Inc. v. jg a/k/a Josh Green, supra; F. Hoffmann-La Roche AG v. Pinetree Development, Ltd., WIPO Case No. D2006-0049; Twitter, Inc. v. Whois Agent, Whois Privacy Protection Service, Inc. / Domain Support, WIPO Case No. D2015-1488.
The Panel considers the following factors: (i) the reputation of Complainant’s mark, (ii) the failure of Respondent to submit a substantive response, (iii) the implausibility of any good faith use to which the Domain Name may conceivably be put, given that as Complainant has demonstrated the Domain Name redirects to the website “www.internationalsportarena.de” of Respondent’s company, (iv) the existence of a written agreement whereby Respondent’s company undertook to refrain from any use of the INTERSPORT mark for hotel accommodation services and for providing sports installations, namely the kind of services provided under the website where the Domain Name redirects to, and (v) the lack of Respondent’s company response to the cease and desist letters of Complainant.
Under these circumstances and on this record, the Panel finds that Respondent registered and is using the Domain Name in bad faith.
Complainant has established Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <intersportarena.com> be transferred to Complainant.
Date: March 29, 2019