WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Australian Rugby League Commission Limited and National Rugby League Limited v. 许振富 (zhenfu xu)

Case No. D2019-3006

1. The Parties

The Complainants are Australian Rugby League Commission Limited (“1st Complainant”) and National Rugby League Limited (“2nd Complainant”), Australia, represented by Demys Limited, United Kingdom.

The Respondent is 许振富 (zhenfu xu), China.

2. The Domain Name and Registrar

The disputed domain name <shopnrl.com> (the “Disputed Domain Name”) is registered with Xin Net Technology Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2019. On December 12, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 16, 2019, 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 9, 2020 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 in English on January 10, 2020.

On January 9, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on January 10, 2020. The Respondent did not comment on the language of the proceeding.

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 in English and Chinese of the Complaint, and the proceedings commenced on January 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 6, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 7, 2020.

The Center appointed Peter J. Dernbach as the sole panelist in this matter on February 19, 2020. 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 1st Complainant was founded as the Australian Rugby League “Board of Control” in 1924, and is the official governing body of rugby league football in Australia. The 2nd Complainant was appointed by the 1st Complainant to operate the National Rugby League premiership on its behalf. For its official email communications, the 2nd Complainant uses the domain name <nrl.com.au>.

The 1st Complainant is the proprietor of a number of relevant trademarks, which are listed below:

The Complainants operate a major transactional website using the URL “www.nrlshop.com”, from which Internet users can purchase official National Rugby League merchandise, the sale of which is an important element of the Complainants’ business. The Complainants also operate an informational website from the URL “www.nrl.com” where Internet users can find the latest news and results from the National Rugby League.

The Respondent is an individual in China, and registered the Disputed Domain Name on August 31, 2017. The Disputed Domain Name resolves to an online shop purportedly selling National Rugby League merchandise.

5. Parties’ Contentions

A. Complainant

The Complainants request that the Disputed Domain Name be transferred to the 2nd Complainant based on the following grounds:

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights.

The 1st Complainant is the proprietor of a number of trademarks incorporating the term “nrl”.

The 2nd Complainant is a wholly controlled subsidiary of the 1st Complainant, and has rights in a trademark under the UDRP for purposes of standing to file a complaint. In addition, as the operator of the National Rugby League Premiership, the 2nd Complainant contends that it has common law rights in the NRL mark.

The Disputed Domain Name incorporates the Complainant’s NRL mark. The specific Top-Level Domain (“TLD”) is generally not an element of distinctiveness that can be taken into consideration when evaluating whether there is a confusing similarity between the Complainants’ trademark and the Disputed Domain Name. The Disputed Domain Name only differs from the Complainants’ marks by the addition of the generic and descriptive word “shop”. The Complainants therefore submit that the Disputed Domain Name is confusingly similar to a name or mark in which they have rights according to the terms of the Policy.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The Complainants have found no evidence that the Respondent has been commonly known as “nrl” or “shop nrl” prior to or after the registration of the Disputed Domain Name. The Respondent is not a licensee of the Complainants, and has not received any permission or consent from the Complainants to use their registered trademarks. In addition, the Complainants have found no evidence that the Respondent owns any trademarks incorporating the terms “nrl” or “shop nrl”. Furthermore, the Complainants have found no evidence that the Respondent has ever traded legitimately under the business name “nrl” or “shop nrl”.

The Complainants further assert that the Respondent’s use of the Disputed Domain Name cannot be construed as legitimate noncommercial or fair use, as the Disputed Domain Name has always resolved to an online shop for sale of counterfeit products, which fails to disclose the lack of any relationship between the Complainants and the Respondent.

Given the fame of the Complainants’ marks and the confusing similarity of the Disputed Domain Name to said marks, there is no conceivable use to which the Disputed Domain Name could be put, now or in the future, that would confer any right or legitimate interest upon the Respondent.

In all of these circumstances, the Complainants assert that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

(iii) The Disputed Domain Name has been registered and is being used in bad faith.

Given that the Complainants and their marks are well known and the Complainants’ NRL mark is highly distinctive, and given the use of the Disputed Domain Name to sell merchandise related to the NRL, it is inconceivable that the Respondent did not have the Complainants firmly in mind when it registered the Disputed Domain Name.

The Respondent is taking advantage of Internet users’ initial interest confusion by registering the Disputed Domain Name, which incorporates the Complainants’ mark and a dictionary word closely associated with the Complainants’ activities. As such, the Disputed Domain Name is, at first glance, confusing to the average Internet user. In addition, the website is almost identical to the previously designed version of the Complainants’ official web shop. The website associated with the Disputed Domain Name lacks any disclaimers that would dispel the confusion regarding the Disputed Domain Name and the associated website. The Complainants also contend that it is highly probable that the Respondent acquired and is using the Disputed Domain Name in bad faith for the purpose of disrupting the Complainants’ businesses.

Furthermore, the Disputed Domain Name is being used for sale of unauthorised and/or counterfeit goods under the Complainants’ trademarks. This assertion has not been rebutted by the Respondent.

Under the circumstances, the Complainants aver that the Disputed Domain Name was acquired and used in bad faith according to the terms of the Policy.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

6.1 Language of the Proceeding

Paragraph 11(a) of the Rules provides that “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

Paragraph 10(b) of the Rules provides that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case”; and paragraph 10(c) of the Rules provides that “[t]he Panel shall ensure that the administrative proceeding takes place with due expedition […].”

The Registration Agreement is in Chinese. The Complainant requested that the language of the proceeding be English. The Respondent was given an opportunity to comment on the language of the proceeding and failed to do so. The Panel notes that the Respondent conducts its business at the website under the Disputed Domain Name in English. The Panel is satisfied that the Respondent has sufficient familiarity with English that the Respondent should be able to understand the language of the Complaint, and has chosen not to respond. Therefore, it will not be prejudicial to the Respondent in its abilities to articulate its arguments in Chinese or English in the administrative proceeding, whereas requiring the Complainant to translate the Complaint and all supporting materials into Chinese would cause unnecessary delay to the administrative proceeding. (Dolce & Gabbana S.r.l. v. Zhang Yali, WIPO Case No. D2013-1101).

In order to ensure fairness to the Parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding and the decision will be rendered in English.

6.2 Consolidated Complainants

As stated in section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “[i]n assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation.”

The Panel finds that consolidation in this case is proper. On December 12, 2019, the Complainants filed a joint complaint against the Respondent. The Complainants claim to have a common grievance against the Respondent because there is a common legal interest in rights affected by the Respondent’s conduct.

The 1st Complainant owns numerous trademark registrations for marks consisting of the “nrl” element in Australia. The 2nd Complainant was appointed by the 1st Complainant to operate the National Rugby League premiership on its behalf. The Complainants operate websites associated with the NRL mark. The Panel sees no inequity to the Respondent, who had full opportunity object to the consolidation but failed to do so.

6.3 Substantive Issues

In this UDRP proceeding, the Complainants must prove, by a preponderance of the evidence, each of the following UDRP elements:

(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that (i) [the Disputed Domain Name] is identical or confusingly similar to a trademark or service mark in which the complainant has rights[.]”

The 1st Complainant has established that it owns a number of relevant trademarks containing the “nrl” element in Australia.

The Disputed Domain Name consists of the Complainants’ NRL mark, the word “shop” and the generic Top-Level Domain (“gTLD”) “.com”. It is well established that where the distinctive and prominent element of a disputed domain name is the complainant’s mark, and the only deviation is the inclusion a term or the gTLD as prefix, such prefix does not negate the confusing similarity between the domain name and the mark. Here, the Complainants’ mark is the distinctive and prominent element of the Disputed Domain Name. Neither the word “shop”, nor the gTLD “.com” negate the confusing similarity between the Disputed Domain Name and the Complainants’ NRL mark.

The Panel therefore finds that the Disputed Domain Name is confusingly similar to the Complainants’ NRL mark. The condition of paragraph 4(a)(i) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that […] (ii) [the respondent has] no rights or legitimate interests in respect of the [disputed] domain name[.]”

Paragraph 4(c) of the Policy sets out the following several circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Complainants have established that they are the owners of the NRL marks, and that they have not licensed or otherwise permitted the Respondent to use any of their trademarks, nor have they permitted the Respondent to apply for or use any domain name incorporating the NRL marks. Furthermore, the record shows that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name, because the website associated with the Disputed Domain Name is used for sales of allegedly counterfeit goods of the Complainants. The page of the Respondent’s website associated with the Disputed Domain Name prominently displays the Complainants’ NRL (Figurative) mark and the “shopnrl.com” element to create an impression of association or affiliation with the Complainants. The record shows a lack of any disclosures regarding the Respondent’s relationship with the Complainants. Such use demonstrates that the Respondent has used the Disputed Domain Name to derive a commercial benefit.

The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The burden of production thus shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name. The Respondent did not submit any evidence or allegation to show that it has rights or legitimate interests in accordance with paragraph 4(c) of the Policy in respect of the Disputed Domain Name. Therefore, the Respondent has not claimed that it has rights or legitimate interests in the Disputed Domain Name.

Having considered the above, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable Provider, in compliance with the Rules of Procedure, that [...] (iii) [the respondent’s] domain name has been registered and is being used in bad faith.”

The relevant part of paragraph 4(b) of the Policy explicitly states that “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: [...] (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 web site or location or of a product or service on your web site or location.”

Section 3.1.4 of the WIPO Overview 3.0 states that “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.”

The Respondent is using the Disputed Domain Name to direct Internet users to a website that offers the Complainants’ merchandise for sale. The website prominently features the Complainants’ NRL trademark, and offers no disclosure as to the absence of any relationship between the Complainants and the Respondent. It is evident that the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainants’ NRL trademark as to the source, sponsorship, or affiliation of its website.

Having considered the above, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith, and thus the condition of paragraph 4(a)(iii) of the Policy has been fulfilled.

7. Decision

For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Disputed Domain Name <shopnrl.com> be transferred to the 2nd Complainant National Rugby League Limited.

Peter J. Dernbach
Sole Panelist
Date: March 3, 2020