The Complainant is Grand Slam Tennis Properties ltd., United Kingdom, represented by Noerr LLP, Germany.
The Respondent is Contact Privacy Inc. Customer 0152960105, Canada / Darryl Cazares, Grand Slam Nutrition Corp, United States of America (“United States”), represented by Rhema Law Group, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2020. On April 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 29, 2020, 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 April 29, 2020 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 May 4, 2020. The Respondent sent an email communication to the Center on May 7, 2020, to which the Center replied on the same day.
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 May 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 3, 2020. The Response was filed with the Center on June 3, 2020.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on June 18, 2020. 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 June 26, 2020, the Center received an email communication from the Complainant enclosing an unsolicited supplemental filing by way of purported rejoinder to the Response.
On June 27, 2020, the Center received an email communication from the Respondent enclosing an unsolicited supplemental filing objecting to the Complainant’s supplemental filing.
4. Factual BackgroundThe Complainant was established in 2009 to administer the intellectual property associated with the four prestigious tennis tournaments known as the Grand Slams:
(a) The Australian Open;
(b) The French Open;
(c) Wimbeldon; and
(d) The United States Open.
The Complainant’s four shareholders are the operators of those tournaments.
According to the Complaint, the term “Grand Slam” has been used by the operators of these tournaments and the public to refer to the respective events since the 1930s.
The Complainant owns numerous trademarks around the world for GRAND SLAM. These include:
(a) Australian Registered Trade Mark Number 1037905 registered from January 17, 2005, 2005 for a range of goods and services in International Classes 3, 9, 14, 16, 18, 21, 24 and 41;
(b) European Union Trademark Number 004031861 registered on February 22, 2013 for a range of goods in International Classes 3, 9, 18 and 25;
(c) European Union Trademark Number 006414569 registered on November 19, 2007 for a range of goods and services in International Classes 14, 21, 24, 28 and 41; and
(d) United States Registered Trademark Number 3,345,176 registered on November 27, 2007 for services in International Class 41.
The Complaint also includes evidence of trademark registrations in numerous other countries.
The disputed domain name was registered on November 27, 2016.
It resolves to a website headed “Grand Slam Nutrition” superimposed over an image featuring two crossed tennis racquets behind a tennis ball. The landing page then features the banner “Optimal Nutrition for Tennis Players” and an image of recognizable and well-known individual tennis players who have won many Grand Slam tournaments: Rafael Nadal, Roger Federer and Novak Djokovic. The website promotes and offers for sale the Respondent’s meal replacement and nutrition products.
5. Discussion and FindingsParagraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(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.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
Under paragraph 12 of the Rules, the Panel may request a supplemental filing. Unsolicited supplemental filings may be accepted into the record at the Panel’s discretion subject to compliance with the requirements of paragraph 10 including that the proceedings be conducted expeditiously and, in particular, ensuring that the parties are treated equally and fairly. The proposed supplemental filings in this case do not appear to demonstrate the “exceptional” circumstances usually required for acceptance of an unsolicited supplemental filing. See e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 4.6. Accordingly, it is unnecessary to consider the proposed supplemental filings further and they are not admitted into the record in this proceeding.
A. Identical or Confusingly SimilarThe first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks for GRAND SLAM referred to in section 4 above.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. e.g. WIPO Overview 3.0 , section 1.7.
In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top Level Domain (gTLD) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11.
Disregarding the “.net” gTLD, the disputed domain name consists of the Complainant’s registered trademark and the term “tennis”. As this requirement under the Policy is essentially a standing requirement, the addition of terms does not preclude a finding of confusing similarity. See e.g. WIPO Overview 3.0, section 1.8. Apart from anything else, the Complainant’s trademark remains visually and aurally recognisable within the disputed domain name.
Although it is not specifically relevant at this stage of the inquiry, the Panel notes that the inclusion of the word “tennis” in the disputed domain name only reinforces the potential for confusion as it refers directly to the sport played in the Complainant’s events
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate InterestsThe second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(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.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it.
The disputed domain name includes in common with the Respondent corporation’s name the term “grand slam”. The Respondent also has a pending trademark application in the United States for its figurative device featuring “Grand Slam Nutrition”, Trademark Application Number 87,378,441. This application is in respect of nutritional supplements in International Class 5 and sports drinks in International Class 32. This application was filed on March 20, 2017 and claims a first use in commerce in September 2016.
According to the declaration of Mr Cazares submitted in support of the Response, he started the idea and concept for the Respondent’s “brand” in January 2015. Mr Cazares declares that the expression “Grand Slam” is widely used in the sports world to denote various events or achievements. The Response refers to usages in automobile racing for a driver who wins a race from pole position and leads in every lap of the race as well as to someone who wins all NASCAR Sprint Cup Series “majors” in a calendar year. Other examples include baseball, referring to a home run being hit when all bases are loaded, references in equestrian events, martial arts and, apparently, a breakfast item on the menu in Denny’s restaurants. According to Mr Cazares, he adopted the term in good faith to associate his products with a sense of high premium quality. Mr Cazares says the Respondent has spent over USD 150,000 developing its product and has been marketing it successfully since 2016.
It appears, therefore, that the Respondent’s corporate name and trademark were not adopted until well after the registration of the Complainant’s trademark and long after the tennis tournaments came to be known as the Grand Slam events.
The Panel notes that the Complainant’s trademark registrations do not specifically cover the particular goods offered by the Respondent. The Panel also notes that, at least in the United States, there are a number of trademark registrations and applications which include the term “grand slam” for goods and services other than those covered by the Complainant’s registrations and which do not appear to be associated with the Complainant.
However, the issue in the present case is not the use of the terms “grand slam” or “grand slam nutrition”, but the term in the disputed domain name
The Respondent’s stated intention to convey the premium or high quality of its products by use of the expression “grand slam” does not explain the inclusion of “tennis” within the disputed domain name. The inclusion of the word “tennis” in the disputed domain name, however, conveys a direct association between the disputed domain name and the sport of and tournaments in that sport designated by the term “grand slam”. That conveys a high risk of the Respondent’s website and products being thought associated with the Complainant’s tournaments and trademark. That risk is, as the Complainant contends, reinforced and promoted by the heavy use of tennis-related images on the website.
The Respondent contends that the Complainant has not submitted a consumer survey to support the likelihood of deception or confusion. The inference, however, appears clear and uncontroversial in this case having regard to the form of the disputed domain name and even more so given the heavy use of “tennis” related iconography in the Respondent’s trademark and on his website including the images of leading tennis stars best known for their success in the Grand Slam tournaments.
The use of the disputed domain name to convey a misleading impression of association with the Complainant and its trademark does not qualify as a good faith offering of goods under the Policy.
Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad FaithUnder the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd.,
WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
As already noted, the Respondent contends it adopted the disputed domain name because the term “grand slam” conveys an impression of high or premium quality and achievement.
However that may be, the disputed domain name is
Under the Policy, taking advantage of the Complainant’s trademark without the licence of the Complainant or other justification in this manner constitutes registration in bad faith. The manner of use continues and compounds that trading on the trademark significance of the term “grand slam” and also constitutes use in bad faith under the Policy.
Accordingly, the Complainants have established all three requirements under the Policy.
D. Reverse Domain Name HijackingIn light of the conclusions reached above, there is not occasion to consider the Respondent’s request for a finding of reverse domain name hijacking.
6. DecisionFor 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
Warwick A. Rothnie
Sole Panelist
Date: June 29, 2020