The Complainant is ICC Business Corporation FZ LLC of Dubai, United Arab Emirates, represented by Bird & Bird LLP, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
The Respondent is Vietnam Domain Privacy Services of Ho Chi Minh City, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name is registered with April Sea Information Technology Corporation (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 1, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 5, 2018, 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.
On October 7, 2018, the Center sent a communication to the Parties, in English and Vietnamese, regarding the language of the proceeding. On October 10, 2018, the Complainant requested an extension of the time to reply. The following day, the Center extended the deadline for the Complainant until October 21, 2018 and for the Respondent until October 23, 2018. Although the Complainant requested that English be the language of the proceeding, it submitted a Vietnamese translation of the Complaint on October 18, 2018. The Respondent did not comment on the language of the proceeding.
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, and the proceeding commenced on October 25, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 14, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 15, 2018.
The Center appointed Matthew Kennedy as the sole panelist in this matter on November 21, 2018. 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 a wholly owned subsidiary of the International Cricket Council Limited (the “ICC”), the global governing body for cricket. It is responsible for the organization, governance and staging of all major international cricket tournaments, including the ICC World T20, the international championship of Twenty20 cricket. Twenty20 or “T20” is a short form of cricket in which each team bats for a single innings of no more than 20 overs. The Complainant has registered multiple trademarks in multiple jurisdictions, including United Kingdom trademark registration number UK00002513347 for WORLD T20, registered on July 17, 2009 (based on an application filed on April 8, 2009), specifying goods and services in classes 9, 16, 25, 28 and 41. That trademark registration remains in effect. The Complainant has also registered multiple domain names, including , which it registered on June 7, 2007.
The first edition of the ICC World T20 was officially launched on July 26, 2007 and took place from September 11 to 24, 2007. The official logo of the 2007 tournament prominently included a stylized “T20” and the words “ICC World Twenty 20”. Evidence submitted by the Complainant shows that, from the launch date, a television channel website referred to the tournament variously as the “ICC World Twenty20”, “ICC World T20”, “World T20” and the “T20”.
The Respondent is a privacy shield. The underlying registrant was not identified by the Registrar.
The disputed domain name was registered on September 12, 2007. It redirects to a landing page that displays pay-per-click (“PPC”) links to other websites. The first of these PPC links is labelled “T20 CRICKET WORLD CUP”. 5. Parties’ Contentions A. Complainant
The Complainant is the registered proprietor of a wide selection of trademarks, including WORLD T20, WORLD TWENTY20, T20 WORLD CUP, and the ICC WORLD TWENTY20 logo. The Complainant also has significant unregistered rights in T20, TWENTY20, WORLD T20 and WORLD TWENTY20. The similarities between the disputed domain name and the Complainant’s trademarks have the intention of encouraging Internet users to believe that the Respondent’s website is associated with the Complainant and/or the ICC World T20 tournament. This is particularly emphasized by the fact that the Complainant’s WORLD T20 mark has been used in its entirety by the Respondent in the disputed domain name.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant is not aware of any evidence of 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. To the best of the Complainant’s knowledge, the Respondent is not known by the disputed domain name, nor does it hold any trademark or other intellectual property rights identical or similar to any of the Complainant’s marks. The disputed domain name does not resolve to a proper, functioning website.
The disputed domain name was registered and is being used in bad faith. It is not plausible that the disputed domain name was registered the day after the first day of the very first ICC World T20 tournament without knowledge of the Complainant’s interest in WORLD T20. The website to which the disputed domain name resolves does not contain any content other than domain parking advertising. It is very likely that the Respondent is cybersquatting on the disputed domain name with the intent of waiting to profit by selling it to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
Paragraph 11(a) of the Rules provides that “unless 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 Registrar confirmed that the Registration Agreement for the disputed domain name is in Vietnamese.
The Complainant requests that English be the language of the proceeding. Its main arguments are that the website to which the disputed domain name resolves is in English as well as Vietnamese, which demonstrates the Respondent’s familiarity with the English language.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293.
The Panel observes that the Complaint was filed in both English and Vietnamese. The website to which the disputed domain name resolves is in English, which gives the Panel reason to believe that the Respondent understands that language. In any case, despite having received the Complaint in English and Vietnamese, the Respondent has not expressed any interest in responding to it or otherwise participating in this proceeding. Therefore, the Panel considers that rendering the decision in English will not cause unfairness to either party.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. 6.2 Substantive Issues
Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements:
(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 Panel finds that the Complainant has rights in the WORLD T20 mark by virtue of its trademark registrations. Given that the Policy makes no specific reference to the date on which the holder of the trademark acquired its rights, it is sufficient that the Complainant’s rights existed at the time the Complaint was filed, as in the present case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.1.3.
The disputed domain name wholly incorporates the WORLD T20 trademark, omitting only the space between the words. The only additional element is the generic Top-Level Domain (“gTLD”) suffix “.com”. A gTLD suffix may generally be disregarded in the assessment of confusing similarity between a domain name and a trademark for the purposes of the Policy.
Accordingly, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
“(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.”
The disputed domain name is parked at a landing page displaying PPC links. According to the evidence supplied by the Complainant, the first link relating specifically to the Complainant is generated based on the trademark value of the Complainant’s mark. This use does not create a right or legitimate interest in the disputed domain name for the purposes of the Policy. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267. Therefore, the Panel does not find that the Respondent’s use falls within the first or third circumstances of paragraph 4(c) of the Policy.
There is no evidence indicating that the Respondent has been commonly known by the disputed domain name. Therefore, the Panel does not find that the Respondent’s use falls within the second circumstance of paragraph 4(c) of the Policy.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent did not rebut that case because it did not respond to the Complaint.
Accordingly, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith. The fourth of these is as follows:
“(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site 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] web site or location or of a product or service on [the respondent’s] web site or location.”
With respect to registration, the Panel finds that the disputed domain name was registered before the registration of the Complainant’s trademark rights. The disputed domain name was registered on September 12, 2007. The Complainant does not allege that it obtained registration of, or even applied for, the WORLD T20 trademark prior to that date. Although the Complainant asserts unregistered trademark rights in the WORLD T20 trademark based on use of that term from the launch date of the first tournament in June 2007, there is too little evidence on the record to establish the existence of trademark rights prior to registration of the disputed domain name. The Complainant’s official logo for the tournament that year did not include the exact phrase WORLD T20, although it did include each of those two elements. The evidence shows only that one television channel website refers to the tournament by various names, “World T20” being one of them. The evidence of broad media coverage of the Twenty20 tournament relates to the latest edition in 2016, long after the disputed domain name was registered in 2007.
The Panel recalls that, where a respondent registers a domain name before the complainant’s trademark rights accrue, as in the present case, panels will not normally find bad faith on the part of the respondent. See WIPO Overview 3.0, section 3.8.1. However, there is an exception to that general proposition in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the disputed domain name was to capitalize unfairly on the complainant’s nascent trademark rights. See WIPO Overview 3.0, section 3.8.2 and, for example, Madrid 2012, S.A. v. Scott Martin-MadridMan Websites,WIPO Case No. D2003-0598; and Stoneygate 48 Limited and Wayne Mark Rooney v. Huw Marshall,WIPO Case No. D2006-0916.
The Panel considers that the circumstances of this case are exceptional. The Complainant is responsible for the organization, governance and staging of cricket’s major international tournaments. The Respondent registered the disputed domain name the day after the Complainant’s first “World Twenty20” tournament began, in connection with which the Complainant prominently abbreviated “Twenty20” to “T20”. The disputed domain name wholly incorporates the Complainant’s WORLD T20 trademark, minus only the space between the words, with no additional element besides a gTLD suffix, which is a technical requirement of registration. The Panel finds it implausible that this was mere coincidence and that the Respondent was unaware of the Complainant’s potential rights in WORLD T20. Rather, it appears that the disputed domain name was registered in anticipation of the Complainant’s trademark rights and that its aim was to take unfair advantage of the reputation that would attach to that trademark when the Complainant used it. See, for example, BML Group Limited v. Rikard Beach, Proxy My Whois AB,WIPO Case No. D2015-1897. The Respondent provides no alternative explanation for its choice of the disputed domain name. Therefore, the Panel considers it more likely than not that the Respondent registered the disputed domain name in bad faith.
With respect to use, the Respondent has parked the disputed domain name, which is confusingly similar to the Complainant’s WORLD T20 trademark, at a landing page that displays PPC links to other websites, some of which relate to the Complainant’s goods or services. The Respondent has made no other use of the disputed domain name since its registration 11 years ago. Cricket fans and other consumers searching for the Complainant or its goods or services are likely to be attracted to this landing page. This use is intentional and either for the Respondent’s own commercial gain, if it is paid to direct traffic to other websites, or for the commercial gain of the operators of those websites, or both. In each scenario, these facts satisfy the requirements of paragraph 4(b)(iv) of the Policy. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright (supra). Therefore, the Panel finds that the Respondent is using the disputed domain name in bad faith.
Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy. 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.
Matthew Kennedy
Sole Panelist
Date: November 26, 2018
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