The Complainant is JD Sports Fashion PLC of Bury Lancashire, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), represented by Urquhart-Dykes & Lord, United Kingdom.
The Respondent is Wang Junjie of Sherman Oaks, United Kingdom.
The disputed domain name <jdsportsoutlet.com> is registered with eNom, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2017. On August 16, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 16, 2017, the Registrar 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 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 August 18, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 7, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 8, 2017.
The Center appointed Debrett Lyons as the sole panelist in this matter on September 26, 2017. 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.
The facts relevant to the decision in this case are that:
(1) the Complainant operates an international chain of retail stores selling sports-fashion and outdoor clothing brands by reference to the trade mark JD SPORTS;
(2) the trade mark JD SPORTS is the subject, inter alia, of European Union Trade Mark (“EUTM”) No. 008182611, registered with effect from March 26, 2009, owned by the Complainant;
(3) the disputed domain name was registered on July 22, 2016;
(4) the disputed domain name resolves to a website carrying the homepage banner, “Undisputed King of Trainers”1 , which promotes for sale of sports footwear; and
(5) there is no commercial or other relationship between the Parties and the Complainant has not authorized the Respondent to use the trade mark or to register any domain name incorporating the trade mark.
The Complainant asserts trade mark rights in JD SPORTS and alleges that the disputed domain name is confusingly similar to its trade mark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant alleges that the Respondent registered and is using the disputed domain name in bad faith.
The Complainant accordingly requests the Panel to order transfer of the disputed domain name.
The Respondent did not submit a response.
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(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.
It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact that the Respondent failed to submit a response. Having considered the Complaint and the available evidence, the Panel finds the following:
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to the trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights. It is accepted that a trade mark registered with a national authority is evidence of trade mark rights for the purposes of the Policy.2 The Complainant provides evidence of its registration of the trade mark JD SPORTS with the European Union Intellectual Property Office and so the Panel accepts that the Complainant has trade mark rights.
The generic Top-Level Domain (“gTLD”) “.com” can (generally, and in this case) be disregarded for the purposes of comparison.3 The disputed domain name takes the trade mark to which it adds the word “outlet”, a common reference to retail shopping outlets for various goods. The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark. Addition of the word “outlet” to the trade mark does not prevent such confusing similarity.4
The Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well-settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by providing evidence demonstrating rights or legitimate interests in the disputed domain name.5
Notwithstanding the lack of a response to the Complaint, paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
“(i) before any notice to you of the dispute, your 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making 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.”
The publicly available WhoIs data identifies the disputed domain name registrant as Wang Junjie. There is nothing to support any finding by the Panel that the Respondent might be commonly known by the disputed domain name.
There is no evidence that the Respondent has trade mark rights in the disputed domain name. There is no relationship between the Parties and the Complainant has not authorized the Respondent to use its trade mark.
The disputed domain name resolves to a website which uses another of the Complainant’s registered trade marks, KING OF TRAINERS.6 That website promotes for sale sports footwear bearing third party trade marks such as NIKE, ADIDAS and JORDAN. That offering is in direct competition with the business provided by the Complainant.
The use of the disputed domain name to misleadingly create the belief that the Respondent is connected in some way with the Complainant’s business establishes to the Panel’s satisfaction that there has not been a bona fide offering of goods or services by reference to the disputed domain name, nor a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent in failing to reply to the Complainant’s contentions has not rebutted such prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and so the Complainant has satisfied the second element of the Policy.
Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
“(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 online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Panel finds that, in the circumstances of the case, the Respondent must have had the Complainant’s trademark in mind when it registered the disputed domain name, and that the Respondent’s actions fall squarely under paragraph 4(b)(iv) of the Policy. The Panel has already found the disputed domain name to be confusingly similar to the trade mark. The Panel further finds that the Respondent intends to gain commercially from the resultant confusion which brings traffic to the resolving and competitive webpage. The Panel finds that, in terms of paragraph 4(b)(iv) of the Policy, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to an online location by creating a likelihood of confusion with the Complainant’s trade mark as to the source or affiliation of that location.7
Accordingly, the Complainant has satisfied the third and final limb of the Policy.
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 <jdsportsoutlet.com> be transferred to the Complainant.
Debrett G. Lyons
Sole Panelist
Date: October 3, 2017
1 The Complainant is also the owner of EUTM No. 002980696, registered with effect from December 18, 2002, for the trade mark KING OF TRAINERS.
2 See section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
3 See section 1.11.1 of the WIPO Overview 3.0.
4 See section 1.8 of the WIPO Overview 3.0.
5 See, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624.
6 See fn. 1 supra.
7 See section 3.2.1 of the WIPO Overview 3.0.