The Complainant is National Hockey League of New York, New York, United States of America (“United States” or “US”), represented by Greenberg Traurig, LLP, United States.
The Respondent is Domain Hostmaster, Customer ID: 70391669890827, Whois Privacy Services Pty Ltd of Fortitude Valley, Queensland, Australia / Lisa Katz, Domain Protection LLC of Dallas, Texas, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with F (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2016. On November 23, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 23, 2016, 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 November 28, 2016 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 December 3, 2016.
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 December 5, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 25, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2016.
The Center appointed Evan D. Brown as the sole panelist in this matter on January 5, 2017. 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
The Complainant is the world’s premier professional hockey league and has, for many years, owned numerous trademark registrations for the mark NHL and other variations, including US Registration Number. 883,569 which registered on December 30, 1969. The Complainant provides a variety of services and goods pertaining to hockey, e.g., hosting sporting events and marketing and selling hockey clothing. In addition to the registrations in the United States, where the Respondent is purportedly located, the Complainant also owns registered trademarks for the NHL (and Design) mark in Australia, where the Respondent’s privacy service provider is purportedly located (for example, Registration Number 581444, which registered on June 26, 1992.
The Respondent registered the disputed domain name on April 27, 2005 and set up a website featuring advertising links to purveyors of products competitive to the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s registered trademarks; that the 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. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:
(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. A. Identical or Confusingly Similar
The Complainant undoubtedly has rights in the mark NHL. It is among the most recognizable sports league brands in the world, having been in widespread use for many years. The disputed domain name is confusingly similar to this mark. It contains the mark in its entirety, accompanied only by the generic term “auctions” and the generic Top-Level Domain “.com”, both of which do nothing to meaningfully distinguish the disputed domain name from the Complainant’s mark for purposes of the UDRP. Accordingly, the Panel finds in favor of the Complainant on this first element of the UDRP. B. Rights or Legitimate Interests
The Complainant will be successful under this element of the UDRP if it makes a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name, and if that prima facie showing remains unrebutted by the Respondent. In this case, there are several indicators concerning the Respondent’s lack of rights or legitimate interests. The Respondent is not commonly known by the disputed domain name, nor is there any evidence in the record showing the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services before any notice of the dispute. Joining with numerous previous panels, this Panel finds that in circumstances such as the ones of this case, the use of the disputed domain name to establish a web page with advertising links to websites for competitive products is not a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use of the disputed domain name. These assertions establish the Complainant’s prima facie case. The Respondent has not answered the Complainant’s assertions, and, seeing no basis in the record to overcome the Complainant’s prima facie showing, the Panel finds that the Complainant has satisfied this second UDRP element. C. Registered and Used in Bad Faith
Because the Complainant’s marks are well-known, it is implausible to believe that the Respondent was not aware of those marks when it registered the disputed domain name. In the circumstances of this case, such a showing is sufficient to establish bad faith registration of the disputed domain name. Bad faith use is clear from the Respondent’s activities of using the disputed domain name to link website visitors to the sale of competitive products. For these reasons, the Panel finds that the Complainant has successfully met this third UDRP element. 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.
Evan D. Brown
Sole Panelist
Date: January 23, 2017
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