The Complainant is S Retail Limited of Shirebrook, United Kingdom of Great Britain and Northern Ireland, represented by Griffith Hack, Australia.
The Respondent is Russell Ekas of Neutral Bay, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2015. On August 4, 2015, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the disputed domain name. On the same day GoD, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 12, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was September 1, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 2, 2015.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on September 15, 2015. 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 was established in 1982 and trades worldwide including Australia. It operates more than 500 retail stores worldwide, employs more than 24,000 people and its revenue in 2014 was approximately GBP 2.7 billion. It claims a valuable reputation in its trademark SPORTSDIRECT.COM and owns registrations of that trademark, including registrations in Australia, for the mark per se and in a stylized font.
The Complainant operates an online store at its website offering, inter alia, goods for sale and delivery to Australia; it lists prices and accepts payment in Australian Dollars.
The disputed domain name was registered on September 29, 2014 but does not currently direct to an active website.
The Respondent is the Registrant’s Contact for the domain name registered in the name of an Australian company Woodroll Pty Ltd. The domain name resolves to a website offering for sale online items of sporting clothing and sporting goods similar to those offered by the Complainant. The Respondent’s contact address and the Technical Contact address for the disputed domain is “[a name corresponding to the Respondent]@W”.
On March 23, 2015, the Complainant’s attorneys sent by email a letter of demand to the Respondent demanding that the Respondent and Woodroll Pty Ltd immediately cease and desist from use of the trademark SPORTSDIRECT and transfer of the disputed domain name to the Complainant. No reply was received to that email nor was any reply received to a subsequent reminder sent on May 19, 2015. 5. Parties’ Contentions A. Complainant
The Complainant contends that:
- it has well established and substantial rights in the trademark SPORTSDIRECT.COM and that the disputed domain name is confusingly similar to that trademark;
- it is common for companies trading internationally to register their domain names in the relevant country code domain and to include in the domain name the identity of the country concerned. Accordingly, consumers would naturally expect that the disputed domain name is associated with or operated by the Complainant;
- the disputed domain name is not similar to or in any way connected with the name of the Respondent and the Complainant has not authorized the Respondent to register or use a domain name incorporating the Complainant’s trademark;
- the Respondent is the operator of the website at “www.” which offers goods in direct competition with the Complainant and the Respondent’s registration of a domain name which is confusingly similar to the Complainant’s trademark indicates an intention to take commercial advantage of the Complainant’s reputation in its SPORTSDIRECT.COM trademark;
- the Respondent is a passive holder of the disputed domain name in the sense that that expression was used in Telstra Corporation Ltd v. Nuclear Marshmallows,WIPO Case No. D2000-0003, amounting to bad faith within the requirements of paragraph 4(a) of the Policy;
- the Respondent’s bad faith is further evidenced by its failure to respond to the Complainant’s efforts to contact it. B. Respondent
The Respondent did not file a Response. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has demonstrated rights in the trademark SPORTSDIRECT.COM by registration and has provided evidence of substantial use leading to a strong reputation. Those rights substantially predate the date of registration of the disputed domain name on September 29, 2014. The Complainant’s Australian trademark registration predates the disputed domain name registration by almost seven years. The disputed domain name wholly incorporates the Complainant’s trademark. As the Complainant submits, consumers would inevitably be led to believe that the disputed domain name refers to the Complainant’s Australian business or is in some way connected to the Complainant.
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 record indicates that the Respondent is directly connected to the industry in which the Complainant operates, so there is a strong inference that the Respondent was well aware of the Complainant’s rights and reputation at the time that it registered the disputed domain name. There is no correlation between the disputed domain name and the Respondent’s name.
The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent had an opportunity to rebut the Complainant’s prima facie case but has failed to do so.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered or Subsequently Used in Bad Faith
As noted in paragraph 6.B. above it is almost certainly the case that the Respondent was aware of the Complainant and its rights and reputation in its SPORTSDIRECT.COM trademark at the time of registering the disputed domain name. There is no reasonable basis upon which it may be assumed that the Respondent registered the disputed domain name for any reason other than to take commercial advantage of the Complainant’s reputation in that mark. The provisions of paragraph 4(a)(iii) of the Policy are therefore satisfied. Furthermore, the Respondent’s continued passive holding of the disputed domain name in the face of the Complainant’s letter further drawing attention to its rights in the trademark and its failure to respond to the Complainant’s demands further indicates use in bad faith by passive holding in the sense that that was used in Telstra Corporation Ltd v. Nuclear Marshmallows, supra. 7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Desmond J. Ryan AM
Sole Panelist
Date: September 23, 2015
Full & Egal Universal Law Academy