The Complainant is S Retail Limited of London, United Kingdom, represented by Reynolds Porter Chamberlain LLP, United Kingdom.
The Respondent is WhoisGuard, Inc. of Panama, Panama / Mani Singh, 454 Creative of Irvine, California, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2019. On March 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 5, 2019, 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 March 11, 2019 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 March 15, 2019.
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 March 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 7, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 8, 2019.
The Center appointed Andrea Mondini as the sole panelist in this matter on April 17, 2019. 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 leading sports retailer that operates under the SPORTSDIRECT brand. It is part of the Sports Direct group of companies which is listed on the London Stock Exchange. The Sports Direct group has over 700 stores in the United Kingdom and other countries.
The Complainant owns several trademark registrations for SPORTSDIRECT and SPORTSDIRECT.COM in numerous countries of the world, including United Kingdom trademark no. 2597152B for SPORTSDIRECT, filed on October 4, 2011 and registered on August 3, 2012, in classes 9, 18, 25, 28, 35 and 39, and United Kingdom trademark no. 2597976B for SPORTSDIRECT.COM, registered October 7, 2011.
The disputed domain name was registered on October 12, 2018 and is not in use. 5. Parties’ Contentions A. Complainant
The Complainant in essence contends the following:
The Complainant is the owner of numerous trademark registrations for SPORTSDIRECT and SPORTS DIRECT.COM. Furthermore, the Complainant holds over 500 domain names which contain the elements “sportdirect”, “sportsdirect” or “sports-direct”.
The disputed domain name incorporates the “sportsdirect” element which is identical to the Complainant’s trademarks. The combination with the generic Top-Level Domain (gTLD) “.press” does not dispel confusion.
The Respondent is not known by the disputed domain name and has not made any use or demonstrable preparation to use the disputed domain name in connection with the bona fide offering of goods or services. The Respondent therefore has no rights or legitimate interests in the disputed domain name.
The disputed domain name has been registered in bad faith because the Respondent must have been aware of the goodwill and reputation of the Complainant and of its trademarks SPORTSDIRECT and SPORTSDIRECT.COM. The Respondent had no reason to register the disputed domain other than to act as a passive cyber-squatter; therefore, the disputed domain name shall be considered to be used in bad faith.
The Complainant requests the transfer of the disputed domain name to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, a complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the complainant has rights;
(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 has shown that it holds several trademark registrations for SPORTSDIRECT and SPORTSDIRECT.COM in numerous countries of the world, including United Kingdom trademark no. 2597152B for SPORTSDIRECT filed on October 4, 2011 and registered on August 3, 2012 in classes 9, 18, 25, 28, 35 and 39.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, because it incorporates in its entirety the trademark SPORTSDIRECT. The practice of disregarding the gTLD in determining identity or confusing similarity is applied irrespective of the particular gTLD, including with regard to “new gTLDs” (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11). The combination of the trademark with the gTLD “.press”, therefore, does not dispel confusing similarity.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant contends, credibly, that there is no relationship whatsoever between the Parties. In the absence of any Response, the Panel concludes that the Respondent was not authorized or licensed to use the Complainant’s trademark in the disputed domain name and that there is no indication of any legitimate noncommercial or fair use of the disputed domain name.
Accordingly, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Considering that the Complainant operates more than 700 stores in the United Kingdom and internationally and given the strong online presence of the Complainant, the Panel concludes that the Complainant’s trademark is well known and that the Respondent must have been aware of the Complainant’s trademark when it registered the disputed domain name, so that the disputed domain name was registered in opportunistic bad faith (see S Retail Limited v. Emanuele Terracina,WIPO Case No. D2017‑1162).
The disputed domain name is not in use. However, the Complainant’s trademarks and the disputed domain name are so obviously connected that Respondent’s passive holding of the disputed domain name qualifies as use in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
The Panel therefore finds that the Complainant has satisfied the requirement under paragraph 4(a)(iii) 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.
Andrea Mondini
Sole Panelist
Date: May 1, 2019
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