The Complainant is National Hockey League, United States of America (“United States”), represented by Greenberg Traurig, LLP, United States.
The Respondent is W S, WIS INC, Cayman Islands, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 3, 2021. On February 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 3, 2021, the Registrar transmitted by email to the Center its verification response: (a) confirming it is the Registrar for the disputed domain name; (b) confirming that the Respondent is listed as the registrant and providing the contact details; (c) indicating the language of the registration agreement is English; (d) confirming that the registration agreement included an acknowledgement that the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”). The Center verified that the Complaint satisfied the formal requirements of the Policy, 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 February 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 26, 2021. The Center appointed Warwick A. Rothnie as the sole panelist in this matter on March 4, 2021. 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 an unincorporated association which conducts the “National Hockey League”, the premier North American professional ice hockey league. It has been doing so for over 100 years. According to the Complaint during the 2018 – 2019 season NHL teams played 1,271 games watched by over 22 million live audience and millions more through television. The Complainant registered the domain name In 2001, the Complainant registered the domain name The Complainant has numerous registered trademarks for NHL, for the NHL shield device, and other signs in which NHL is a key feature. In the United States, registrations for the NHL shield device date from 1970 (Trademark Nos 891,762 and 897,099 in respect of indicating membership in the Complainant) and from 2006 in the “new” form (Trademark No. 3,129,313). Registrations of the “new” form in International Classes 6, 9, 16, 21 and 28 date from 2007 and International Class 41 from 2008. There are also registrations in other classes. For NHL alone, the first registration was No. 883,569, registered in 1969 in respect of indicating membership in the Complainant. There are also Trademark Nos 1,904,540 (in 1995 in respect of video game cartridges in International Class 28) and 1,960,563 (in 1996 in respect of entertainment services in International Class 41). There are numerous other registrations. The Complainant also says it has over 160 registrations in 29 other countries. The evidence in the Complaint includes registrations of NHL in Canada (1996), China (2018), the European Union (1999 and 2009), and the United Kingdom (1999 and 2009), as well as other countries. According to the Complaint, the disputed domain name was registered by the Respondent on August 3, 2020. It resolves to various websites including pay-per-click parking pages and websites which through deceptive offers seek to download malicious software on to the browser’s computer. The disputed domain name is also offered for sale on the Afternic Domains for Sale page for USD 799. 5. Discussion and Findings No response has been filed. The Complaint and Written Notice have been sent, however, to the Respondent at the electronic and physical coordinates confirmed as correct by the Registrar in accordance with paragraph 2(a) of the Rules. Bearing in mind the duty of the holder of a domain name to provide and keep up to date correct WhoIs details, therefore, the Panel finds that the Respondent has been given a fair opportunity to present its case. When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable. Paragraph 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. A. Identical or Confusingly Similar The 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 at the date the Complaint was filed 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 numerous registered trademarks for NHL simpliciter. The Complainant has also proven ownership of numerous other trademarks which include NHL and has made very extensive use of “NHL.tv” as a trademark too. 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 of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 1.7. In undertaking the 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 “.com” gTLD, the disputed domain name consists of the Complainant’s registered trademark and the term “-tv”. As this requirement under the Policy is essentially a standing requirement, the appending of that suffix does not preclude a finding of confusing similarity. See e.g. WIPO Overview 3.0, section 1.8. The Complainant’s trademark remains visually and aurally recognisable within the disputed domain name. 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. Given that conclusion, it is unnecessary to consider the Complainant’s other arguments. B. Rights or Legitimate Interests The 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. The ultimate burden of proof, however, remains with the Complainant. See e.g., WIPO Overview 3.0, section 2.1. The Complainant points out that the Respondent has registered the disputed domain name long after the Complainant began using its trademark and long after the Complainant’s rights in NHL have been established. The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it in any way. The disputed domain name is plainly not derived from the Respondent’s name. Nor is there any suggestion of some other name by which the Respondent is commonly known from which the disputed domain name could be derived. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name. The Respondent is using the disputed domain name to generate revenues through pay-per-click advertising through links to services similar to or competitive with the Complainant’s services or, alternatively, to inject malware into Internet user’s computers. That conduct does not constitute a good faith offering of goods or services under the Policy. Still less so, bearing in mind the Respondent is simultaneously offering the disputed domain name for sale. None of this conduct constitutes legitimate noncommercial or fair use. These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name. The basis on which the Respondent has adopted the disputed domain name, therefore, calls for explanation or justification. The Respondent, however, has not sought to rebut that prima facie case or advance any claimed entitlement. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also. C. Registered and Used in Bad Faith Under 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 LtdWIPO 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. It seems very unlikely that the Respondent was not aware of the Complainant and its trademark given how long the trademark has been in use and how extensively, all the more so given the appending of the “-tv” suffix and the resemblance of the resulting combination to the Complainant’s own widely used and promoted domain name The registration and offering for sale of a domain name at a price significantly higher than the typical costs of registering a domain name in the “.com” gTLD in the absence of rights or legitimate interests in the domain name would usually constitute registration and use in bad faith under the Policy. Further, in addition to offering the disputed domain name for sale, the disputed domain name has been used only to divert Internet users to the Respondent’s website either to generate revenues from their clicks on pay-per-click advertisements or to inject malware on to their computers. In these circumstances, the Panel infers that the Respondent registered the disputed domain name for the purposes for which it is being used. Accordingly, the Panel finds it has been registered in bad faith. The way the disputed domain name is being used also constitutes use in bad faith under the Policy. As a result, the Complainant has established all three requirements under the Policy. 6. 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 Warwick A. Rothnie
Sole Panelist
Date: March 18, 2021
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