WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DAZN Limited v. DOMAIN ADMINISTRATOR, DOMAIN IS FOR SALE AT WWW.DAN.COM
Case No. D2021-1588
1. The Parties
The Complainant is DAZN Limited, United Kingdom, represented by SafeNames Ltd., United Kingdom.
The Respondent is DOMAIN ADMINISTRATOR, DOMAIN IS FOR SALE AT WWW.DAN.COM, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <daznplay.com> is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 21, 2021. On May 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 23, 2021, 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 May 25, 2021, 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 May 25, 2021.
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 May 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 15, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 16, 2021.
The Center appointed Adam Samuel as the sole panelist in this matter on June 23, 2021. 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 an Internet sports subscription video streaming service. It owns the International trademark DAZN, registration number 1335316, registered on March 2, 2016. The Complainant registered the domain name <dazn.com> on August 1, 2002.
The disputed domain name was registered on March 17, 2021. It currently resolves to a website offering the disputed domain name for sale for USD 990.
5. Parties’ Contentions
The disputed domain name involves adding the word “play” to the Complainant’s trademark. The addition of the word “play” is likely to create further confusion in the minds of Internet users, particularly those familiar with the Complainant’s services, as they will assume that the disputed domain name is affiliated with the Complainant’s streaming services. The generic top-level domain (“gTLD”) “.com” should be disregarded as a standard registration requirement.
The Respondent has not registered any trademarks for the term DAZN and there is no evidence that the Respondent holds any unregistered rights to the term “dazn”. The Respondent has not received a license from the Complainant to use a domain name featuring the DAZN trademark.
The disputed domain name currently resolves to active content where the disputed domain name is listed for sale on a popular domain names aftermarket website. The Respondent’s primary intention is to sell the disputed domain name with the trademark value in mind, which is far in excess of the initial costs incurred by its registration. The Respondent is not nor has it ever been known as DAZN. The DAZN trademark is distinctive and is not used in commerce other than by the Complainant. There is no plausible reason for the registration of the disputed domain name other than to take advantage of the goodwill and valuable reputation attached to the DAZN brand. The Complainant’s trademark is a fanciful term with no general usage.
The Complainant has developed a strong global reputation for the DAZN trademark of which the Respondent is aware. The Complainant sent a cease and desist letter on April 13, 2021, and a follow-up notice on April 21, 2021, both of which the Respondent chose to ignore. The Respondent was given the opportunity to provide evidence of any actual or contemplated good faith use but chose not to respond. Offering to sell a confusingly similar domain name can evidence bad faith. The Respondent has been involved in past UDRP domain name disputes. The address details used for the disputed domain name’s registration are false.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has right
(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 disputed domain name consists of the Complainant’s trademark, a made-up word with no ordinary meaning, the word “play” and the gTLD “.com”. The gTLD is irrelevant here because it does not affect the meaning of the disputed domain name and is a standard registration requirement. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Complainant’s trademark is a made-up one. The addition of a word like “play” to a trademark does not prevent the confusing similarity that exists between the disputed domain name and the Complainant’s trademark.
“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive […] meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”
This is particularly the case here where the word refers to an important activity of the Complainant. “Play” is a function that allows users to watch the Complainant’s programmes.
For all these reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The Respondent is not called “daznplay” or anything similar. There is no evidence that the Complainant has ever authorized the Respondent to use its trademarks. The Respondent does not appear to have used the disputed domain name for any purpose other than putting the disputed domain name up for sale.
Based on the available record, where the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests, and in the absence of any response on this point, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name. See section 2.1 of the WIPO Overview 3.0.
C. Registered and Used in Bad Faith
The Complainant’s trademark DAZN is a word without any ordinary meaning except as the Complainant’s name and trademark. From this, the Panel concludes that the Respondent knew of the Complainant’s business when it registered the disputed domain name.
Since its registration, the disputed domain name appears to have resolved to a website offering the disputed domain name for sale for USD 990. These amount to “circumstances indicating that [the Respondent has] registered or [has] acquired the domain name primarily for the purpose of selling… the domain name registration to the complainant … or to a competitor of that complainant, for valuable consideration in excess of [his] documented out-of-pocket costs”. This is evidence of registration and use in bad faith, UDRP, paragraph 4(b)(i) of the Policy. This conclusion is reinforced by the fact that the disputed domain name consists primarily of a made-up word corresponding to the Complainant’s trademark, with an added term related to the Complainant’s business, and so has no inherent value except as related to the Complainant.
For these reasons, the Panel concludes that the disputed domain name was registered and is being used in bad faith. In the circumstances, there is no need to address the other allegations of bad faith made by the Complainant.
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 <daznplay.com> be transferred to the Complainant.
Date: June 27, 2021