The Complainant is ABG-SI LLC, United States of America (the “United States”), represented internally.
The Respondent is Monge Alberto, ISP Proveedora S.A., Costa Rica. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2021. On March 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 22, 2021, 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 23, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant sent an answer on March 23, 2021. 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 proceedings commenced on March 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 19, 2021. The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on April 28, 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 the owner of the sports media brand, Sports Illustrated, commonly abbreviated and known as “SI”, founded over 60 years ago. The Complainant acquired the “SI” brand from TI Gotham Inc. (as successor-in-interest for Time, Inc.) and Meredith Corporation by assignment dated May 24, 2019. The Complainant states that said brand has been a leader in sports journalism and award-winning content and is the most-read sports magazine in the world. The Complainant’s enterprise includes what it says is a top 10 sports website, storied print magazine, rising TV and digital platform, Emmy award-winning digital innovation and enduring franchises, including Sports Illustrated Swimsuit and the nationally televised Sportsperson of the Year award ceremony. The Complainant states that it maintains an intellectual property portfolio of more than 350 registered trademarks including SI-formative marks. For example, the Complainant is the owner of United States registered trademark no. 3407233 for the word mark MYSI, registered on April 1, 2008 in international class 41; and no. 2389386 for the word mark SIKIDS.COM, registered on September 26, 2000 in international class 42. The Complainant states that the domain name According to the corresponding WhoIs record, the disputed domain name was registered on March 27, 2009. The Complainant states (but does not provide corresponding evidence) that the website associated with the disputed domain name uses the term “SI” in connection with sports and sports betting. The Complainant provides a side by side comparison of its own logo against that used by the Respondent as follows: Complainant’s logo Respondent’s logo The Complainant provided minimal evidence with its Complaint and there were no screenshots of the Parties’ websites provided. The URLs of both websites were noted on the record, however, and under its general powers articulated in paragraphs 10 and 12 of the Rules, the Panel has conducted limited factual research into matters of public record by visiting both sites, along with the Internet Archive “Wayback Machine” website entries in respect of the disputed domain name. The Respondent’s site features the logo identified by the Complainant as part of a larger “SI Sports Book” logo. Said site appears to be offering gambling services by telephone using a “1-800” toll free telephone number. The operator of the site does not appear to be disclosed, for example on the “contact us”, “house rules” or “sports rules” pages, however, it refers to itself in its rules as “SI Sportsbook”. 5. Parties’ Contentions A. Complainant The Complainant contends as follows: Identical or confusingly similar The disputed domain name contains “si” which is a common abbreviation for the Complainant’s SPORTS ILLUSTRATED mark and is contained in its SI-formative trademarks. The addition of the word “sportsbook” enhances the confusion because the Complainant is widely known for its activities in sports and sports betting. Consumers are conditioned to see the Complainant’s SI marks to designate the Complainant’s content and services. Rights and legitimate interests The Respondent is neither a licensee of the Complainant nor is the Respondent otherwise authorized to use the Complainant’s SI or SI-formative mark for any purpose. There is no connection between the Respondent and the Complainant. The disputed domain name has been registered by the Respondent without any rights or legitimate interest in the SI IP Rights, as the SI brand was solidly established by the Complainant or the Complainant’s predecessor-in-interest decades before the disputed domain name was registered. The Respondent’s only purpose in securing and using the disputed domain name is for commercial gain on the sale of services related to and branded under the Complainant’s rights in SI, all without right or license. Registered and used in bad faith The registration and use of the disputed domain name is an obvious attempt to capitalize on the Complainant’s world-famous brand. The Respondent blatantly uses a logo that is nearly identical to that used on the Complainant’s official website. The use of the Complainant’s rights by the Respondent in connection with sports and sports betting wrongfully trades on the Complainant’s goodwill, developed by it and its predecessors-in-interest. This represents the clear intent of the Respondent to both register and use the disputed domain name in bad faith in a deliberate effort to profit from and exploit the Complainant’s rights in the SI mark by diverting customers looking for the official SI website to the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a 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. Preliminary Issue: Respondent Identity The Registrant Name field on the WhoIs record, as verified by the Registrar, lists the holder of the disputed domain name as “Monge Alberto”. The corresponding Registrant Organization field, as also verified, lists the holder as “ISP Proveedora S.A.”. However, when providing its verification, the Registrar noted that “[..] the registrant is a company, as indicated to the complainant when they requested the publicly available Whois contact details”. That statement does not accord with the Registrar’s email to the Complainant’s representative of March 5, 2021 in which it provided the WhoIs data on the disputed domain name, although there may be another communication between the Registrar and such representative on this subject, which the Panel has not seen. Both Registrant Name and Registrant Organization share the same contact details, including what appears to be an email address for the entity listed as the Registrant Organization. The Complaint named the Respondent as the entity listed in the Registrant Name field. The Center provided the Complainant with an opportunity to amend this following disclosure of the Registrant Organization data by the Registrar but the Complainant declined the opportunity to do so. While the Complaint seeks to proceed against “Monge Alberto” only, the Complainant nevertheless includes details of both registrant entities in its Annex A. On this basis, the Panel is satisfied that the Complaint is properly directed against the holder of the disputed domain name. Nevertheless, the Panel requires to determine who the correct Respondent should be and retains discretion to do so according to the Rules. In Majid Al Futtaim Properties LLC v. Scitecs and Arabian Centres Company Limited,WIPO Case No. D2018-1776, the panel observed: “[…] where a WhoIs record specifies both a “Registrant Name” and a “Registrant Organization”, there is no doubt that the holder of the domain name registration is only the specified “Registrant Organization”. In the Panel’s view, there is no scope for arguing that in such a case the “Registrant Name” has any rights in respect of the domain name. If it did, then that could open up all manner of dispute as to whether the individual and the organization had joint rights or whether the rights of one trumped the other. In many organizations, the person registering a domain name will enter their name (or, for example, “Domain Name Manager”) in such a way that results in this being recorded against “Registrant Name”, when it is quite clear that it is only the organization that is intended to be the holder of the domain name.” On that view, the correct Respondent in the present case would only be the Registrant Organization, against whom the Complaint is not explicitly directed. This may also be what the Registrar was suggesting when it noted that the registrant “is a company”, given that the field concerned seems to represent a corporate identifier. However, a less prescriptive view may be found in Vita-Cos-Med Klett-Loch GmbH v. Perfect Privacy, LLC / MVB & Associates, Inc. and Theresa Wainright,WIPO Case No. D2014-0978, where the panel stated, “The difference between the “registrant name” and “registrant organization” in the WhoIs record is sometimes an arbitrary one – reflecting the preferences of the registrant. Ultimately, as noted above, the role of the Panel is to identify the actual holder of the domain name registration, which may not necessarily be the same as the person or entity identified as the “registrant name” or “registrant organization” in the WhoIs details if the evidence so indicates.” In the present case, the Panel determines that the correct Respondent is both of the entities which appear in the respective registrant fields on the WhoIs record for the disputed domain name. As the Respondent has not engaged with the proceeding, there is insufficient evidence before the Panel to suggest that either entity takes precedence as the holder of the disputed domain name and the Panel is not inclined to take the approach of the panel in Majid Al Futtaim Properties LLC v. Scitecs and Arabian Centres Company Limited, supra merely because the Registrant Organization field has been completed. Likewise, although the Registrar commented that the registrant is “a company”, it did not point specifically to the Registrant Name field, Registrant Organization field or indeed to any specific corporate entity, and offered no background or further explanation which might have led the Panel to make an alternative determination on this topic. There does not appear to be any prejudice to the Respondent from the Panel’s determination as to Respondent identity. The contact details for both of the Respondent parties are identical. In the event that the Registrant Name entity might take precedence, the hard copy notice of the Complaint was addressed to it and was signed for at destination. In the alternative that the Registrant Organization entity might take precedence, the emailed copy of the Complaint was addressed to what appears to be its email address. Both of said entities have therefore received notification of the Complaint and in fact, as indicated above, there is no evidence before the Panel that either takes precedence as the holder of the disputed domain name. For convenience, both of said entities will be referred to in combination as “the Respondent” throughout this Decision. B. Identical or Confusingly Similar The first element under the Policy essentially functions as a standing requirement and consists of a two part test. The first part of the test involves ascertaining whether the Complainant has UDRP-relevant rights in a trademark. The second part of the test is typically addressed by way of a side-by-side comparison between the disputed domain name and such trademark in order to assess identity or confusing similarity. In the present case, the Complaint consists almost entirely of assertion. No supporting evidence has been provided other than copies of a selection of the Complainant’s registered trademarks, including those outlined in the factual background section above. In this context, the Panel readily identifies the fact that the Complainant has UDRP-relevant rights in its registered trademarks for MYSI and SIKIDS.COM. These are not identical to the disputed domain name and the Panel would have doubted whether, on their own, either of these marks could be said to be confusingly similar to the second level of the disputed domain name (the generic top-level domain (“gTLD”), in this case “.com”, typically being disregarded on the grounds that this is required for technical reasons only). The comparison is between MYSI or SIKIDS.COM, on the one hand, and “sisportsbook” on the other. The only common feature is the “si” element and it does not seem reasonable to the Panel to determine that either MYSI or SIKIDS is recognizable (other than partially so) within the disputed domain name. That is not the end of the matter, however, as the Complainant makes a series of assertions regarding its claim to extensive use of the mark SI by it and its predecessors in interest over many years to designate a variety of goods and services, submitting that consumers are “conditioned” to recognize this mark as associated with the Complainant’s goods and services. The Complainant claims substantial goodwill and indeed fame in this term arising from such alleged longstanding and widespread use, originally deriving from an abbreviation of its well-known magazine title, “Sports Illustrated”. These submissions, if suitably evidenced, might be expected to demonstrate the existence of unregistered trademark rights in the SI mark vesting in the Complainant. However, as noted above, the Complainant has not evidenced them in any way. The Panel has however identified that similar submissions relating to the SI mark, made by the Complainant’s immediate predecessor in interest, were accepted by the panel in the comparatively recent case of Time Inc. v. Daniel Smith,WIPO Case No. D2018-1190. Based on the evidence before it, that panel was prepared to find that the Complainant’s said predecessor had UDRP-relevant rights in the SI mark, noting in particular that it had used the SI moniker in connection with the “Sports Illustrated” publication since as early as July 17, 1978. If the present Panel had not identified this particular case, and if it had not been prepared to visit the Complainant’s official website at “www.si.com” for further context (the URL for which is listed in the Complaint), there would have been inadequate evidence on the present record to support the Complainant’s multiple assertions regarding the existence of its claimed SI mark. This constitutes a critical gap left by the Complainant which the Panel has only been able to fill, in part, by making reference to a previous case under the Policy. In Wayfair LLC v. Mingfeng Wu, Meta-Alpha Asset Management,WIPO Case No. D2018-2033, the panel took a similar course, while making the following additional observations: “Had this finding not appeared in a reported case of which the Panel could fairly take judicial notice, the Panel would have resisted the urge to use its own factual investigation and legal analysis to compensate for Complainant’s failure to introduce evidence into the record. It is not enough merely to make unsupported allegations paraphrased from the Policy. Complainant must introduce evidence to support its allegations or risk having its complaint denied. The Panel appreciates that policing domain name abuse is daunting and that, given Complainant’s prior success enforcing the Policy, it may be tempting to submit barebones complaints and trust the system to ferret out the truth. The Panel admonishes Complainant to introduce sufficient evidence into the record in future proceedings”. The present Panel endorses those observations and repeats them in the particular circumstances of the present case. The Complainant is admonished to introduce sufficient evidence into the record in future proceedings. If it does not do so, it risks failure of the complaint concerned. Having taken notice of the panel’s findings in Time Inc. v. Daniel Smith, supra, the Panel has no difficulty in finding that the Complainant has UDRP-relevant rights in its claimed SI mark and that the disputed domain name is confusingly similar thereto. Said mark is readily recognizable as a prominent element in the second level of the disputed domain name, and the additional descriptive words “sports” and “book” do nothing to detract from this. Furthermore, the Respondent’s website content confirms the Panel’s finding of confusing similarity in this particular case due to the evident similarity between the logo which the Respondent has deployed and that of the Complainant. It is appropriate for a panel to take note of website content for the purposes of the first element assessment in cases where it appears prima facie that the respondent seeks to target a trademark through the domain name, as is the situation here. The Respondent has not engaged with the administrative proceeding and, accordingly, it has not challenged the Complainant’s case on this topic. In all of these circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. C. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name: “Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”. The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. In the present case, the Panel considers that the Complainant has established the requisite prima facie case by way of its submissions that the Respondent is not a licensee of the Complainant, that it is not authorized to use the Complainant’s SI mark, and that there is no connection between the Parties. The Complainant adds that its SI mark was solidly established decades before the disputed domain name was registered and, as discussed in the preceding section, the Panel accepts this submission on the basis of the panel’s findings in Time Inc. v. Daniel Smith, supra. Finally, the Complainant states that the Respondent is using the disputed domain name for commercial gain arising from the sale of services related to and branded under the Complainant’s SI mark. Accordingly, the burden of production shifts to the Respondent to bring forth evidence of its rights and legitimate interests in the disputed domain name. The Respondent is using the disputed domain name in association with a website which invites Internet users to call a toll-free telephone number to place wagers and a different number for “technical support”. As noted in the preceding section and the factual background section above, the Respondent makes prominent use of the Complainant’s SI mark by way of a notably similar logo. This seems to the Panel to be calculated to confuse Internet users into believing that they are using one of the Complainant’s services when they are not. Furthermore, the Panel was unable to identify any specification on the website of the legal identity of the operator, nor details of any gaming license or other similar or typical indications of a legitimate gambling business. In all of these circumstances, the Panel does not consider that the Respondent could be described as making a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy. Likewise, there is no evidence on the record that the Respondent has been commonly known by the disputed domain name in terms of paragraph 4(c)(ii) of the Policy, nor is there any indication that the Respondent is making a noncommercial or fair use of it in terms of paragraph 4(c)(iii) of the Policy. It should also be added that the Complainant wrote a cease and desist letter to the Respondent dated March 5, 2021 but presumably did not receive any reply, contrary to what would typically be expected of a legitimate business operator. Furthermore, the Respondent has chosen not to engage in the present proceedings and therefore has itself offered no submissions nor any evidence which might demonstrate any rights and legitimate interests in the disputed domain name. In these circumstances, the Panel is of the opinion that the Respondent has failed to rebut the Complainant’s prima facie case and accordingly finds that the Respondent has no rights or legitimate interests in the disputed domain name. The requirements of paragraph 4(a)(ii) of the Policy have been satisfied. D. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: “(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” The Panel commences its assessment on this topic by noting that the registration date of the disputed domain name is March 27, 2009, more than 12 years ago. In order for the Complainant to prove registration in bad faith, it requires to show that the Respondent registered the disputed domain name on that date with knowledge of the Complainant’s rights and intent to target these (assuming, as here, that there is no evidence of a more recent transfer to the Respondent). The Complainant offers no such direct evidence and merely focuses on the present use of the disputed domain name to demonstrate both registration and use in bad faith. The Panel however has been prepared to review the relevant entries from the Internet Archive “Wayback Machine,” being a publicly available source of historic website captures. The Panel notes, also with reference to its visits to the Parties’ websites, that it is not obliged to make any such investigations and that the safer course of action for a complainant is to provide suitable evidence, such as website screenshots, along with its complaint. In any event, the first historic entry on the Internet Archive relating to the website associated with the disputed domain name, dating from April 19, 2009, is in substantially similar terms to the present website and, notably, this features the same confusingly similar logo to the Complainant’s SI logo and mark as is identified in the Complaint. The evidence available from Time Inc. v. Daniel Smith, supra shows that the Complainant and its predecessors in interest had been using their SI mark prominently, to a significant degree and for similar purposes, at least since 1978, i.e. for some 31 years before the registration date of the disputed domain name. By 2009, the Panel considers that the Complainant’s SI mark is more likely than not to have become well-known to those with an interest in sports betting, such as the Respondent. These facts, taken together, are sufficient in the Panel’s opinion to demonstrate both knowledge and intent to target the Complainant and its rights on the part of the Respondent. The Respondent has not provided any Response and has put forward no alternative good faith motivation which it might have had in connection with the disputed domain name. On the basis of the present record, and in the absence of any contribution from the Respondent, the Panel cannot conceive of any such good faith motivation. The Panel finds that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's SI mark as to source, sponsorship, affiliation, or endorsement of the Respondent's website. As noted above, this constitutes evidence of registration and use in bad faith in terms of paragraph 4(b)(iv) of the Policy. For completeness, the Panel notes that although the disputed domain name has been in existence for some 12 years prior to the filing of the Complaint, mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits. In all of these circumstances, the Panel finds that the disputed domain name has been registered and is being used in bad faith and therefore that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied. 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 Andrew D. S. Lothian
Sole Panelist
Date: May 12, 2021
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