Complainant is JD Sports Fashion Plc, United Kingdom, represented by Murgitroyd & Company, United Kingdom.
Respondent is Contact Privacy Inc. Customer 1249870605, Canada / Dwi Wahyu Indarto, Indonesia.
2. The Domain Name and RegistrarThe disputed domain name (the “Domain Name”)
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2021. On November 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 25, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 2, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 3, 2021. The Complaint was submitted in English, according to the information received by the Registrar, the language of the registration agreement for the Domain Name is Indonesian.
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”).
On December 2, 2021, the Center transmitted an email communication to the Parties in English and Indonesian regarding the language of the proceeding. On December 3, 2021, Complainant submitted an amended Complaint, which includes a request that English be the language of the proceeding. Respondent did not comment on the language of the proceeding.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint in Indonesian and English, and the proceedings commenced on December 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 30, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 19, 2022.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on January 28, 2022. 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 BackgroundComplainant is a sports-fashion and outdoor brands retail company based in England, founded by John Wardell and David Makin in 1981. It originally traded as John David Sports from a single store in Manchester, and now operates over 850 stores in 19 territories around the world under its JD SPORTS brand.
Complainant is the owner of numerous trademark registrations worldwide, containing, the JD SPORTS or JD marks including:
- European Trade Mark Registration No. 008182611 for the JD SPORTS word mark registered on December 13, 2011;
- European Union Trade Mark Registration No. 008182578 for the JD figurative registered on December 13, 2011;
- European Union Trade Mark Registration No. 008182644 for the JD word mark registered on December 13, 2011;
- United Kingdom Trademark Registration No. UK00003157909 for the JD SPORTS word mark registered on July 15, 2016;
- United Kingdom Trademark Registration No. UK00002393521 the JD word mark registered on November 11, 2005;
- United Kingdom Trademark Registration No. UK00002211242 the JD word mark registered on March 16, 2001; and
- United Kingdom Trademark Registration No. UK00002412351 for the JD word and design mark registered on October 27, 2006.
In addition to its physical stores, Complainant operates a number of e-commerce websites at “www.jdsports.co.uk”, “www.jd-sports.com.au”, “www.jdsports.at”, “www.jdsports.be”, “www.jdsports.com.sg”, “www.jdsports.de”, “www.jdsports.dk”, “www.jdsports.es”, “www.jdsports.fi”, “www.jdsports.fr”, “www.jdsports.ie”, “www.jdsports.it”, “www.jdsports.my”, “www.jdsports.nl”, “www.jdsports.pt”, “www.jdsports.se”, “www.jdsports.com” and “www.jdsports.co.th”.
Respondent registered the Domain Name on April 1, 2021. The Domain Name directs to a website that advertises and offers sports apparel for sale.
5. Parties’ Contentions A. ComplainantComplainant contends that (i) the Domain Name is identical and confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Name; and (iii) Respondent registered and is using the Domain Name in bad faith.
In particular, Complainant contends that it has trademark registrations for the JD and JD SPORTS marks and own domain names incorporating the JD and JDSPORTS marks. Complainant contends Respondent registered and is using the Domain Name to confuse Internet users looking for bona fide and well-known JD and JD SPORTS products and services.
Complainant notes that it has no affiliation with Respondent, nor authorized Respondent to register or use a domain name, which includes Complainant’s marks, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Name. Rather, Complainant contends that Respondent has acted in bad faith in acquiring and setting up the Domain Name, when Respondent clearly knew of Complainant’s rights.
B. RespondentRespondent did not formally reply to Complainant’s contentions.
6. Discussion and Findings 6.1. Preliminary Procedural Issue – Language of the ProceedingThe Rules, in paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Complainant submitted its original Complaint in English. In its amended Complaint, Complainant requests that the language of the proceeding should be English. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Indonesian.
Complainant contends that the Domain Name reverts to a website with content predominantly in English, which suggests Respondent’s familiarity with English. Complainant also contends that it is not able to communicate in Indonesian, that it would be unfairly burdensome for Complainant to translate and conduct the proceeding in Indonesian and would also cause unnecessary delay in the proceeding.
In exercising its discretion to use a language other than that of the Registration Agreement for the Domain Name, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Panel accepts Complainant’s submissions regarding the language of the proceeding. The Panel notes that the Center notified the Parties in Indonesian and English of the language of the proceeding as well as notified Respondent in Indonesian and English of the Complaint and amended Complaint. Respondent chose not to comment on the language of the proceeding nor did Respondent choose to file a Response. Further, the Panel notes that the Domain Name was registered using Latin characters.
The Panel is also mindful of the need to ensure that the proceeding is conducted in a timely and cost‑effective manner. Complainant may be unduly disadvantaged by having to translate the Complaint into Indonesian and to conduct the proceeding in Indonesian.
Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
6.2. Substantive IssuesUnder paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name was registered and is being used in bad faith.
Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?
Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.”
Thus, although in this case Respondent has failed to formally respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,
WIPO Case No. D2006-0340.
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of their rights in the JD and JDSPORTS marks, as noted above. Complainant has also submitted evidence, which supports that the JD and JDSPORTS marks are widely-known trademarks and a distinctive identifier of Complainant’s products and services. Complainant has therefore proven that it has the requisite rights in the JD and JDSPORTS marks.
With Complainant’s rights in the JD and JDSPORTS mark established, the remaining question under the first element of the Policy is whether the Domain Name, typically disregarding the Top-Level Domain (“TLD”) in which it is registered (in this case, “.com”), is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,
WIPO Case No. D2010‑0842.
Here, the Domain Name is confusingly similar to Complainant’s JD and JDSPORTS marks. These marks, which are fanciful and inherently distinctive, are recognizable in the Domain Name. The incorporation of the JD and/or JDSPORTS mark with: either (i) the addition of the terms “sportapparel” after the “JD” trademark or (ii) the absence of the letter “s” and addition of the generic term “apparel” after the “JDSPORTS” trademark, in the Domain Name does not prevent a finding of confusing similarity between Complainant’s trademarks and the Domain Name registered by Respondent.
Thus, the Panel finds that Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate InterestsUnder paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,
WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
From the record in this case, it is evident that Respondent was, and is, aware of Complainant and the JD and JDSPORTS marks, and does not have any rights or legitimate interests in the Domain Name. Complainant has confirmed that Respondent is not affiliated with Complainant, or otherwise authorized or licensed to use the JD or JDSPORTS trademarks or to seek registration of any domain name incorporating the trademarks. Respondent is also not known to be associated with or commonly known by the JD or JDSPORTS marks.
In addition, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services or a legitimate non-commercial or fair use. Rather, the evidence demonstrates that the Domain Name resolved to a webpage that purportedly offers services related to Complainant’s business, using Complainant’s JD and/or JDSPORTS mark. Such use does not constitute a bona fide offering of goods or services or a legitimate non-commercial or fair use and cannot under the circumstances confer on Respondent any rights or legitimate interests in the Domain Name. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration,
WIPO Case No. D2013-0875. Moreover, there is no evidence showing that Respondent has been commonly known by the Domain Name.
Further, the nature of the Domain Name carries a risk of implied affiliation with Complainant (see WIPO Overview 3.0, section 2.5.1).
Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Name. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Name and Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain Name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(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 on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Panel finds that Complainant provided ample evidence to show that registration and use of the JD and JDSPORTS marks long predate the registration of the Domain Name by Respondent, more specifically, the JD and JDSPORTS marks have been registered since at least as early as 2001, well before Respondent registered the Domain Name on April 1, 2021. Complainant is also well established and known. Indeed, the record shows that Complainant’s JD and JDSPORTS marks and related services are widely-known and recognized. Therefore, and also noting the composition of the Domain Name itself, Respondent was likely aware of the JD and JDSPORTS marks when it registered the Domain Name, or knew or should have known that the Domain Name was confusingly similar to Complainant’s marks. See WIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,
WIPO Case No. D2016‑1973.
The Panel therefore finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz,
WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,
WIPO Case No. D2001-1070; BellSouth Intellectual Property Corporation v. Serena, Axel,
WIPO Case No. D2006-0007.
Further, the registration of the Domain Name incorporating Complainant’s JD and/or JDSPORTS mark with the addition of the term “sportapparel” to the JD mark or the deletion of the letter “s” and addition of the generic term “apparel” to the JDSPORTS trademark – suggests Respondent’s actual knowledge of Complainant’s rights in the JD and JDSPORTS marks at the time of registration of the Domain Name and its effort to opportunistically capitalize on the registration and use of the Domain Name.
In addition, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services or a legitimate non-commercial or fair use. Rather, the evidence demonstrates that at the time of the filing of the Complaint, the Domain Name resolved to a website that advertises and offers sports apparel for sale.
Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use and cannot under the circumstances confer on Respondent any rights or legitimate interests in the Domain Name. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration,
WIPO Case No. D2013-0875. Moreover, there is no evidence showing that Respondent has been commonly known by the Domain Name. See section 3.3 of the WIPO Overview 3.0.
Here, the present circumstances, including the distinctiveness and reputation of the JD and JDSPORTS marks, the failure of Respondent to submit a formal response or to provide any evidence of actual or contemplated good faith use, and the implausibility of any good faith use to which the Domain Name may be put, support a finding of bad faith. Accordingly, the Panel finds that Respondent has registered and is using the Domain Name in bad faith and Complainant succeeds under the third element of paragraph 4(a) 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 Domain Name,
Kimberley Chen Nobles
Sole Panelist
Date: February 4, 2022