Case No. D2012-2449 1. The Parties
The Complainant is Sport 2000 Brand AG of Zug, Switzerland, represented by Dr. Michele Provera, Italy and Dr. Jochen M. Schaefer of Germany.
The Respondent is sport2000 of Wilmington, Delaware, United States of America (“U.S.”), represented pro se. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2012. On December 13, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 13, 2012, the Registrar transmitted by email to the Center its verification response.
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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 17, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 6, 2013. The Response was filed with the Center on January 4, 2013.
The Center appointed Michael J. Spence as the sole panelist in this matter on January 15, 2013. 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 January 8, 2013, the Complainant sent an email to the Center seeking its consent to submit supplemental filing. The Center replied on January 8, 2013 that it would be within the discretion of the Panel to determine whether to accept supplemental material. The Respondent filed supplemental material with the Center on January 16, 2103. The Center also replied on January 16, 2013 that it would be within the discretion of the Panel to determine whether to accept supplemental material received after the date for the filing of a Response and the appointment of a Panel. In this case, the Panel has decided to exercise its discretion not to admit the supplemental material. 4. Factual Background
The Complainant is the registered proprietor of many trade marks involving the words “Sport 2000” and belongs to the Sport 2000 Group, which has, since 1988, used them in the sport retail industry. It now has more than 3,500 retail outlets in 25 countries. The Respondent has been the proprietor of the disputed domain name since 1998 and has used it to operate a “parking” website that includes sponsored links to many suppliers, including competitors of the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical, or confusingly similar, to its trade mark; that the Respondent has no rights or legitimate interests in the disputed domain name, but is using it for a “parking” website with the intention of deceiving the public through its similarity with the Complainant’s trade mark; and that evidence of a pattern of registration of domain names similar to well-known brands both evinces a lack of rights or legitimate interests in the disputed domain name and lends weight to the conclusion that the disputed domain name was registered, and is being used, in bad faith, as does offers to sell the disputed domain name to the Complainant for a price far exceeding the cost of transfer. B. Respondent
The Respondent contends that at the time of the registration of the disputed domain name, the Complainant had no word marks involving the two common English words “sport” and “2000”; that at the time of registration the Respondent could not have been aware of the Complainant or its trade marks; that it had been using the disputed domain name for fourteen years with no objection from the Complainant, though the Complainant must have known of the Respondent’s registration from at least 1999 when the Complainant registered the domain name ; that use for a “parking” site to monetize wholly generic-words domain names in connection with PPC advertising related to the dictionary meaning of the those words” could give to rights or legitimate interests; that the Complainant had been unable to evince bad faith. The Respondent also points to an offer to purchase the disputed domain name by the Complainant and suggests that this case was only brought because negotiations for the purchase of the domain name could not be concluded because of a disagreement over price. Finally, the Respondent asserts that the Complainant is precluded from bringing its claim by delay. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name contains the word elements of the Complainant’s trade mark in their entirety. The difficulty for the Complainant in this case is that each of the trade mak registrations of which it provides evidence are for those word elements in a particular script or presentation and there is some question as to whether the Complainant has acquired trade mark rights in the combination of generic words “Sport 2000” itself. The only evidence that the Complainant offers of acquired rights in relation to that combination of generic words are: its use as part of a range of domain name registrations; and the size and extent of its business operations in which, presumably, the word combination is often used, at least verbally, without the design elements of the trade mark. Given the likely extent of that use of the word combination itself, the Panel finds, on balance, that the disputed domain name is identical or confusingly similar to the disputed domain name.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy in relation to the disputed domain name. B. Rights or Legitimate Interests
It is for the Complainant to establish, at least prima facie that the Respondent has no rights or legitimate interests in the disputed domain names (Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110). This task is rendered more crucial in cases, such as the present one, in which the Complainant’s trade mark consists of a combination of generic words applied to the promotion of goods or services with which they are almost automatically associated.
The registration and trade in domain names containing generic words can constitute a legitimate use of them. WIPO panels have recognized that where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely relate to the generic meaning of the domain names at issue, this may be permissible and consistent with recognized sources of rights or legitimate interests under the Policy, provided there is no capitalization on trade mark value. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.6.
In the present case, the Respondent contends that its use of the disputed domain name constitutes a legitimate business practice under the Policy because the disputed domain name is comprised of wholly generic words, namely “Sport” and “2000”, and the website put advertising links related to its dictionary meaning. The Panel finds that the Complainant has provided insufficient evidence to rebut the Respondent’s not implausible assertion that the Respondent could not have known the Complainant or its trade mark, and further finds that the Respondent’s use of the disputed domain name in a manner plausibly connected to its descriptive meaning could give rise to a right or legitimate interest in the disputed domain name on the available record in this case. This is particularly true because of the length of time for which the disputed domain name has been registered. For these reasons the Panel finds that it has failed to discharge its prima facie burden of establishing that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant also seeks to identify a pattern of domain name registration by the Respondent involving domain names that are similar to well-known trade marks as a way of establishing the lack of rights of legitimate interests. The difficulty with this argument is that such a pattern, while it may lend weight to a finding of bad faith, is not strictly relevant to the issue of whether the Respondent has rights in this particular disputed domain name.
The Panel therefore finds that the Complainant has failed to establish the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Given its finding on the second element of paragraph 4(a) of the Policy, the Panel does not need to make a finding on the third. 7. Decision
For the foregoing reasons, the Complaint is denied.
Michael J. Spence
Sole Panelist
Date: January 28, 2013
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