WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
JD Sports Fashion Plc v. Qing Xian Lin
Case No. D2021-2039
1. The Parties
Complainant is JD Sports Fashion Plc, United Kingdom, represented by Urquhart-Dykes & Lord, United Kingdom.
Respondent is Qing Xian Lin, China.
2. The Domain Name and Registrar
The disputed domain name <footpatrolldn.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 June 28, 2021. On June 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 30, 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 Complainant on July 1, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 1, 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 Respondent of the Complaint, and the proceedings commenced on July 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 26, 2021. Respondent sent an informal email to the Center on July 14, 2021. The Center informed the Parties of its commencement of Panel appointment process on July 28, 2021.
The Center appointed Scott R. Austin as the sole panelist in this matter on July 30, 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.
On August 13, 2021, due to exceptional circumstances, the Panel instructed the Center to notify the parties that the decision due date is extended to August 20, 2021.
4. Factual Background
Complainant states in its Complaint and provides evidence in the respective annexes sufficient to support that Complainant is a sports-fashion and outdoor brands retail company based in Bury, Greater Manchester, United Kingdom. Founded in 1981 as John David Sports from a single store in Bury, it became known as “JD Sports” and today operates over 2,600 stores in 20 territories around the world under various brands including, since 2002, footwear stores operated under the trademark FOOTPATROL (the “FOOTPATROL Mark”). FOOTPATROL is a well-known destination sneaker store, based in the heart of London’s Soho district on Berwick Street, with a history of supplying the most exclusive footwear. Specializing in new & classic sneakers, limited editions, Japanese exclusives, and rare deadstock, FOOTPATROL has been at the heart of supplying the sneaker fraternity with desirable footwear, apparel and accessories as well as providing a hub for the sneaker community to come and chat about what they love most. In 2018, Complainant opened a second store under the FOOTPATROL brand in Paris, France.
Complainant is the owner of numerous trademark registrations across the world containing the FOOTPATROL Mark covering a range of clothing products in International Class 25 and online retail services for the sale of a range of clothing and sporting goods products in International Class 35, such as United Kingdom Trade Mark Registration No. UK00002290093 for the mark FOOTPATROL registered on March 21, 2003 for “Footwear; headwear; articles of clothing, none being jeans or garments for outerwear” in International Class 25; United Kingdom Trade Mark Registration No. UK00002589226 for the mark FOOTPATROL, registered on October 28, 2011 for among others, online retail services selling a range of clothing and sporting goods products enabling customers to conveniently view and purchase those goods via an Internet webpage or webpages in International Class 35; and International Trademark Registration No. 1138962 for the mark FOOTPATROL, registered on April 24, 2012 for goods and services in International Classes 18, 25, and 35 and extends to Australia, the European Union, Japan, New Zealand, Singapore, and the United States
In addition to its physical stores, since May 2, 2003, Complainant has continuously used its domain name <footpatrol.com> from which it operates its official FOOTPATROL website at “www.footpatrol.com”, to promote the activities of its FOOTPATROL businesses (the “Official FOOTPATROL Website”) and owns variations of the FOOTPATROL Mark as domain names in numerous generic Top-Level Domains (“gTLD”) and country-code Top-Level Domains (“ccTLD”), including domain names used to access its related e-commerce websites at “www.footpatrol.fr”, “www.footpatrol.dk”, “www.footpatrol.nl”, “www.footpatrol.fi”, “www.footpatrol.se”, “www.footpatrol.ie”, “www.footpatrol.de”, and “www.footpatrol.it”, screen shots for each have been submitted as Annexes to the Complaint.
The disputed domain name was created on September 28, 2020. The WhoIs record submitted for the disputed domain name shows it is registered with the privacy redactions leaving only the original Respondent as “1”, but the Registrar has revealed Respondent as Qing Xian Lin, who resides in China.
As of the date of filing of the Complaint, the disputed domain name resolved to Respondent’s competing website where, like Complainant, Respondent sells athletic footwear to retail consumers with image content of competing athletic footwear products, logos, trademarks and web page layout content similar to those used by Complainant and third parties competing with Complainant in the retail sale of athletic footwear.
5. Parties’ Contentions
Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s trademark; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
Respondent did not file a Response. On July 14, 2021, the Center received a communication from “ANDI S COLKER” from an email address associated with Respondent (“Mr. Colker”) in the WhoIs details revealed by the involved Registrar for the disputed domain name after the Complaint was filed.
The Panel notes that the email communication was in response to the Center’s “Notification of Complaint and Commencement of Administrative Proceeding” communication sent to the Parties and thus, the Panel will treat this communication as coming from Respondent. The email from Mr. Colker on behalf of Respondent incorporated the following statements:
“Hi, I was disappointed when I saw this complaint. I did not imitate or misappropriate this domain name. How can I submit a dispute case to help me.”
Respondent did not file any substantive response in reply to Complainant’s contentions on or before the deadline for filing a response of July 26, 2021.
6. Discussion and Findings
There are no exceptional circumstances within paragraph 5(e) of the Rules to prevent this Panel from determining the present dispute based upon the Complaint (as amended), notwithstanding the failure of any person to lodge a substantive formal Response in compliance with the Rules. Under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
Where no substantive Response is filed, however, Complainant must still make out its case in all respects under paragraph 4(a) of the Policy. To succeed, Complainant must demonstrate that all 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 Complainant has rights;
(ii) 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.
The Panel will address each of these requirements in turn.
The standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.2.
A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has demonstrated its rights because it has shown that it is the holder of multiple valid and subsisting trademark registrations for the FOOTPATROL Mark. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657.
Prior UDRP panels have held “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; see also Philip Morris USA Inc v. Contact Privacy Inc. Customer 1242276235 / NICHAPHA PRADABRATTANAB, WIPO Case No. D2018-1138 (where a disputed domain name incorporates a complainant’s mark in its entirety, adding a single letter, a generic and/or descriptive term, and a gTLD to the complainant’s mark does not negate confusing similarity between the disputed domain name and mark under Policy 4(a)(i).) WIPO Overview 3.0, section 1.8, (“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”). Furthermore, the addition of the gTLD “.com” is irrelevant in determining whether the disputed domain name is confusingly similar. See, Research in Motion Limited v thamer Ahmed Alfarshooti, WIPO Case No. D2012-1146; and WIPO Overview 3.0, section 1.11.
The disputed domain name incorporates Complainant’s FOOTPATROL Mark and adds the geographically descriptive term “ldn”, which term is a common abbreviation for “London”, the capital city of the United Kingdom and where Complainant’s leading FOOTPATROL store for athletic footwear is located. The disputed domain name, therefore, incorporates in its entirety Complainant’s registered FOOTPATROL Mark.
Complainant’s FOOTPATROL Mark is recognizable as incorporated in its entirety into the disputed domain name and for that reason the Panel finds the disputed domain name confusingly similar to the FOOTPATROL Mark in which Complainant has rights.
Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Under the second element of the Policy, a complainant is first required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If a complainant makes that showing, the burden of production on this element shifts to the respondent to come forward with relevant evidence of such rights or legitimate interests in the domain name. If the respondent fails to come forward with such evidence, a complainant is generally, deemed to have satisfied the second element. See WIPO Overview 3.0, section 2.1. See also, Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Respondent has not filed a formal response to come forward to show any rights or legitimate interests in the disputed domain name under the Policy at paragraph 4(c).
Complainant has established, prima facie, that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant asserts that Complainant has no business or other relationship with Respondent, and that Respondent has never received Complainant’s consent, license, or any other form of authorization from Complainant to make use of the FOOTPATROL Mark or Complainant’s trademarks in any manner, including in the registration of the disputed domain name.
Prior UDRP panels have held, that in the absence of any license or permission from a complainant to use its trademark, no actual or contemplated bona fide or legitimate use of a disputed domain name incorporating a well-known trademark could reasonably be claimed. See Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875.
Complainant also shows that Respondent is not commonly known by the disputed domain name because the pertinent WhoIs information identifies the Registrant as “Qing Xian Lin” which does not resemble the disputed domain name in any manner. The original Respondent listed in the WhoIs record submitted with the initial Complaint was redacted for privacy, showing only “1”, which also does not resemble the disputed domain name. A respondent not commonly known by the disputed domain name may support a finding of a lack of rights or legitimate interests. See World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642. Since there is no evidence here, including the WhoIs record for the disputed domain name, suggesting that Respondent is commonly known by the disputed domain name, Respondent cannot under the circumstances be regarded as having acquired rights to or legitimate interests in the disputed domain name within the meaning of 4(c)(ii). See Moncler S.p.A. v. Bestinfo, WIPO Case No. D2004-1049.
It is generally regarded as prima facie evidence of no rights or legitimate interests if a complainant shows that the disputed domain name is identical or confusingly similar to a complainant’s trademark, that the respondent is not commonly known by the disputed domain name, and that a complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. See, Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857.
Respondent’s use of the disputed domain name at the filing of the Complaint is to redirect Internet users to Respondent’s competing website where, like Complainant, Respondent sells athletic footwear to retail consumers. Use of a disputed domain name to offer competing products and services may not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use of the name under Policy paragraphs 4(c)(i) and (iii). This copycat website as shown in screen shots of Respondent’s website in the Annexes attached to the Complaint clearly features logos, images of specialized high end athletic footwear from well-known manufacturers featured on Complainant’s site, similar web page layout to Complainant and its competitors, added to the nature of the disputed domain name, incorporating Complainant’s trademark and related terms, implies that Respondent is associated or affiliated with Complainant and its FOOTPATROL Mark and may confuse potential customers into thinking that Respondent is associated with Complainant. Importantly Respondent’s website, also includes adverse terms that Complainant has said it would never use, such as a “no returns and no refunds” policy, which Complainant asserts will adversely affect its reputation and business and may be in violation of consumer protection laws as well. Internet users will foremost recognize the FOOTPATROL Mark in the disputed domain name. Thereby, the nature of the disputed domain name carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by Complainant. See WIPO Overview 3.0, section 2.5.1.
The website content evidence submitted supports Complainant’s argument that by utilizing the entirety of Complainant’s FOOTPATROL Mark along with the geographical term “ldn”, the location of Complainant’s flagship store based in the heart of London’s Soho district on Berwick Street, Respondent is clearly attempting to mislead Complainant’s business customers into believing that the products sold at Respondent’s website accessed at the disputed domain name are associated with Complainant.
Prior UDRP panels have held that the use of a domain name for illegal activity (e.g., phishing, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. See WIPO Overview 3.0, section 2.13. See also, Springer Nature Limited v. Registration Private, Domains By Proxy, LLC / Collections Springer Nature, WIPO Case No. D2020-0955.
In view of the above, the Panel finds that Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any argument or evidence to rebut Complainant’s prima facie case. The Panel determines, therefore, that Respondent does not have rights or legitimate interests in the disputed domain name and that Complainant has successfully met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Complainant contends that because Respondent has created a domain name that is confusingly similar to Complainant’s FOOTPATROL Mark, the domain name Complainant uses to operate its Official FOOTPATROL Website, as found in section 6.A. above, it is implausible to believe that Respondent was not aware of Complainant’s mark when it registered its confusingly similar disputed domain name. UDRP 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 widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See, WIPO Overview 3.0, section 3.1.4; see also, Allianz SE v. Well Domains are either owned by us or Client Managed, WIPO Case No. D2008-0535.
The Panel also notes here additional factors under WIPO Overview 3.0, section 3.1.4 and its cases from which the Panel may infer bad faith registration: (i) Respondent’s incorporation of the suffix “ldn” in the disputed domain where “ldn” is a geographically descriptive abbreviation for London, United Kingdom, where Complainant’s leading retail store is located in the trendy retail Soho district; (ii) Complainant’s Official Website for Complainant’s online retail athletic apparel services being accessed at “www.FOOTPATROL.com”, a strikingly similar string, which suggests Respondent targeted Complainant’s FOOTPATROL Mark when it picked the disputed domain name inserting only descriptive terms related to Complainant’s business, such as “ldn” representing the location of Complainant’s flagship store; and (iii) the lack of Respondent’s rights or legitimate interests in the disputed domain name, registered to engage in per se illegitimate activity, passing itself off as Complainant to sell competing athletic footwear for commercial gain. Given the circumstances of this case, such a showing is sufficient to establish bad faith registration. See, WIPO Overview 3.0, section 3.2.1.
Bad faith use is also clear from Respondent’s illegal conduct as discussed in detail in section 6.B. above, providing content to encourage purchase of Respondent’s competing products under the disputed domain name suggesting an affiliation with Complainant to solicit sales from Complainant’s unsuspecting prospective and existing customers for Respondent’s commercial gain and therefore, has registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. See, WIPO Overview 3.0, sections 3.1.4 and 3.4; see also, Accenture Global Services Limited v. Yankee, Yankees, WIPO Case No. D2018-0217; and BHP Billiton Innovation Pty Ltd v. Domains By Proxy LLC / Douglass Johnson, WIPO Case No. D2016-0364.
For these reasons, the Panel finds bad faith registration and use, and Complainant has met its burden 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 <footpatrolldn.com> be transferred to Complainant.
Scott R. Austin
Date: August 23, 2021