WIPO Domain Name Decision D2009-0375 for toplivescore.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Peter Jerie v. Wojciech Sielicki a/k/a Chat Polski Case No. D2009-0375 1. The Parties

The Complainant is Peter Jerie of Ceska Lipa, Czech Republic, represented by Seán F. Heneghan, United States of America.

The Respondent is Wojciech Sielicki a/k/a Chat Polski of Wels, Austria. 2. The Domain Name and Registrar

The disputed domain name is registered with W Internet Services GmbH d/b/a . 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2009. On March 23, 2009, the Center transmitted by email to W Internet Services GmbH d/b/a a request for registrar verification in connection with the disputed domain name. On March 26, 2009, W Internet Services GmbH d/b/a transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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”).

While the registration agreement, under which the disputed domain name was registered, is in German, the Complaint was filed in English. On March 31, 2009, the Center sent a communication to the parties, asking the Respondent for any objections to the Complainant's request to conduct the proceedings in English. The Respondent did not reply to the Center's communication. On April 14, 2009, the Center notified the parties that upon review of the submissions and circumstances of the case it had decided to accept the Complaint as filed in English and would accept a response in either German or English. The Center provided all notifications (including the notification regarding the language of the proceeding) to the Respondent in German as well as English.

In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 14, 2009. In accordance with paragraph 5(a) of the Rules, the due date for Response was May 4, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 14, 2009.

The Center appointed Brigitte Joppich as the sole panelist in this matter on May 20, 2009. 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 paragraph 7 of the Rules. 4. Factual Background

The Complainant is doing business in the field of providing real-time scores for sporting events, including soccer, ice hockey, tennis and basketball to Internet users. The Complainant has used the trade mark LIVESCORE in connection with such services since 1998. Today, the Complainant's website providing such online services is ranked as one of the top sites on the Internet regarding sports in general and certain types of sporting activities, such as soccer, in particular. The services offered under the LIVESCORE mark inter alia include scores from over 200 soccer leagues that span 38 countries across Europe, South America, Asia and North America, as well as international soccer competitions. The Complainant's website registered in excess of 746 million page views in the month of November 2008 and 23 million so-called unique visitors for the same month.

The Complainant owns trade mark registrations for LIVESCORE, inter alia:

- United States trade mark registration No. 2,514,933 in class 41, filed on November 7, 2000 and registered on December 4, 2001 (first used in commerce on July 31, 1998);

- Czech Republic trade mark registration No. 272460 in classes 41 and 42, filed on October 26, 2005 and registered on April 21, 2005; and

- European Union trade mark (CTM) registration No. 004101713 in classes 35 and 41, filed on October 28, 2004 and registered on December 20, 2006 (the “LIVESCORE Marks”).

The Complainant is providing his services online mainly at but has also registered and is using many other domain names in connection with his website, including , , , , , , , and .

The Respondent registered the disputed domain name on November 3, 2006 and is using the disputed domain name in connection with a real-time sports score service that is identical to and directly competing with the Complainant's services. Furthermore, the Respondent is the registered owner of the domain name .

The Complainant's legal counsel sent two cease and desist letters to the Respondent on November 24, 2006 and May 17, 2007 respectively. The Respondent never responded to either communication. 5. Parties' Contentions A. Complainant

With regard to the language of the proceeding, the Complainant contends that the Respondent clearly has the ability to understand and to communicate in English as he created a website in the English language only and that the Complainant is fluent in Czech and English but not in German and therefore is not in a position to conduct these proceedings in German without a great deal of additional expense and delay due to the need for translation not only of the Complaint, but also of all exhibits thereto.

Furthermore, the Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:

(1) The disputed domain name is nearly identical and clearly confusingly similar to Complainant's LIVESCORE trade mark as it fully incorporates the Complainant's trade mark in its entirety and deviates from the mark only through the addition of the descriptive/generic term “top” and the inclusion of the non-distinctive generic code top-level domain (“gTLD”) “.com”.

(2) The Complainant further contends that the Respondent is using the disputed domain name to direct Internet users to a website that competes with the Complainant's services and that such use of the Complainant's trade mark (i.e. to promote a competing service with a confusingly similar domain name) is not a bona fide offering of a good or service or a legitimate non-commercial or fair use of the domain name pursuant to the Policy. The Complainant further contends that the Respondent is not commonly known by the disputed domain name or a name corresponding to such name and that there is no affiliation, association or business relationship of any kind with the Respondent and that the Complainant has not licensed or authorized the Respondent to use his LIVESCORE Marks in any manner. The Complainant finally contends that the Respondent cannot claim to be commonly known by the disputed domain name.

(3) Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith: firstly, the Complainant states that in light of the popularity of the Complainant's services the Respondent was – actually or constructively–aware of the existence of the Complainant and his trade mark rights. The Complainant further contends that the Respondent's use of the disputed domain name for his own real-time sports score service is more evidence that not only did the Respondent know of the Complainant's rights in LIVESCORE, but purposefully took advantage of them. Secondly, with regard to bad faith use, the Complainant contends that the Respondent engaged in a pattern of registering domain names as he registered and is using at least two domain names that incorporate the Complainant's well-known LIVESCORE Mark, namely and . The Complainant also claims that the Respondent is using the disputed domain name to disrupt the Complainant's business. Finally, the Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith as he attempts to attract for commercial gain Internet users to a commercial online service that competes directly with the Complainant's real-time sports scores services. B. Respondent

The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings

The first point to be dealt with is the issue of the language of the present proceeding. The registration agreement, under which the disputed domain name was registered, is in German. However, the Complaint was filed in English and the Complainant requested the Panel to accept his submission in English contending that:

- the Respondent has the ability to understand and communicate in English as he created a website in the English language only –the decision to allow the proceeding to go forward in English would therefore not be prejudicial towards the Respondent; and

- the Complainant is fluent in Czech and English but not in German and his legal counsel based in the United States is only fluent in English – the Complainant is therefore not in a position to conduct these proceedings in German without a great deal of additional expense and delay due to the need for translation not only of the Complaint, but also of all supporting evidence.

It is consensus view that in certain situations, where the respondent can clearly understand the language of the complaint and the complainant would be disadvantaged by being forced to translate, the language of the proceedings can be the language of the complaint, even if it differs from the language of the registration agreement (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions; L'Oreal S.A. v. MUNHYUNJA,WIPO Case No. D2003-0585; Deutsche Messe AG v. Kim Hyungho,WIPO Case No. D2003-0679).

Having reviewed the submissions and circumstances of the present case, the Panel accepts English as language of this proceeding. The Respondent is in all likelihood able to understand English, and even if he was not able to file a response and conduct this proceeding in English, he had the possibility to object to the Complainant's request that the proceeding should go forward in English, as he received every communication from the Center in German as well. However, the Respondent chose to remain silent and must therefore now accept English as the language of the proceeding.

Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:

(i) the domain name is identical or confusingly similar to the Complainant's trade mark; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar

The disputed domain name fully incorporates the Complainant's LIVESCORE Marks in which the Complainant has rights. The Complainant's LIVESCORE Marks were already found to be well known in previous UDRP proceedings (see Peter Jerie v. Petr Burian a/k/a 1st Art Studio S.R.O., NAF Case No. FA 795430).

The mere addition of the generic word “top” following the Complainant's trade mark does not eliminate the similarity between the Complainant's marks and the disputed domain name. It is well established that a domain name that wholly incorporates a trade mark may be confusingly similar to such trade mark for purposes of the Policy despite the addition of common or generic words (see Dr. Grandel GmbH v. Drg Randel Inc.,WIPO Case No. D2005-0829; Microsoft Corporation v. J. Holiday Co.,WIPO Case No. D2000-1493; Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242).

Furthermore, it is well established that the specific top level domain name generally is not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant's trade mark and the disputed domain name (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374).

Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.

(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trade mark or service mark rights; or

(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trade mark or service mark at issue.

Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is consensus view among panelists that a complainant has to make only a prima facie case to fulfil the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of proving that the respondent has rights or legitimate interests in the disputed domain name will then shift to the respondent.

The Complainant made assertions and submitted supporting documents that the Respondent neither uses the disputed domain name or any name corresponding to such name in connection with a bona fide offering of goods or services nor is known by the disputed domain name, that the Respondent is not making any legitimate non-commercial or fair use of the disputed domain name, and that the Respondent therefore cannot have any legitimate interests in the domain name. The Complainant has therefore fulfilled its obligations under paragraph 4(a)(ii) of the Policy. The Respondent has not denied these assertions and therefore failed to prove rights or legitimate interests under paragraph 4(a)(ii) of the Policy.

Furthermore, given the fact that the Complainant sent a cease and desist letter to the Respondent on November 24, 2006 (only 21 days after the Respondent's registration of the disputed domain name), it is highly unlikely that the Respondent used the disputed domain name in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute.

Accordingly, and also noting the Panel's findings under the third element below, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests under paragraphs 4(a)(ii) and 4(c) of the Policy. C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:

(i) circumstances indicating that the respondent has registered or 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 that complainant, for valuable consideration in excess of the respondent's 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 on-line 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 its website or location.

The circumstances mentioned in paragraph 4(b) of the Policy are not exclusive, while the two elements of the third requirement of the Policy are cumulative conditions: the Complainant must show that the domain name was registered in bad faith and is being used in bad faith. This point is clear from the wording of the Policy and has been confirmed ever since Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (see also Telstra Corporation Limited v. Adult Web Development and Telstraexposed,WIPO Case No. D2002-0952; Telstra Corporation Ltd v. David Whittle,WIPO Case No. D2001-0434; Prada S.A. v. Mr. Chuan Sheng Wang,WIPO Case No. D2003-0758).

Evidence of bad faith registration and use is shown when registration of a domain name occurs in order to utilize another's well-known trade mark by attracting Internet users to a website for commercial gain (see America Online, Inc. v. Tencent Communications Corp., NAF Case No. FA 93668; Lilly ICOS LLC v. John Hopking / Neo net Ltd.,WIPO Case No. D2005-0694; Lilly ICOS LLC v. East Coast Webs, Sean Lowery,WIPO Case No. D2004-1101).

The Complainant provided evidence that his services are very popular and well-established on the Internet. Although the trade mark LIVESCORE does not enjoy a high degree of distinction with regard to the Complainant's services due to its generic meaning, the Panel is satisfied that the Complainant's trade mark is known by users searching for information and live scores of sporting events in many countries worldwide. As the Respondent set up a service identical to the Complainant's service it is more likely than not that the Respondent was well aware of the Complainant and its trade mark rights when registering the disputed domain name. The Panel is therefore satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant's marks and therefore in bad faith under paragraph 4(a)(iii) of the Policy.

As to bad faith use, by fully incorporating the LIVESCORE Marks into the disputed domain name, and by using the website in connection with services identical to the services provided by the Complainant, the Respondent was, in all likelihood, attracting Internet users to its website by creating a likelihood of confusion with the Complainant's marks. The Panel is therefore satisfied that the Respondent has also used the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy.

Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.

Brigitte Joppich
Sole Panelist

Dated: June 2, 2009

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