WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Phumelela Gaming & Leisure Limited v. Danny Sullivan
Case No. D2020-0245
1. The Parties
The Complainant is Phumelela Gaming & Leisure Limited, South Africa, represented by Moore Attorneys Incorporated, South Africa.
The Respondent is Danny Sullivan, United States of America, self-represented.
2. The Domain Name and Registrar
The disputed domain name <soccer10.com> 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 January 31, 2020. On January 31, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 3, 2020, 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 February 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 5, 2020. In accordance with the Rules, paragraph 5(b), the Respondent was granted an automatic four calendar day extension for the Response, and the due date for the Response was updated to March 9, 2020. The Response was filed with the Center March 9, 2020.
The Center appointed Christopher J. Pibus, Archibald Findlay S.C. and The Hon Neil Brown Q.C. as panelists in this matter on May 7, 2020. The Panel finds that it was properly constituted. Each member of 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.
The Center issued Procedural Order No. 1 on May 26, 2020, requiring the Respondent to respond by May 31, 2020. The Respondent did not respond to the Order. The Center then issued Procedural Order No. 2 on June 6, 2020, which requested the Respondent to address certain formalities in his submissions. Respondent then re-submitted his original purported but non-compliant Response again.
4. Factual Background
The Complainant is a public company in Johannesburg, South Africa, where it carries on business in the field of horse-racing and gaming, both online and through actual retail outlets. Its gaming operations involve tote betting on rugby and soccer games. The Complainant has been licensed in the field of horse-racing since 1997, and it launched its soccer betting business in 2003, under the name SOCCER 6. Subsequently, Complainant expanded its soccer-related gambling under the names SOCCER 6, SOCCER 10 and SOCCER 13.
In South Africa, Complainant owns various registered trademarks comprising or including SOCCER 10. It now asserts that the Respondent has adopted an identical mark for the disputed domain name <soccer10.com> which was allegedly registered on December 19, 2016.
Respondent is an individual residing in Pittsburgh, Pennsylvania, United States of America, where he carries on business as a domain name investor. Respondent owns a portfolio of more than 15,000 domain names, including the disputed domain name, which was actually acquired by him on February 8, 2017. At the present time, the disputed domain name reverts to a landing page where it is offered for sale for USD 1,999.
5. Parties’ Contentions
The Complainant relies on the following trademark registrations in South Africa as the foundation for this proceeding:
Trademark Registration No. 2010/23473-4 for SOCCER 10 in Class 41
Trademark Registration No. 2011/15813-4 for SOCCER 10 in Class 16
Trademark Registration No. 2011/15813-4 for SOCCER 10 in Class 41
Trademark Registration No. 2017/29255 for SOCCER 10 in Class 38
Trademark Registration No. 2017/29256 for SOCCER 10 in Class 38
The earliest of those registrations dates back to 2012. Although none of the marks appear to have been protected by registrations outside South Africa, Complainant also submits that it owns common law rights internationally in the SOCCER 10 trademark. Complainant asserts that Respondent has used an exact replication of its trademark in the disputed domain name, and argues that the first element of the Policy is therefore clearly established.
With respect to the absence of rights and legitimate interests. Complainant submits a number of points: (1) Respondent is not commonly known by the name SOCCER 10; (2) Respondent is not operating a genuine business under the name; (3) Respondent is offering the disputed domain name for sale; (4) “there can be no doubt that the domain name was registered merely to interfere with the business of the Complainant”; (5) Respondent is “trying to sell the domain at a profit”; and (6) “it is possible that the Respondent registered the domain name <soccer10.com> solely for the purpose of trying to sell the domain name to the Complainant for its own commercial gain”. (This claim is repeated in connection with bad faith).
Finally, with respect to bad faith, Complainant makes 3 submissions in support of its conclusion that Respondent has engaged in an abusive registration: (1) Respondent’s purpose is to confuse the public and to generate a profit by selling a domain name which embodies the goodwill and reputation of Complainant’s trademark; (2) the domain name was registered “in order to interfere with the business of the Complainant as well as the Complainant’s online presence”; and (3) Respondent has intentionally tried to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark.
The Respondent asserts that he is an active investor in numerous domain names, which he acquires using software to identify attractive combinations and trends. He claims legitimate interests in the disputed domain name and denies any attempt to target the Complainant or otherwise engage in conduct amounting to bad faith.
With respect to the first element, Respondent does not deny the existence of trademark rights in South Africa, or the claim of confusing similarity. However, he does dispute the scope of Complainant’s reputation in its brand. He asserts that Complainant is “completely unknown” in the United States, where he resides. He also notes that Complainant’s betting business is limited to users inside South Africa, because of Complainant’s requirement that users must have “a passport and bank account with a South African bank”.
With respect to his own rights and legitimate interest in the disputed domain name, Respondent describes in some detail his business model which involves the building of a portfolio of domain names, which he selects through the use of customized software designed to identify trends and naming patterns in popular domain name combinations and elements. In this instance, he followed an identified trend of domain names which combined the word “soccer” with various numbers from 1 to 11. He denies having registered the disputed domain name with the purpose of selling it to Complainant, and states that he never contacted the Complainant: he claims the Complainant’s existence was “completely unimportant in relation to my ownership of the domain name”.
Finally, with respect to bad faith, Respondent similarly denies any abusive intention in registering or using the disputed domain name. He claims that domain name investing is a legitimate business purpose and points out he made no attempt to trade on Complainant’s reputation by using content related to soccer betting, or otherwise target the Complainant in any way. He characterizes his purpose and business model in this specific situation as follows: “I only registered this name, as it followed a very strong naming trend.”
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest 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
Complainant relies on the 5 South African trademark registrations listed in section 5.a, and on common law trademark rights in South Africa and internationally. The Panel finds that the registered trademarks from South Africa are sufficient to establish the requisite rights in the hands of Complainant. Since the disputed domain name consists entirely of the registered word mark, it is clearly identical to the rights held by Complainant. For purposes of this proceeding, Complainant has satisfied the requirements of the first element under the Policy.
Complainant has also asserted “extensive” common law rights in its SOCCER 10 brand which are said to extend “internationally”. These claims are not necessary to establish Complainant’s claim under the first element of the Policy in light of our comments above. However, the issue of the scope of Complainant’s reputation in its trademark and whether it is “widely recognized” or “well-known” outside South Africa are relevant to the claims of an absence of legitimate rights or interests on the part of Respondent, and bad faith.
Complainant claims that its mark is famous, well known and international in scope. Complainant expressly relies on “extensive” common law rights that extend beyond South Africa, which make the mark well known “internationally”. This is important because the Complainant’s actual gaming business is restricted to South Africa. Complainant’s website confirms that users need to have a South African passport/bank account in order to place bets on the system.
A number of prior panel decisions have established guidelines with respect to the type of proof required to establish common law rights. Relevant evidence demonstrating distinctiveness includes: (1) amount of sales; (2) extent of advertising; (3) actual public recognition. The extent of online presence through social media is often a particularly relevant source of evidence. Where a mark lacks inherent distinctiveness, a greater onus may be borne by the Complainant to bring forward evidence of acquired distinctiveness (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.3 and Sarah Lonsdale & Stuart Clark t/a RocknCrystals v. Domain Admin / This Domain is For Sale, HugeDomains.com, WIPO Case No. D2019-1584).
So what evidence does Complainant furnish of its extended common law rights? The Panel can identify little of substance, beyond mere assertions. In the current marketplace, international reputation is typically evidenced by international sales and marketing. The Complaint contains no evidence of actual sales even in South Africa itself for SOCCER 10 or SOCCER 6. There is no basic information about current or past number of players, number of games, prize winnings, revenues per year, or any expenses for advertising or otherwise developing a reputation in the SOCCER 10 brand. As far as marketing goes, there is an operating website at the domain name <soccer6.co.za>, which can be accessed for viewing internationally, subject to South African residency requirements for actual betting. There is no evidence proffered to show what portion (if any) of traffic comes from offshore.
The other relevant category of marketing to consider is social media. Complainant attempts to rely on evidence with respect to Facebook and Twitter. Under scrutiny, that evidence turns out to be “thin soup”. Complainant directs us to Annex E to the Complaint, but it turns out not to be evidence from social media but rather evidence comprised of 4 pages from the parent website “www.phumelela.com” where there are no references to SOCCER 10, followed by 10 pages from the “www.soccer6.co.za” website featuring the SOCCER 6 logo, and setting out results for certain SOCCER 10 matches, with no indication that SOCCER 10 is a trademark. The pages end with multiple references to SOCCER 6, consistent with it constituting the SOCCER 6 website.
In this exhibit and elsewhere in the evidence, there is a complete absence of anything showing the alleged Twitter or Facebook sites. When the Panel independently found the referenced Facebook and Twitter pages online, it was possible to see branding principally for SOCCER 6 and Tabonline Soccer with minimal references to SOCCER 10. In the absence of better evidence, the Panel can only conclude that there is little social media presence for the SOCCER 10 brand.
In light of all these gaps in evidence, the Panel does not accept the claim to common law rights extending internationally, or the idea that the SOCCER 10 mark is well known outside South Africa.
B. Rights or Legitimate Interests
It is not necessary for the Panel to make a decision on the absence of rights or legitimate interests, in light of the findings on bad faith.
C. Registered and Used in Bad Faith
As a general comment, the Panel wishes to emphasize the importance of evidence-based submissions in domain dispute proceedings. It is not sufficient simply to track the language of the Policy for the requisite elements of a complaint, by way of declaratory or conclusory statements. Complaints ought to be structured so that each point in the argument is supported by corresponding pieces of tangible evidence. Exhibits that directly show the use of the trademark in issue, or the extent of reputation, or the scope and content of advertising are far more probative than mere statements or submissions.
This requirement should be obvious, as UDRP claims are proceedings which must in all cases be proved on the balance of probabilities. But even if this requirement was not obvious as a matter of general practice, the Policy makes it perfectly clear, for paragraph 4(a), after setting out the three elements that must be proved, provides: “In the administrative proceeding, the complainant must prove that each of these three elements are present.” Moreover, panelists have made it clear that they expect the parties to support their submissions with evidence.
Bearing these comments in mind, the Panel is not satisfied that Complainant in this matter has mustered sufficient evidence to establish bad faith – or “abusive” conduct as Complainant claims – for purposes of this proceeding. Complainant’s submissions are brief, and are principally comprised of argument and conclusory statements which are not tied to specific conduct or documents, or evidence which relates to abusive intentions of Respondent, or targeting of Complainant or its business.
Complainant states the Respondent’s “purpose of registering the disputed domain name is to confuse members of the public by making them believe the disputed domain name is that of the Complainant”, and then adds “In fact, it is possible that Respondent registered the domain name <soccer10.com> solely for the purpose of trying to sell the domain name to the Complainant for its own commercial gain”.
In making these submissions, Complainant recognizes that the purpose or intention of the Respondent is a critical element of bad faith. However, there is no actual evidence to support the conclusions proposed by Complainant except for the single fact that the disputed domain name was offered for sale. The first problem Complainant’s pleading raises is that it is founded in part on speculation: Complainant can only say it is “possible” that Respondent was deliberately targeting Complainant as a purchaser. There is no probative value in a statement founded on possibility. As there was no actual evidence showing an approach was made by Respondent to Complainant, the submission fails on a balance of probabilities.
Complainant’s submissions that Respondent’s purpose was to confuse members of the public who know the SOCCER 10 brand, or to interfere with the business of the Complainant, both rest on the assumption that Respondent was aware of Complainant’s business and deliberately targeted that business. Complainant offers no tangible evidence on these points. Typically, a Panel would expect to see evidence of content of Respondent’s website showing a connection to soccer betting or some kind of gaming, or links to Complainant’s competitors, or evidence of diverted traffic away from Complainant’s active websites. There is no such evidence proffered by Complainant.
The approach of the Panel is clearly determined as being that it is required to find that Complainant bears the onus of establishing its case on a balance of probabilities. It does not have additional powers to exercise discretion or apply a lesser test if a complainant fails to discharge that onus. Accordingly, and as a result of the failures noted above the Panel finds that Complainant has not met the burden of proof with respect to bad faith.
As a final issue, Panel wishes to address the statement purporting to be a Response offered by the Respondent, who is self-represented in this proceeding. The submissions made by Respondent are problematic in their own way. The Response takes the form of an untitled and unsigned email, which the Respondent evidently composed himself. The Panel issued two procedural orders, requesting Respondent to correct certain formal deficiencies, and to declare that the evidence he provided was true and accurate. Respondent failed to make the requested declaration or to sign his submissions. As a result, the Panel cannot accord any weight to the evidence of the Respondent, a negative consequence which the Panel noted as a possibility in Procedural Order No. 2.
The Panel was therefore put in the position of deciding this case without a Response, for none was filed in accordance with the Rules. In effect the Panel has had to decide if the Complaint had been made out without considering the contents of a Response. As explained above, the Panel was nevertheless not satisfied - on the balance of probabilities – that Complainant had proven its case. However, the Panel also wishes to note that parties such as the Respondent in this matter – even when self-represented – ought to frame their Responses to meet basic standards and the specific requirements of the Rules, including: (i) the document should be clearly identified as a Response; (ii) the caption or heading of the proceeding should be set out (ii) the name and role of the person or entity filing the Response needs to be identified; and (iii) the completeness and accuracy of the contents of the Response need to be affirmed by some sort of clear statement to that effect , as mandated by Rule 5 (viii). These standards would assist panelists in weighing the evidence proffered by respondents, without imposing an unduly onerous burden on the drafting skills of unrepresented parties.
In all the circumstances, the Panel finds that Complainant has not satisfied the requirements under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, the Complaint is denied.
Christopher J. Pibus
Archibald Findlay S.C.
The Hon Neil Brown Q.C.
Date: June 19, 2020