ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION RPSG Sports Private Limited v. ZULFIQUAR KHAN, LUCKNOW, SUPERGIANTS CONSULTANTS LLC Case No. D2023-1813 1. The Parties The Complainant is RPSG Sports Private Limited, India, represented by De Penning & De Penning, India. The Respondent is ZULFIQUAR KHAN, LUCKNOW, SUPERGIANTS CONSULTANTS LLC, United States of America ("United States"), self-represented. 2. The Domain Name and Registrar The disputed domain name is registered with GoDaddy.com, LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 24, 2023. On April 24, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 25, 2023, 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 (Domains By Proxy LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 26, 2023 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 1, 2023. 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 3, 2023. In accordance with the Rules, paragraph 5, the due date for Response was May 23, 2023. The Response was filed with the Center on May 29, 2023. page 2 The Center appointed Steven A. Maier as the sole panelist in this matter on June 15, 2023. 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 a company registered in India. It is part of the RSPG Group, which has a diverse range of business interests in India including energy, manufacturing, media, entertainment and sports. In 2016 and 2017, the Complainant owned a cricket team named Rising Pune Supergiant, which was a participant in the India Premier League (the "IPL"). In 2021, the Complainant was the successful bidder for a new IPL franchise for the Indian region of Lucknow. Its successful bid was announced and widely reported in the Indian press on October 15, 2021. The Respondent registered the disputed domain name on October 15, 2021. In January 2022, the Complainant named the newly-acquired IPL franchise team Lucknow Super Giants following a competition to decide its name. According to evidence submitted by the Complainant, on February 15, 2022, the disputed domain name resolved to a website headed "Lucknow Super Giants Dot Com". The website was sub-headed "AUCTION IPL" and referred to "Players Bought" among other topics. It included several images of cricket matches in progress. The Complainant filed numerous India trademark applications for both word and figurative marks including the terms LUCKNOW SUPER GIANTS on February 23, 2022. According again to evidence submitted by the Complainant, on April 24, 2023, the disputed domain name resolved to a website headed "Lucknow Supergiants Consultants". The website was sub-headed "A Path of Learning" and appeared to offer services to students and their families relating to college selection and applications. 5. Parties' Contentions A. Complainant The Complainant states that its group is a major Indian conglomerate which has two centuries of trading history and current revenues of USD 4 billion. The Complainant submits that it has common law rights in the mark SUPER GIANTS by virtue of its ownership of the Rising Pune Supergiant IPL team in 2016 and 2017. It states that the team included some of the biggest names in international cricket, such as M.S. Dhoni of India, Steve Smith of Australia, Faf Du Plessis of South Africa, and Ben Stokes of England. The Complainant states that it won the bid for the Lucknow IPL franchise on October 15, 2021 for INR 7,090 crore, being equivalent approximately to USD 861 million. It provides evidence that news of its successful bid was widely published, on the same day, on various news media platforms in India. The Complainant states that the name Lucknow Super Giants was chosen and announced for the team on January 24, 2022 following a competition to decide the name. page 3 The Complainant submits that the disputed domain name is confusingly similar to its (claimed) trademark SUPER GIANTS. It states that the terms comprising that trademark are the dominant element of the disputed domain name, which will inevitably lead members of the public to believe that it is owned and operated by the Complainant. The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It contends that there is no plausible reason for the Respondent to have registered the disputed domain name, on October 15, 2021, otherwise than in response to the announcement of the Complainant's successful bid for the Lucknow IPL franchise. It submits that the Respondent's website initially included content relating to IPL cricket, but that the Respondent changed this to comprise educationrelated content after the Complainant initiated proceedings in respect of the domain name. The Complainant contends that the Respondent registered the disputed domain name in anticipation of an obvious name for the Complainant's newly-acquired Lucknow IPL franchise, being a combination of the location Lucknow with the name of the Complainant's previous team, Rising Pune Supergiant. The Complainant relies on the case of Glasgow 2014 Limited v. Tommy Butler, WIPO Case No. D2012-2341, in which the respondent was found to have registered the domain name in anticipation of the rights that would be developed by those responsible for the 2014 Commonwealth Games in the event that the Glasgow bid for those games was successful. The Complainant submits that the disputed domain name was registered and has been used in bad faith. It contends that the registration of the disputed domain name by a party with no connection with the Complainant is suggestive of "opportunistic bad faith". The Complainant further submits that it approached the Respondent about the disputed domain name and the domain name and that the Respondent offered to sell both these names for INR 6 crore (in excess of USD 720,000). It produces what appears to be an internal email which is said to evidence that offer. The Complainant submits evidence that it has previously obtained a transfer of the domain name from the Respondent following an arbitration under the auspices of The National Internet Exchange of India. It provides a copy of that arbitration decision. The Complainant requests the transfer of the disputed domain name. B. Respondent The Respondent submits that the disputed domain name comprises two generic terms that are not exclusive to the Complainant. It provides evidence of numerous registered trademarks which include the terms LUCKNOW, SUPERGIANT, SUPER and GIANTS. It contends, therefore, that the disputed domain name is not confusingly similar to any trademark in which the Complainant may have rights. The Respondent submits that it has rights or legitimate interests in respect of the disputed domain name by virtue of the following: 1. Its ownership of India trademark registration number 5483393 for the mark SUPERGIANTS plus a device, registered as of June 10, 2022 in International Class 41; 2. Its ownership of United Kingdom trade mark number 3865214 for a word mark LUCKNOW SUPERGIANTS, registered on March 31, 2023 in International Class 41 with a filing date of January 6, 2023; 3. Its pending application for a United States trademark for a word mark LUCKNOW SUPERGIANTS, filed on June 23, 2022; page 4 4. Its ownership of an Indian registered company name Supergiants Consulting (OPC) Private Limited as evidenced by a certificate of incorporation dated July 29, 2022; and 5. Its incorporation of a Delaware, United States limited liability company named Lucknow Supergiants Consultants LLC as of August 4, 2022. The Respondent contends that it has been commonly known by the disputed domain name by virtue of these matters. It further submits that it has been engaged in a legitimate business under the disputed domain name by offering education, career and consultancy services, which it claims to constitute both a bona fide commercial offering and a legitimate noncommercial or fair use of the disputed domain name. The Respondent states that it registered the disputed domain name, which is comprised of dictionary words, some four or five months before the Complainant adopted the team name Lucknow Super Giants. The Respondent contends that it did not violate any existing rights by registering the disputed domain name. The Respondent submits that it did not register the disputed domain name with knowledge of any corresponding Complainant's trademark, since the Complainant's team name did not exist at that date. It maintains that it is making legitimate use of the disputed domain name for information or business purposes and has no intention of engaging in phishing or typosquatting. It contends that its website makes clear it is not associated with the Complainant. The Respondent further submits that, since the Complainant's team name was decided as the result of a competition, it cannot be the case that Lucknow Super Giants was the obvious name for the team. The Respondent denies having any communication with the Complainant about a possible sale of the disputed domain name. It states that there were settlement discussions in connection with the earlier Indian arbitration proceedings but that no figure was discussed. The Respondent states that the Complainant and the Respondent are not competitors and the disputed domain name was not registered in order to disrupt the Complainant's business. It denies that any of the circumstances contemplated by paragraph 4(b) of the Policy as potentially evidencing bad faith is present. The Respondent contends that the Complainant was brought in bad faith primarily to harass the Respondent and should result in a finding of Reverse Domain Name Hijacking ("RDNH") against the Complainant. 6. Discussion and Findings In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are that: (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. Identical or Confusingly Similar The Panel finds that the Complainant's ownership of the IPL team Rising Pune Supergiant in 2016 and 2017 is sufficient to have invested it with a level of common law rights in the mark SUPER GIANT as a distinctive identifier of the Complainant's services in connection with IPL cricket in India. The disputed domain name incorporates the whole of that trademark, subject to the addition of the term "lucknow" and the pluralization of the term "giant", neither of which prevent the Complainant's trademark from being recognizable within the page 5 disputed domain name. The Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests The Respondent contends that the disputed domain name comprises two dictionary or generic terms that are widely used elsewhere and in which the Complainant has no exclusive rights. However, these contentions, even if correct, are not sufficient to give rise to rights or legitimate interests in respect of the disputed domain name. In such circumstances, a respondent must establish that it has actually used the disputed domain name in connection with the dictionary meaning relied on, or at least provide an explanation supported by evidence as to the selection of the disputed domain name for reasons different to its significance in connection with the complainant. Furthermore, no rights or legitimate interests will be found where it is established that the respondent registered the disputed domain name primarily to target the complainant's trademark rights (see e.g. section 2.10.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0")). While the Respondent contends that the disputed domain name consists of dictionary or generic terms, it offers no explanation of its choice of those two terms in combination for the purpose of the disputed domain name. Nor is that explanation apparent from the use which it appears at any time to have made of the website to which the disputed domain name resolves. Neither the initial use of the disputed domain name for the purpose of IPL cricket-related content, nor its subsequent use apparently for educational and career consultancy purposes, has any apparent connection with the words relied upon. In addition, the Panel finds that although these words individually considered have a dictionary meaning, this particular combination of words is not a purely descriptive phrase, and it is highly unlikely to be the result of a random selection of words. The Complainant previously owned an IPL team named Rising Pune Supergiant. On October 15, 2021, the Complainant was announced successfully to have bid for the IPL franchise for the Lucknow region. The Respondent registered the disputed domain name on the same day as that announcement. In the view of the Panel, these circumstances give rise to a compelling inference that the Respondent registered the disputed domain name in the knowledge of the relevant announcement and in anticipation of a name that the Complainant was likely to choose for the Lucknow IPL team. While it is correct that the Respondent registered the disputed domain name before the Complainant named its team Lucknow Super Giants, such registration nevertheless took place after the Complainant had acquired common law rights in the mark SUPER GIANT and in conjunction with the announcement of the Complainant's successful bid for the Lucknow franchise. All of the Respondent's trademark and company name registrations and applications were made subsequently, between June 2022 and June 2023, and were, in the view of the Panel, likely to have been made with the primary intention of avoiding the consequences of the UDRP in connection with the disputed domain name (see e.g. section 2.12.2 of WIPO Overview 3.0, which observes that a respondent's trademark registration does not automatically give rise to rights or legitimate interests if obtained primarily to circumvent the UDRP). In these circumstances, while the Panel does not question the validity of the Respondent's various registrations (which topic is not within its remit) it does not find that any of those registrations provides the Respondent with rights or legitimate interests in respect of the disputed domain name for the purposes of the Policy There being no other evidence of rights or legitimate interests on the Respondent's part, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith The question of the registration of a domain name in anticipation of trademark rights is discussed in section 3.8.2 of WIPO Overview 3.0, which states as follows: page 6 "As an exception to the general proposition [that where a respondent registers a domain name before the complainant's trademark rights accrue, panels will not normally find bad faith on the part of the respondent] in certain limited circumstances where the facts of the case establish that the respondent's intent in registering the domain name was to unfairly capitalize on the complainant's nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith. Such scenarios include registration of a domain name: (i) shortly before or after announcement of a corporate merger, (ii) further to the respondent's insider knowledge (e.g., a former employee), (iii) further to significant media attention (e.g., in connection with a product launch or prominent event), or (iv) following the complainant's filing of a trademark application." The Panel also has regard to the reasoning of the panel in the Glasgow 2014 Limited case (supra). In this case, the Panel finds on the balance of probabilities that the Respondent registered the disputed domain name in the knowledge that the Complainant had previously owned the IPL team Rising Pune Supergiant and had now been awarded the franchise for the Lucknow area. Its registration of the disputed domain name on the same day as the relevant announcement cannot be viewed as coincidental and the Respondent has, in any event, provided no substantial alternative explanation for its choice of the disputed domain name. The Panel does not consider it significant that the name Lucknow Super Giants was in fact selected by the Complainant as a result of a competition, as that does not prevent it from being an obvious name for the IPL team in question. Were any further confirmation of the Respondent's bad faith required, the Panel also notes the Complainant's evidence (which the Respondent does not contradict) that the disputed domain name directed initially to a website relating to IPL cricket, but was altered after the Complainant commenced proceedings in respect of the domain name. Concerning the Respondent's use of the disputed domain name, the Panel does not find that the disputed domain name has been used for any bona fide commercial purpose, or any legitimate noncommercial or fair purpose, genuinely connected with the disputed domain name. The Panel finds, on the contrary, that the Respondent's use of the disputed domain name is a pretext for targeting the Complainant's common law SUPER GIANT trademark and Lucknow Super Giants name. Concerning the Complainant's contention that the Respondent attempted to sell the disputed domain name to the Complainant for INR 6 crore, which the Respondent denies, the Panel does not find this to have been established by the evidence produced by the Complainant. However, the Panel does not consider this to be a matter of significance. In the Panel's view, there is no reasonable explanation for the Respondent to have registered and used the disputed domain name otherwise than to target the Complainant's rights in the trademark SUPER GIANT and its nascent (or expected) rights attaching to the Lucknow Super Giants name. The Panel finds therefore that the disputed domain name has been registered and is being used in bad faith. 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 be transferred to the Complainant. /Steven A. Maier/ Steven A. Maier Sole Panelist Date: June 29, 2023
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