WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Grand Slam Tennis Properties LTD. v. Withheld for Privacy ehf / John Veresa
Case No. D2021-1938
1. The Parties
The Complainant is Grand Slam Tennis Properties LTD., United Kingdom, represented by Noerr LLP, Germany.
The Respondent is Withheld for Privacy ehf, Iceland / John Veresa, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <grandslamtennistours.fit> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2021. On June 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 21, 2021, 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 the Complainant on June 23, 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 June 28, 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 June 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 21, 2021.
The Center appointed Nicholas Smith as the sole panelist in this matter on August 4, 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 a United Kingdom company, established in 2009 and co-owned by the four governing bodies that manage the tennis tournaments that are collectively known as the “Grand Slam” tournaments (Australian Open, French Open, Wimbledon, and U.S. Open). It is involved in the administration and licensing of trade marks and other intellectual property associated with the Grand Slam and in particular the word mark consisting of the words “Grand Slam” (the “GRAND SLAM Mark”).
The Complainant holds registered trademarks in various jurisdictions for the GRAND SLAM Mark including a United States registration (No. 85139711), which was registered on January 14, 2014 for services in class 39 including “arranging travel tours”. The Complainant, amongst other activities, licenses the GRAND SLAM Mark to Topnotch Tennis Tours LLC (“Topnotch”) to allow Topnotch to offer specialist tours of tennis tournaments, under the name GRAND SLAM TENNIS TOURS from its website at www.grandslamtennistours.com (“Topnotch Website”).
The Domain Name was registered by the Respondent on January 25, 2021. It is presently inactive but prior to the commencement of this proceeding redirected to a website (the “Respondent’s Website”) that purported to offer travel services identical to those offered by Topnotch under license. The Respondent’s Website is strikingly similar to the Topnotch Website, utilizing a similar design, the same color scheme, copying most of the content and asserting that the Respondent is Topnotch and is using the GRAND SLAM Mark under license from the Complaint.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s GRAND SLAM Mark;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the GRAND SLAM Mark, having registered the GRAND SLAM Mark in various jurisdictions including the United States. The Domain Name is confusingly similar to the GRAND SLAM Mark, as it simply adds the words “tennis tours” which is descriptive of the services for which the GRAND SLAM Mark is registered and is used (by third parties under licence).
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known as the Domain Name nor has the Complainant provided a licence or authorization to register the Domain Name or any domain name incorporating the GRAND SLAM Mark. There is no evidence, since the Respondent registered the Domain Name, of the Respondent’s 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 for a legitimate noncommercial purpose. The Domain Name resolves to a website that has purposely been designed to serve as an exact replica of the Topnotch website, all as a means of deceiving Internet users into believing that the Domain Name and its website are associated with Topnotch and the Complainant. This does not provide the Respondent with rights or legitimate interests.
The Domain Name was registered and is being used in bad faith. Given the use of the Respondent’s Website, the Respondent had knowledge of the GRAND SLAM Mark at the time of registration. Such knowledge is an indication of bad faith registration. The Respondent is using the Domain Name for a website that mimics the Topnotch Website for the purpose of causing confusion and profiting. This amounts to bad faith use under paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the GRAND SLAM Mark, having registrations for the GRAND SLAM Mark as a trade mark in the United States.
The Domain Name contains the GRAND SLAM Mark in its entirety, adding the term “tennis tours” (which describes the services offered by licensees of the Complainant under the GRAND SLAM Mark). The addition of such terms to a complainant’s mark is insufficient to dispel the confusing similarity, see Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056. The Panel finds that the Domain Name is confusingly similar to the Complainant’s GRAND SLAM Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you 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 (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 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 Respondent is not affiliated with the Complainant in any way. The Respondent has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the GRAND SLAM Mark or a mark similar to the GRAND SLAM Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name.
There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial fair use or a bona fide offering of goods and services. Rather, the use of the Domain Name for a website that mimics the Topnotch Website is evidence that the Domain Name is used by the Respondent to pass itself off as the Complainant’s licensee, which does not amount to use for a bona fide offering of goods and services.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has failed to rebut that prima facie case and establish that it has rights or legitimate interests in the Domain Name under the Policy. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, 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:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location. (Policy, paragraph 4(b)).
The Panel finds that the Respondent must have been aware of the Complainant and its reputation in the GRAND SLAM Mark at the time the Respondent registered the Domain Name. The Respondent’s Website is so strikingly similar to the Topnotch Website that the Respondent must have registered the Domain Name in awareness of Topnotch (and given the express statement on the Respondent’s Website that the Grand Slam Mark is used under licence from the Complainant), the Complainant and the Complainant’s reputation in the GRAND SLAM Mark. The Respondent has provided no explanation, and none is immediately obvious, why an entity would register the Domain Name and point it to the Respondent’s Website, unless there was an awareness of and an intention to create a likelihood of confusion with Topnotch, the Complainant and its GRAND SLAM Mark. In these circumstances, the Respondent’s conduct in registering the Domain Name when it was aware of the Complainant’s rights and lacked rights or legitimate interests of its own amounts to registration in bad faith.
The Respondent’s Website purports to offer travel services, which if legitimate would be services in direct competition with the Complainant’s licensee Topnotch, using an almost identical (i.e., intentionally confusing) domain name and very similar website to that used by Topnotch. In these circumstances the Panel finds that that the Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the GRAND SLAM Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website. As such, the Panel finds that the Domain Name is being used in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.
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 <grandslamtennistours.fit> be transferred to the Complainant.
Date: August 16, 2021