The Complainant is Lonsdale Sports Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) represented by Reynolds Porter Chamberlain LLP, United Kingdom.
The Respondent is Holger Doelle of Berlin Germany. 2. The Domain Name and Registrar
The disputed domain name is registered with united-domains AG (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2016. On June 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 10, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details and that the language of the Registration Agreement is German. The Complainant requested English be the language of the proceeding. No according submission was submitted by the Respondent.
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 and 4, the Center formally notified the Respondent of the Complaint in both English and German, and the proceedings commenced on June 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 11, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 12, 2016.
The Center appointed Alfred Meijboom as the sole panelist in this matter on July 18, 2016. 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.
The Respondent submitted an informal communication on July 19, 2016 in German. 4. Factual Background
The Complainant is part of the “Sports Direct” group of companies, which was established in 1982 and has 662 stores worldwide. The Complainant is owner of the LONSDALE trademarks, including:
- German trademark nr. 645802 LONSDALE of September 15, 1987 for goods in class 25;
- German trademark nr. 963260 LONSDALE of September 30, 1977 for goods in class 25;
- European Union trademark nr. 4020541 LONSDALE of January 31, 2006 for goods and services in classes 3, 5, 9, 14, 16, 18, 21, 24, 25, 26, 28, 30, 32, 35, 41 and 45;
(individually and jointly: the “LONSDALE Trademark”). The LONDSALE Trademark acquired a worldwide reputation for sports clothing and equipment.
The disputed domain name was registered on December 16, 2015. The disputed domain name directs to a website stating that the webshop is currently unavailable. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain contains the LONDSALE Trademark in its entirety, so that it is identical and/or confusingly similar to the LONDSALE Trademark. For the purpose of the comparison the generic Top-Level Domain (“gTLD”) “.world” should be disregarded.
The Complainant further claims that the Respondent has no rights or legitimate interest in respect of the disputed domain name as the Respondent is not commonly known by the disputed domain name, and has not made use or demonstrable use of the disputed domain name in connection to bona fide offerings of goods or services. On March 8, 2106, when the Complainant wrote to the Respondent to request transfer of the disputed domain name, the disputed domain name directed to a parking website. According to Complainant the Respondent’s intention must be to take advantage of the association with the Complainant’s business.
Furthermore, the Complainant asserts that the disputed domain name was registered and used in bad faith as the Respondent must have been aware of the reputation and goodwill of the Complainant and the LONSDALE Trademark as he has sold “Lonsdale” marked products as established by the panel in Converse, Inc. v. Holger Doelle,WIPO Case No. DME2014-0007. The Complainant claims that the Respondent also registered the domain name , which was considered to having been registered and used in bad faith in Converse, Inc. v. Holger Doelle, supra, which establishes a pattern of conduct of bad faith. According to the Complainant the Respondent is clearly in the business of cybersquatting. B. Respondent
The Respondent did not reply to the Complainant’s contentions. However, the Respondent sent an email in German to the Center confirming that he asked his registrar to cancel the registration of the disputed domain name, which was refused as the disputed domain name was blocked when these administrative proceedings commenced on July 19, 2016. 6. Discussion and Findings 6.1. Language of the proceedings
The first matter to be addressed is the language of the proceedings.
Article 11(a) of the Rules provides that “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The language of the Registration Agreement is German.
After the Center informed the Complainant that the Registration Agreement is in German, the Complainant requested for English to be the language of the proceedings for four reasons, being that the Complainant works in English and has no working knowledge of German, the Complainant wrote a letter demanding transfer of the disputed domain name in English, the Respondent must have a good understanding of English given the many English domain names he registered, and the LONSDALE Trademark is in English. In order for the Panel to grant the request to change the language of the proceedings into English the Complainant should have shown that the Respondent sufficiently understands English to appreciate the Complaint and, if the Respondent so wishes, file a response. The mere fact that the Complainant does not speak the language of the Registration Agreement and sent a letter in English to the Respondent is not sufficient. In absence of the Complainant providing evidence of the alleged domain names in English which the Respondent registered, the Panel also disregards this element put forward by the Complainant. And the Panel does not find the argument that the LONSDALE Trademark is English compelling either as the Complainant argued that the LONSDALE Trademark has a reputation and is even famous, so that it is likely that someone who does not speak English is capable of recognizing and using such famous trademark. In contrast, the Respondent sent his email mentioned in paragraph 5.B above in German and the disputed domain name reverts to a website with only a text in German reading “Sehr geehrter Kunde, Dieser Shop ist im Moment leider nicht erreichbar. Bitte probieren Sie es in Kürze erneut. Vielen Dank für Ihr Verständnis. ” (in English “Dear customer, unfortunately this shop can presently not be reached. Please try again soon. Thank you for your understanding. ”).
However, although several facts seem to require that the language of the proceedings should be German, the Panel shall nevertheless use his discretionary authority to decide that the language of the proceedings shall be English for the following reasons:
1. the panel in Converse, Inc. v. Holger Doelle, supra, with the same Respondent as in the case at hand, established “that the Respondent is indeed capable and willing to communicate in the English language”;
2. the Respondent confirmed to the Center that he wanted to voluntarily cancel the registration of the disputed domain name, which is an indication that he must have appreciated the meaning of the Complaint and did, for that reason, intentionally not file a Response; and
3. given these two circumstances the Complainant would be unfairly disadvantaged by being forced to translate the Complaint in German. 6.2. Substantive issues
Apart from the Respondent’s email, stating that he wanted to terminate the registration of the disputed domain name1 , the Respondent did not reply to the Complainant’s contentions. However, as set out in paragraph 4.6 of the WIPO Overview 2.0, the consensus view of UDRP panelists is that the respondent’s default does not automatically result in a decision in favor of the complainant. The Complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. Although the Panel may draw appropriate inferences from the Respondent’s default, paragraph 4 of the Policy requires the Complainant to support its assertions with actual evidence in order to succeed in these proceedings. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, the Panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The Panel finds that in this case there are no such exceptional circumstances.
Under the Policy, the Complainant must prove that:
A. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
B. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
C. the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
It is well established that the top level domain (the “TLD”) may typically be disregarded in the assessment under paragraph 4(a)(i) of the Policy (e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003) and, in the present case at least, this is not different for the gTLD “.world”.
While disregarding the TLD, the Panel finds that the disputed domain name is identical to the LONSDALE Trademark. Consequently, the first element of paragraph 4(a) of the Policy is met. B. Rights or Legitimate Interests
The Complainant must make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent may rebut (see e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Complainant alleged that the Respondent is not commonly known by the disputed domain name, which the Respondent has not challenged. Further, the Respondent’s message which is presently shown on the website under the disputed domain name (see paragraph 6.1 under Language of the Proceedings above) refers to this website as “this shop,” which the Panel considers an unambiguous indication of the Respondent’s intention to use the disputed domain name for offering goods or services. As the Respondent failed to show that his intended offering of goods or services is bona fide, and he reportedly offered sportswear for sale before (cf. Converse, Inc. v. Holger Doelle, supra.), the Panel considers his intention to offer goods or services not being bona fide. Further, in absence of a response and in view of the foregoing, the Panel could not establish legitimate noncommercial or fair use of the disputed domain name.
The Panel is therefore satisfied that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name and the second element of paragraph 4(a) of the Policy is also met. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, there is evidence of registration and use of the disputed domain name in bad faith where the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademarks the Complainant is relying on as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or other online location or of a product or service offered on the Respondent’s website or location.
In the Panel’s view, at the time the disputed domain name was registered the Respondent was aware of the LONSDALE Trademark as he previously sold LONSDALE marked products (cf. Converse, Inc. v. Holger Doelle, supra) so that the Panel is satisfied that the disputed domain name was registered in bad faith.
With respect to the Respondent’s alleged use of the disputed domain name in bad faith the Complainant has not submitted sufficient evidence showing that the Respondent has been involved in a pattern of conduct of preventing trademark holders from reflecting their respective trademarks in a corresponding domain name. The consensus view of UDRP panelists is that such pattern normally requires more than one relevant example (see paragraph 3.3, WIPO Overview 2.0), whereas the Complainant only showed one such case involving the Respondent. However, the Panel does find that the Respondent used the disputed domain name in bad faith because the Respondent has generated traffic to the website linked to the disputed domain name by creating a likelihood of confusion with the LONSEDALE Trademark. .
Consequently, the third and last element of paragraph 4(a) of the Policy is also met. 7. Decision
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 be transferred to the Complainant.
Alfred Meijboom
Sole Panelist
Date: July 26, 2016
1 As the cancellation of the disputed domain name is not the Respondent’s unilateral and unambiguous consent on the record to the remedy sought by the Complainant, which is transfer of the disputed domain name, the Panel shall decide this case on its merits, in line with paragraph 4.13 of WIPO Overview of WIPO Overview 2.0 (“WIPO Overvierw 2.0”).
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