WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sports Warehouse, Inc v. Laksh Internet Solutions Private Limited
Case No. D2008-1112
1. The Parties
1.1 The Complainant is Sports Warehouse, Inc, of San Luis Obispo, California, United States of America, represented by Sinsheimer Juhnke Lebens & McIvor, LLP, United States of America.
1.2 The Respondent is Laksh Internet Solutions Private Limited, of Mumbai, Maharashtra, India.
2. The Domain Name and Registrar
2.1 The disputed domain name <teniswarehouse.com> (the “Domain Name”) is registered with Lead Networks Domains Pvt. Ltd (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2008. The Complaint initially identified “Private Whois for 012P17120408, Private Whois Escrow Domains Private Limited” as the Respondent in these proceedings.
3.2 On July 23, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. Two days later the Center had not received a reply to that request and the Center sent a chaser by email to the Registrar seeking the Registrar’s urgent response. By July 29 the Center had still not received a response from the Registrar, and sent a further chaser to the Registrar stating that if it did not receive a response from the Registrar by July 30, 2008, it would be forced to proceed on the basis of incomplete information and the material available on the relevant Whois register. The email ended with the line:
“We greatly appreciate your cooperation in ensuring the continued effective functioning of the UDRP in line with your obligations as an ICANN accredited Registrar.”
3.3 On August 6, 20081, the Registrar finally 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.
3.4 The Center sent an email communication to the Complainant on August 6, 2008 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 August 8, 2008.
3.5 The Center verified that the Complaint as amended satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 20, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 9, 2008. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on September 10, 2008.
3.6 The Center appointed Matthew S. Harris as the sole panelist in this matter on September 16, 2008. 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
4.1 The Complainant is engaged in the online retail sale of tennis related equipment and clothing. It is the owner of U.S. Registered trademark no. 3,132,128, in respect of TENNIS WAREHOUSE filed on February 23, 2003 and issued in the United States Principal Register on August 22, 2006. It has also made applications for similar marks in Australia, Japan and Switzerland.
4.2 The Complainant also is the owner of the domain names <tenniswarehouse.com> and <tennis-warehouse.com> from which it conducts its activities.
4.2 The Respondent would appear to be a limited company registered in India. It registered the Domain Name on March 26, 2004.
4.3 The website operating from the Domain Name in June 2008 bore all the hallmarks of having been generated by a domain name parking service. In the top left hand corner of the page were the words “<Teniswarehouse.com> find something interesting” and below this were a series of links incorporating various tennis related terms such as “Discount Tennis Racquets”, “Tennis Balls” and “Tennis Clothing”. When clicked upon, these links took the Internet user to a page that displayed, under the heading “Sponsored Results”, links to various tennis related commercial enterprises.
4.4 As at the date of the decision the format of the page has changed somewhat, but still appears to have been generated by a domain name parking service. The page has the heading “Welcome to <Teniswarehouse.com> and below this are a series of links described as “Related Searches” and “Sponsored Listings”.
5. Parties’ Contentions
A. Complainant
5.1 The Complainant contends that the Domain Name is “virtually identical, phonetically identical, and confusingly similar to [the Complainant’s] registered mark TENNIS WAREHOUSE and the other TENNIS WAREHOUSE marks”. It claims that the Domain Name comprises an intentional misspelling of its marks.
5.2 The Complainant claims that the Respondent has no rights or legitimate interests in respect of the Domain Name. It asserts that it has been using the term “Tennis Warehouse” since long before the Respondent registered the Domain Name and maintains that the Respondent is not known by the “Tenis Warehouse” name “nor is the name connected with a bona fide offering of goods or services by the Respondent”. Reference is also made to the decision in The Coryn Group, Inc., Apple Vacations West, Inc. v. V.S. International, WIPO Case No. D2003-0664, which is said to be authority for the proposition that the registration of a domain name that intentionally misspells another's domain name does not provide a right or legitimate interest.
5.3 The Complainant contends that bad faith registration and use is evidenced by the fact that the Domain Name was registered “years after” the Complainant started to use “its TENNIS WAREHOUSE” marks. It asserts that the Respondent’s purpose in registering the Domain Name was to gain commercially from misleadingly diverting consumers from the Complainant’s site. It also claims that the misspelling inherent in the Domain Name is indicative of bad faith, stating that this was “to attract users who want to visit [the] Complainant’s domain name, but may make a typographic error”.
5.4 Lastly, the Complainant asserts that the Respondent has by means of the use of a privacy service, sought “to mask its scheme to misdirect potential Sports Warehouse customers to competitors of Sports Warehouse”.
B. Respondent
5.5 The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 The Panel has reviewed the documents submitted by the Complainant in this case. In the light of this material, the Panel finds as set out below.
6.2 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.3 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. Namely the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
A. Identical or Confusingly Similar
6.4 The Panel accepts that the Complainant possesses at least one registered trade mark that comprises the words “Tennis Warehouse” and that (once one disregards the “.com” TLD) the Domain Name can only be sensibly understood as the words “Tennis” and “Warehouse” in combination, albeit with the word “Tennis” being misspelled as “Tenis”. It, therefore, has little difficulty in concluding that the Domain Name is confusingly similar to a mark in which the Complainant has rights.
6.5 In the circumstances, the Panel finds that the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.6 The Complainant contends and the Panel accepts, that the Respondent has not been authorised to use the term “Tennis Warehouse” (whether spelled correctly or otherwise) by the Complainant and that the Respondent is not known by the name.
6.7 Further, the Panel accepts that the Respondent has no interest in the Domain Name other than to use it to generate “click-through” revenue. This is clear from the fact that at all relevant times the website operating from the Domain Name has borne the hallmarks of being generated by a domain name parking service.
6.8 The way in which these services operate is explained in greater detail under the heading of bad faith below. Whilst there is nothing per se illegitimate in the use of a domain parking service, it is quite different when a domain name is chosen on the basis of the similarity to a name in which a complainant has an interest, in the expectation that Internet users searching for products or services related to the complainant will instead be drawn to the domain name parking page. Such registration and use does not provide the registrant with a right or legitimate interest in the domain name (see, for example, the decision of three person panel in Express Scripts, Inc. v Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267).
6.9 Essentially, therefore, in a case such as this the assessment boils down to the questions: did the Respondent register the Domain Name with the Complainant’s mark in mind and has it deliberately used it to take advantage of the reputation of that mark? These are also precisely the questions that have to be addressed in assessing the question of bad faith registration and use and a separate assessment of the question of rights and legitimate interests adds very little.
6.10 For the reasons that are explained in greater detail under the heading of bad faith, the Panel concludes that the answer to both questions is yes. In the circumstances, the Panel finds that the Respondent has no right or legitimate interest in the Domain Name and the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.11 The key factor in this case is whether the Respondent was aware of the Complainant’s business at the time that it registered the Domain Name. The Complainant appears to contend that simply because the Domain Name was registered “years after” it started using the TENNIS WAREHOUSE mark that this shows “bad faith”. Unless a complainant has used the mark upon which it relies prior to the registration of the domain name the subject of proceedings, it may prove difficult (albeit not impossible) for it to show that it was with its mark in mind that the domain name was registered. However, it does not necessarily follow simply because a complainant registered its mark before a domain name that the domain name registration was in bad faith.
6.12 Also in this case whilst the Complainant contends that its mark is well known, little attempt is made to substantiate the extent of that fame or its geographical reach. There is a reference to certain countries in which the Complainant has registered trade marks or trade mark applications, but no description of the extent of the Complainant’s sales or advertising activities. In this case the Respondent is based in India2 and there is no description of the Complainant's activities (if any) in India.
6.13 As a consequence, the Panel is not able to draw any inference from the Complainant’s alleged fame alone that the Respondent would more likely than not have been aware of the Complainant’s use of the TENNIS WAREHOUSE mark.
6.14 Nevertheless, the Panel has little difficulty in concluding that the Domain Name was registered with the Complainant’s use of the TENNIS WAREHOUSE mark in mind. There are essentially two reasons for this. First, there is the fact that whilst the words “Tennis” and “Warehouse” are ordinary English words and their combination might be said to be suggestive of a business that has a large stock of tennis related goods, the combination might be considered somewhat unusual. Why it is that the Respondent chose to register that particular combination of words calls for an explanation, and in the absence of any such explanation the Panel believes that it is more likely than not that the Domain Name was registered with the Complainant’s business in mind. Second, and even more compelling is the fact that the Domain Name incorporates a misspelling of the word “Tennis”. It seems more likely than not that any entity that registers a domain name that comprises a misspelled term did so with the correctly spelled version of the domain name in mind. In this case the correctly spelled version of the Domain Name (i.e., <tenniswarehouse.com>) is a domain name that the Complainant has used for its own business.
6.15 Why it is that the Domain Name was registered also appears to be reasonably clear from the fact that the Domain Name has been used in connection with a domain name parking service. It is now well known how these sorts of pages operate. A domain name owner “parks” the domain name with a domain name parking service provider. The service provider then generates a page that incorporates sponsored links or links to sponsored links. When an Internet user clicks on these sponsored links, the entity sponsoring that link will make a payment. This “click-through revenue” is then ordinarily split between the domain name parking service provider and the owner of the domain name (see for example Owens Corning v. NA, WIPO Case No. D2007-1143).
6.16 The generation of revenue from domain name parking activities is not necessarily activity in bad faith. However, it is use in bad faith within the scope of paragraph 4(b)(iv) of the Policy where the registrant chose the domain name in question because of its similarity to a mark or name of another person in the hope and expectation that that similarity results in Internet users being drawn to that page (see for example Express Scripts, Inc. v Windgather Investments Ltd supra.). Given the Panel’s finding that the Respondent was aware of the Complainant’s use of the TENNIS WAREHOUSE mark when the Domain Name was registered, this is the natural conclusion to be drawn in this case.
6.17 There is another factor in this case that supports a finding of bad faith. That is the Respondent’s use of domain name Whois privacy service. There have now been a large number of cases under the Policy in which panels held that the use of such a service can be an indicator of bad faith. For example, in Canadian Tire Corporation Limited v. CK Aspen, WIPO Case No. DTV2007-0015, the panel stated as follows:
“The Panel also accepts that another factor that weighs in the Complainant’s favour on the issue of bad faith is the use by the Respondent of a Domain Name privacy service to hide his identity.
It is sometimes argued by those who use such services that the provision of registration and contact details that are accessible through Whois services may result in unsolicited e-mails, regular mail or even phone calls. To hide one’s contact details so as to prevent such unsolicited contact is said to be legitimate (particularly if the registrant is an individual). Therefore, it is argued that no inference of bad faith can be drawn from the use of these services. However, even if this argument were accepted by this Panel, it is difficult to see why it would justify the masking of a registrant’s identity as opposed to just its contact details. Further, it is becoming an increasingly common practice for registrants to use these services to mask their identity from those who might wish to bring proceedings against them, whether under the UDRP or otherwise. In the circumstances, whilst the use of such a service may not by itself be sufficient to justify a finding of bad faith, the Panel accepts that, in the absence of any explanation from a respondent, it is a factor that may often point in that direction.
The Panel believes that its approach on the question of the use of domain name privacy services is consistent with the decision of other panels on this issue including TDS Telecommunications Corporation v. Registrant [20758] Nevis Domains and Registrant [117460] Moniker Privacy Services, WIPO Case No. D2006-1620 and The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658], WIPO Case No. D2007-1438 as well as the Fox News Network, L.L.C. v. C&D International Ltd. and Whois Privacy Protection Service, WIPO Case No. D2004-0108 and Microsoft Corporation v. Whois Privacy Protection Service / Lee Xongwei, WIPO Case No. D2005-0642, cases cited on this issue by the Complainant.”
6.18 In the circumstances, the Panel finds that the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
6.19 Lastly, there is one further point which, since it has not been put to the Respondent for comment, does not form part of the Panel’s reasoning in this case, but which the Panel believes that it is useful to record since it is consistent with and supportive of the Panel’s conclusions in this case and may be relevant to future decisions. The Panel notes that the Respondent appears to have an extensive history of engaging in abusive registrations. The Panel refers in this respect to the following decisions: CanWest Mediaworks Publications Inc. v. Laksh Internet Solutions Private Limited / SA c/o FP, WIPO Case No. D2008-0687 (<theedmontonjournal.com>); Dr. Ing. h.c. F. Porsche AG v. Laksh Internet Solutions Private Limited / Privacy Protection, WIPO Case No. D2008-0691 (<prosche.com>); Screwfix Direct Limited v. Laksh Internet Solutions Pvt. Ltd. and Private Whois Escrow Domains Pvt. Ltd., WIPO Case No. D2008-0784, (<scewifx.com>); Rediff.com India Ltd. v. Laksh Internet Solutions Private Limited, WIPO Case No. D2008-0804 (<wwwrediff.com>); and JP Labalette SA v. Laksh Internet Solutions Private Limited/Private Whois Escrow Domains Private Limited WIPO Case No. D2008-0817 (<sosmalus.com>); and Microgaming Software Systems Limited v. Private Whois Escrow Domains Private Limited/Laksh Internet Solutions Private Limited WIPO Case No. D2008-0893 (<fortuneloungemicrogaming.com>).
7. Decision
7.1 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 <teniswarehouse.com> be transferred to the Complainant.
Matthew S. Harris
Sole Panelist
Date: September 18, 2008
1 The actions of the Registrar do it no credit. There is no reasonable reason why it should have taken two weeks to respond to the Center’s request. It would appear that this is not a one-off instance and that the Registrar has a history of tardy responses to verification requests from the Center. See, for example, the recent decision in Microgaming Software Systems Limited v. Private Whois Escrow Domains Private Limited/Laksh Internet Solutions Private Limited, WIPO Case No. D2008-0893 in which the Registrar took over three weeks to respond to the Center’s request. Further, in CanWest Mediaworks Publications Inc. v. Laksh Internet Solutions Private Limited / SA c/o FP, WIPO Case No. D2008-0687, the panel commented as follows:
“The Panel expresses grave concern over the delay of 13 days through which the registrar did not reply to repeated requests from the Center for verification and locking of the registration, during which time the registrant was able to change its recorded details. Since this could form the basis of an issue between ICANN and the registrar, beyond the remit of this Panel, it is recommended that the facts of this case should be communicated to ICANN for its attention.”
This Panel endorses those comments.
2 The Complainant in this case faced the difficulty that the Respondent was clearly using a domain name privacy service and therefore could not be sure until being informed of the Registrar’s verification response (and possibly not even then) that the Respondent was located in India. However, it would appear that the original Whois information available for the Domain Name disclosed that this domain name privacy service was based in India.