The Complainant is SportPursuit Limited, United Kingdom, represented by Demys Limited, United Kingdom.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2021. On July 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 19, 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 July 20, 2021 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 July 21, 2021.
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 July 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 18, 2021.
The Center appointed Theda König Horowicz as the sole panelist in this matter on September 13, 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 BackgroundThe Complainant was incorporated as a company in the United Kingdom (“UK”) in 2011. It is an online sports clothing and accessories retailer which offers flash sales and discounted products of major brands.
The Complainant operates an official website at “www.sportpursuit.com” and is also active in social media.
The Complainant owns several registrations for the trademark SPORTPURSUIT including:
- UK Trademark Registration No. UK00002581536, in classes 9, 35, 39, 41, and 43, filed on May 16, 2011 and registered on August 12, 2011;
- UK Trademark Registration No. UK00913709399, in classes 9, 25, 35, 39, 41, and 43, filed on February 4, 2015 and registered on June 24, 2015; and
- European Union Trade Mark Registration No. 013709399, in classes 9, 25, 35, 39, 41, and 43, filed on February 4, 2015 and registered on June 24, 2015.
The disputed domain name was registered on January 31, 2019 and at the time of filing the Complaint resolved to a webpage encouraging users to download malicious software.
A cease and desist letter was sent by the Complainant to the Respondent on May 24, 2021. No answer was given.
5. Parties’ Contentions A. ComplainantThe Complainant alleges to have earlier trademark rights over SPORTPURSUIT and notes that the disputed domain name is confusingly similar to its marks as it only differs by the transposition of the letters “u” and “i” (in “pursuit”). This misspelling along with the fact that “sportpursiut” has no meaning has to be considered in the analysis of the first criteria of the UDRP. The generic Top-Level Domain (“gTLD”) “.com” generally should be disregarded when making this analysis.
The Complainant also alleges that the Respondent does not have rights or legitimate interests in the disputed domain name because:
(i) the Complainant has found no evidence that the Respondent has been commonly known as “sportpursiut”;
(ii) the Respondent is not a licensee of the Complainant and has not been authorized to use the SPORTPURSUIT trademark;
(iii) the Complainant has found no evidence that the Respondent owns any trademarks incorporating the term “sportpursiut” or traded as such;
(iv) the disputed domain name is used in association with a website containing misleading virus alerts;
(v) there is no conceivable legitimate interest or use of the disputed domain name considering the fame of the Complainant’s trademark; and
(vi) the Respondent did not reply to the cease and desist letter and did not provide any explanation for the registration of the disputed domain name.
The Complainant further states that the disputed domain name was registered and is being used in bad faith. Internet uses are indeed misled in believing that the disputed domain name is associated with the Complainant. A reasonable use of the disputed domain name cannot be conceived under the present circumstances. The term “sportpursiut” has no meaning and a bona fide use of the disputed domain name cannot therefore be contemplated. Furthermore, the disputed domain name resolves to a website encouraging users to download malicious software.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsUnder the Policy, in order to prevail, a complainant must prove the following three elements for obtaining the transfer of a domain name:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Complainant showed that it has trademark rights in SPORTPURSUIT through the above-referenced European Union and UK trademark registrations.
According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In cases where the disputed domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the disputed domain name, the disputed domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.
The disputed domain name is almost identical to the Complainants trademark, the only difference being that the letters “u” and “i” in the term “pursuit” are misplaced.
According to the WIPO Overview 3.0, section 1.9, a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element. This stems from the fact that the domain name contains sufficiently recognizable aspects of the relevant mark. Examples of such typos include the inversion of letters.
Under these circumstances, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s mark.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(i) before any notice of the dispute, the 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;
(ii) being commonly known by the domain name, even no trademark or service mark rights have been acquired; or
(iii) the making of 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.
Once the Complainant establishes a prima facie case against the Respondent under this ground, the burden of production shifts to the Respondent to rebut it. See WIPO Overview 3.0, section 2.1.
The Complainant makes several statements showing that it never allowed the Respondent to use the trademark SPORTPURSUIT by any means whatsoever and that the Respondent would not have any rights in the name “sportpursiut” or would be known by it.
Based on the above, the Panel considers that the Complainant has made a prima facie case and the burden of production shifts to the Respondent.
The Respondent has chosen not to reply. The Panel also notes that the disputed domain name was apparently used in relation to a website providing false virus alerts. Nothing in the case file provides indications as to potential rights or legitimate interests of the Respondent.
Consequently, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe Complainant has shown that its trademark has been registered and used for approximately 10 years on the Internet in relation with a business of selling sportswear and accessories.
Hence, the Panel finds that the Respondent who registered the disputed domain name at the end of 2019 thus knew or should have known of about the Complainant’s trademark and deliberately registered the confusingly similar disputed domain name (see WIPO Overview 3.0, section 3.2.2).
The disputed domain name was therefore most likely created for commercial gain by intentionally creating a likelihood of confusion with the Complainant’s trademark. The redirection of the disputed domain name to a webpage which apparently was falsely promoting virus alerts is an indication of bad faith use.
Furthermore, the Panel notes that the Respondent also registered the domain name
It thus seems that the Respondent was deliberately targeting the brand of the Complainant when registering domain names similar to the Complainant’s trademark and linking them to doubtful webpages.
It also appears that the Respondent unduly registered several other domain names and is known as a cybersquatter since she has been identified in approximately 200 UDRP cases.
The Panel further notes that the Respondent registered the disputed domain name via a privacy service and has chosen to remain silent within this proceeding, which are further indications of bad faith.
In light of the above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith and that the Complainant has established its case under paragraph 4(a)(iii) of the Policy.
7. 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
Theda König Horowicz
Sole Panelist
Date: October 1, 2021