WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dorna Sports, S.L. v. Whois Agent, Whois Privacy Protection Service, Inc. / Derek Hicks, ETS.Racing
Case No. DTV2019-0001
1. The Parties
The Complainant is Dorna Sports, S.L. of Madrid, Spain, represented by UBILIBET, Spain.
The Respondent is Whois Agent, Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America (the “United States”) / Derek Hicks, ETS.Racing of Gateshead, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <motogp.tv> is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2019. On March 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 26, 2019, 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 March 27, 2019 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 March 28, 2019.
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 March 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 18, 2019, which was extended until April 22, 2019 following a request from the Respondent. The Response was filed with the Center on April 22, 2019.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on May 3, 2019. 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
According to the Complaint, the Complainant was established in 1988 and, since 1991, has been managing the MotoGP world championship. As a result, the Complainant holds the exclusive commercial and television broadcast rights to the FIM Road Racing World Championship Grand Prix (i.e., the “MotoGP”).
The Complainant has provided evidence that it owns numerous registered trademarks for a figurative mark consisting of the word “MotoGP” and a stylised representation of (presumably) a chequered flag. For present purposes, it is sufficient to record the specifics of one registration, European Union Trademark No. 001382795. This trademark is registered in respect of a wide range of goods and services in international classes 3, 4, 8, 9, 12, 14, 16, 18, 20, 21, 24, 25, 28, 30, 32, 34, 35, 38, 41 and 42. The application was filed on November 12, 1999 and formally registered on February 13, 2001.
The Respondent registered the disputed domain name on November 6, 2002.
It is not in dispute between the parties that the disputed domain name has never resolved to an active website. The disputed domain name does appear, however, to have been listed for sale on the website at <afternic.com> as discussed further below in section 5C.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has 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.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the figurative MOTOGP and device trademark referred to above of which the European Union Trademark No. 001382795 is one example.
In the case of a figurative trademark such as the present, the textual element “MotoGP” is the relevant part of the trademark for the purposes of the comparison as the design element cannot be represented in a domain name and is not so dominant as to overtake the textual element. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.10. Accordingly, the disputed domain name is identical for the purposes of the Policy to the Complainant’s trademark.
The Respondent disputes this conclusion on a number of bases. He points out that trademarks and domain names are very different things. A domain name is simply an alphanumeric string, in lower case letters, which serves as an address in the Domain Name System. A trademark, on the other hand, is a sign which identifies trade origin. The Respondent points out the Complainant’s trademark features capital letters, colours and the device element already mentioned. The Respondent says further that the Top-Level Domain (“TLD”) extension, “.tv”, further distinguishes the disputed domain name from the Complainant’s trademark. Moreover, he has not had, and never intends to have, anything about motorcycles on his website. The Respondent notes that there are some 800 domain name extensions to which the Complainant’s objection could apply if it applies to the disputed domain name and points out a number of other domain names which apparently exist without objection from the Complainant.
The fact that there are, or may be, other domain names which could be considered to resemble the Complainant’s trademark is not a relevant consideration at this stage of the inquiry. The question is whether the disputed domain name is identical or confusingly similar to the Complainant’s trademark, not some other, different domain name.
It is not in dispute that a trademark and a domain name are different things and may serve different functions. That said, it is also indisputable that domain names can be, and frequently are, used as trademarks. In any event, the question under the Policy is not whether the disputed domain name is a trademark. What the Policy requires under this limb is a comparison of the alphanumeric string comprising the disputed domain name to the Complainant’s proven trademark.
On the issue of the comparison the Respondent’s contentions misunderstand the nature of the inquiry under the Policy. All that the comparison stage of the inquiry requires is simply a visual and aural comparison of the disputed domain name to the proven trademark. In undertaking that comparison, it is permissible in the present circumstances to disregard the TLD component as a functional aspect of the domain name system. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. See e.g. WIPO Overview 3.0 , section 1.7 and 1.11.
Accordingly, the Panel finds that the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) 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
(ii) [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
(iii) [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.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1.
It is not in dispute between the parties that:
(a) the Complainant has not authorised the Respondent to register or use the disputed domain name or the Complainant’s trademark;
(b) the Respondent is not affiliated in any way with the Complainant;
(c) the disputed domain name is not derived from the Respondent’s name or any name by which he is commonly known; and
(d) the Respondent does not own any trademark rights corresponding to the disputed domain name or from which the disputed domain name could be derived.
These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name. The basis on which the Respondent has adopted the disputed domain name, therefore, calls for explanation or justification.
The Respondent denies any knowledge of the Complainant or its trademark when he registered the disputed domain name. He says he registered the disputed domain name to create a self-help website. However, he has not yet had sufficient funds to have the website designed and uploaded.
According to the Respondent, he conceived the disputed domain name in 2002 while in hospital suspected of having had a stroke and with double vision. As part of the treatment regimen, he was encouraged to exercise his feet. To motivate himself, he was chanting “move, move, move”. At one point, his brother was holding up flash cards for him to read and one of the words displayed was the Italian word for move, “moto”. He adopted “moto, moto, moto” as his chant as it was more upbeat in tempo.
While still in hospital, he told a Scottish porter that he was keeping up the exercises with his feet to avoid further tests which could involve lumbar punctures to draw off spinal fluid. The porter told the Respondent that was a “grand plan”.
The Respondent continued his exercise regimen, chanting “moto, moto, moto,” and inspired another patient to copy his movements. When the Respondent learned that his routine had inspired a previously immobile patient, he thought up the plan to develop a self-help website.
After he left hospital and was being cared for by his mother, her suggestion that he truncate “grandepiano” (which the Respondent says is the Italian expression for “grand plan”) to “gp” led to the portmanteau term comprising the disputed domain name. The Respondent’s rehabilitation involved him setting exercise goals for each day, which he called “today’s vision”. Then, he was told of a business which had a URL in the “.tv” TLD. This led to “a light bulb” moment in which he realized that “.tv” could stand for “today’s vision”.
As already noted, the Respondent has not set up the self-help website he envisioned yet. The Respondent says he has not had sufficient funds to set it up, which he estimates at GBP 3,000 – 5,000. Annex 8 to the Response does include what the Respondent says is his intended “logo”. There is no evidence of the creation date of this object. Otherwise, the Respondent has not provided any contemporaneous documents or other evidence to corroborate his explanation.
The fact that the Respondent has not set up his proposed website or been able to provide any objectively dated evidence to support his claim after 17 years is a major obstacle to his rebuttal of the Complainant’s prima facie case. See WIPO Overview 3.0, section 2.2.
Furthermore, the fact that his address, “ETS.Racing”, just happens to coincide with the name of a well-known supplier of racing fuels and lubricants throws into serious doubt the credibility of the Respondent’s claim never to have head of the Complainant or have any interest in motorcycle racing. At the very least, it calls for explanation. An explanation which has not been forthcoming. Therefore, the Panel is unable to accept the Respondent’s claim.
The Respondent also relies on the Complainant’s delay in bringing this administrative proceeding. Mere delay is not usually sufficient to provide a right or legitimate expectation under the Policy. See e.g. WIPO Overview 3.0, section 4.17. In the present case, there is arguably more than mere delay as the Complainant sent a cease and desist letter to the Respondent in 2007. That letter stated that, in the event of non-compliance with its demands:
“we will have no option but to strongly defend our rights by any and all means.”
The Respondent says that, as a result of the Complainant’s inaction, he has suffered prejudice by incurring renewal fees.
The leading decisions referred to in WIPO Overview 3.0, section 4.17 where a complaint was denied appear to have involved “mere” delay, but even so the denial of the complaint was based on other grounds. Arguably, therefore, a situation where a complainant’s actions have induced a respondent to act to the respondent’s prejudice might be a situation where an exception should be made to the approach summarised in WIPO Overview 3.0, section 4.17.
The Panel does not think this is an appropriate case to apply such an exception. The amount of renewal fees incurred by the Respondent has not been documented. While the Respondent does indicate his financial circumstances appear to be challenging, renewal fees themselves are unlikely to be sufficiently substantial to warrant the application of the suggested principle in this case. For example, registration fees for a name in “.tv” from just one Registrar at the moment are about USD35.00 for one year. There is no evidence here that the Respondent has incurred significant expenditure in establishing a website or building up a business. On the contrary, the only use apparently made of the disputed domain name (as discussed below) is to offer it for sale for a price in the order of several thousand Euros or dollars. Moreover, on the basis of the rejection of the Respondent’s denial of knowledge of the Complainant and its trademark, it follows that the Respondent adopted the disputed domain name well aware of the Complainant’s rights.
In these circumstances, the Respondent’s rebuttal of the Complainant’s prima facie case must fail. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
For the reasons discussed in section 5B above, the Panel has not been able to accept the Respondent’s denial of any knowledge of the Complainant or its trademark or the Respondent’s explanation of how he conceived the disputed domain name.
As the term “motogp” in particular is an invented or coined term and not descriptive, therefore, it appears that the Respondent has adopted the disputed domain name because of its trademark significance.
The Complainant has provided evidence that the disputed domain name was being offered for sale on the Afternic website as recently as April this year, apparently for USD25,000. The Respondent disputes this. However, the Respondent does admit to placing the disputed domain name (at some unspecified date or dates) up for sale for a price of 3,000 Euros. According to the Respondent, this was only so that he could attract contact from someone who had previously offered to pay him 4,000 Euros. The Respondent says this offer was not for the purposes of selling the disputed domain name to that person, but to explore with them whether or not they would be willing to act as a sponsor.
In circumstances where the Panel has been unable to accept the Respondent’s explanation for his adoption and intended use of the disputed domain name, it is very difficult to accept the Respondent’s characterisation of what by his own admission, and objectively, appears to have been an offer of sale of the disputed domain name. Further, apart from his bald denial, the Respondent’s explanation does not address the fact that at least as at April this year the domain name was being advertised for sale on the Afternic website. Offering the disputed domain name for sale at what obviously appears to be far in excess of the likely out of pocket costs for registering it is the first example of registering and using a domain name in bad faith given in paragraph 4(b)(i) of the Policy.
Even if the Panel were to accept that the Respondent has not offered the disputed domain name for sale, the circumstances would seem appropriate to find that the disputed domain name has been registered and used in bad faith in accordance with the conclusion reached in Telstra Corporation Limited v. Nuclear Marshmallows¸ WIPO Case No. D2000-0003 given the renown of the Complainant’s trademark, the long period of admitted non-use of the disputed domain name and the rejection of the Respondent’s purported justification for registration of the disputed domain name.
In circumstances where the Respondent purported justification for registering the disputed domain name has not been accepted, therefore, the Panel finds the Respondent has registered and used it in bad faith.
Accordingly, the Complainant has established all three requirements under the Policy.
D. Reverse Domain Name Hijacking
As the Complainant has succeeded in its Complaint, there is no basis for a finding of reverse domain name hijacking as requested by the Respondent.
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 <motogp.tv> be transferred to the Complainant.
Warwick A. Rothnie
Date: May 17, 2019