WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Australian Rugby League Commission Limited and National Rugby League Limitedbmi v. Anton Olivieri

Case No. D2020-0870

1. The Parties

The Complainant is Australian Rugby League Commission Limited, Australia (“First Complainant”) and National Rugby League Limitedbmi, Australia (“Second Complainant”), represented by Demys Limited, United Kingdom.

The Respondent is Anton Olivieri, United States of America.

2. The Domain Name and Registrar

The disputed domain name <nrlshops.com> is registered with TLD Registrar Solutions Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2020. On April 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 9, 2020, 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 April 11, 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 on April 16, 2020.

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 April 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 20, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 23, 2020.

The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on June 15, 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 First 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 Second Complainant was appointed by the First Complainant to operate the National Rugby League premiership on its behalf. For its official email communications, the Second Complainant uses the domain name <nrl.com.au>.

The First Complainant is the proprietor of several 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 disputed domain name was registered on October 12, 2019 and resolves to an online shop purportedly selling National Rugby League merchandise.

5. Parties Contentions

A. Complainants

In summary, the Complainants claim that the disputed domain name is confusingly similar to the trademark NRL in which the First Complainant has registered rights and the Second Complainant has common law rights; that the Respondent has no rights or legitimate interests in the disputed domain name, which has been registered and is being used in bad faith.

The Complainants have found no evidence that the Respondent has been commonly known as “nrl” or “nrl shops” 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 “nrl shops”. Furthermore, the Complainants have found no evidence that the Respondent has ever traded legitimately under the business name “nrl” or “nrl shops”.

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’ trademarks and the confusing similarity of the disputed domain name to said trademarks, 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.

Since the Complainants and their trademarks 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 and their trademarks in mind when it registered the disputed domain name.

The Respondent is taking advantage of Internet users’ likely 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 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 unauthorized and/or counterfeit goods under the Complainants’ trademarks.

Finally, the Complainant’s request that the Panel issue a decision ordering that the disputed domain name be transferred to the Second Complainant.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

6.1 Consolidated Complainants

As per section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the Panel finds that it is proper to permit consolidation in this case. On April 8, 2020, 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 First Complainant owns numerous trademark registrations for marks consisting of the “nrl” element in Australia. The Second Complainant was appointed by the First 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 has had full opportunity to object to the consolidation and has not done so.

Therefore, the Panel finds that it is proper to permit consolidation of Complainants in this case.

6.2 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

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

The Panel is satisfied that the Complainants have proved that it they have rights in the trademark NRL.

As set forth in section 1.7 of WIPO Overview 3.0 the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the disputed domain name is confusingly similar with the trademark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.

The disputed domain name consists of the Complainants’ NRL mark, the word “shops” and the generic Top-Level Domain (“gTLD”) “.com”; the Complainants’ mark being the distinctive and prominent element of the disputed domain name. Neither the word “shops”, nor the gTLD “.com” suffice to avoid 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 and that the condition of paragraph 4(a)(i) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

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:

- 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

- 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

- 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 resembles the earlier site of the Complainants’ website to create an impression of association or affiliation with the Complainants for the purpose of confusing Internet consumers and thereby obtaining commercial gain.

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 evidence demonstrating rights or legitimate interests in the disputed domain name. The Respondent did not submit any evidence or allegation based on the circumstances mentioned in paragraph 4(c) of the Policy nor any other claims or evidence to show that it has rights or legitimate interests in respect of the disputed domain name.

In view of the above, the Panel finds that the Complainants have satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel is satisfied that the Respondent must have been aware of the Complainant’s business and its NRL mark when it registered the disputed domain name on October 12, 2019.

The Respondent when registering the disputed domain name has targeted the Complainants’ trademark NRL, which is the most prominent and distinctive element in the disputed domain name, followed by the descriptive word “shops” closely related to Complainant’s business, with the intention to confuse Internet users and capitalize on the fame of Complainant’s trademark for its own monetary benefit.

In view of the evidence produced by the Complainants, the goods offered on the Respondent’s website under the disputed domain name <nrlshops.com> more likely than not, are counterfeits of the goods offered on the Complainant’s website “www.nrl.shop.com”.

The relevant part of paragraph 4(b) of the Policy 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.”

The Respondent is using the disputed domain name to direct Internet users to a website that offers what appears to be 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.

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 paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <nrlshops.com> be transferred to the Second Complainant National Rugby League Limited.

Miguel B. O’Farrell
Sole Panelist
Date: June 29, 2020