Westmore · UDRP DecisionJdsportshopuk.com
The Panel ordered transfer of jdsportshopuk.com. It found the domain confusingly similar to the Complainant’s registered JD SPORTS mark, that the Respondent lacked rights or legitimate interests, and that the domain was registered and used in bad faith to attract Internet users for commercial gain through confusion. The domain resolved to an English-language website selling sports footwear, including brands also sold by the Complainant, and incorporated the mark with the terms “shop” and “uk.”
The timeline behind jdsportshopuk.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
This case illustrates how a domain combining a trademark with retail and geographical wording can support findings across all three UDRP elements when it is used for a commercial website selling the same category and brands of goods as the trademark owner. The decision also shows that the absence of the complainant’s mark from the page content does not prevent a finding of bad-faith attraction where the domain itself creates confusion and the surrounding website use reinforces targeting.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION JD Sports Fashion PLC v. Wang Dehua Case No. D2016-1457 1. The Parties The Complainant is JD Sports Fashion PLC of Bury, Lancashire, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Urquhart-Dykes & Lord LLP, United Kingdom. The Respondent is Wang Dehua of Quanzhou, Fujian, China. 2. The Domain Name and Registrar The disputed domain name <jdsportshopuk.com> is registered with Xin Net Technology Corp. (the “Registrar”). 3. Procedural History The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 19, 2016. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 20, 2016, 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. On July 25, 2016, the Center transmitted by email to the Parties a request for comment on the language of the proceeding. On the same day the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding. 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 in both Chinese and English, and the proceedings commenced on August 1, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 21, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 22, 2016. The Center appointed Matthew Kennedy as the sole panelist in this matter on August 26, 2016. 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 retailer of sports fashion, including footwear, and outdoor brands. It operates many bricks-and-mortar stores as well as online stores, including at the website “www.jdsports.co.uk”. The Complainant is the owner of European Union trade mark registration no. 008182611, JD SPORTS, specifying goods and services in multiple classes including footwear in class 25 and “the bringing together for the benefit of others” of footwear and other goods to be sold online in class 35. The trade mark was registered on December 13, 2011 and remains in effect. The Respondent is the registrant of the disputed domain name, which was created on July 5, 2016. The disputed domain name resolves to a website in English that offers sport shoes for sale. Prices are displayed in GBP. One banner claims that the website is a “Nike Official Online Store” while another reads “Buy / Sell Nike, Adidas shoes cheap online market”. 5. Parties’ Contentions A. Complainant The disputed domain name is identical or confusingly similar to the Complainant’s JD SPORTS trademark. The disputed domain name would be understood in English to consist of the elements “JD SPORT”, “SHOP” and “UK”. The first of these elements is nearly identical to the Complainant’s trademark and the other two are merely generic and geographical terms. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has no business or other relationship with the Respondent. To the best of the Complainant’s knowledge, the Respondent is not commonly known by the disputed domain name. The Respondent is using the disputed domain name with the intent of misleading consumers and/or harming the reputation enjoyed by the Complainant. The disputed domain name was registered and is being used in bad faith. Due to the Complainant’s reputation in its trademark, under which it operates a chain of retail stores and a network of e-commerce websites in Europe and Malaysia, selling sports fashion including Nike, Adidas and other footwear, it is hard to believe that the Respondent registered the disputed domain name without being aware of the Complainant and its trademark. The Respondent’s website is a deliberate attempt to create an unauthorized association with the Complainant for the benefit of trading on the Complainant’s reputation in the JD SPORTS trademark. Consumers could be misled which could lead to the Complainant losing sales. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative 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”. The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese. The Complainant requests that the language of the proceeding be English. Its main arguments are that the website at the disputed domain name is wholly in English and that the Respondent must therefore be capable of communicating in English, while the Complainant is unable to communicate in Chinese and submission of all documents in Chinese would cause undue delay and substantial expenses for translations. The Panel notes that all the Center’s email communications with the Parties have been in both Chinese and English. The Respondent was given an opportunity to object to the Complainant’s requests that English be the language of the proceeding but the Respondent did not in fact object. Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding takes place with due expedition. Prior UDRP panels have noted that the choice of language of the proceeding should not create an undue burden for the parties (See, for example, Solvay S.A. v. Hyun-Jun Shin , WIPO Case No. D2006-0593 ; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd. , WIPO Case No. D2008-0293 ). The Panel observes that in this proceeding the Complaint was filed in English. The website to which the disputed domain name resolves is also in English, from which it is reasonable to infer that the Respondent is able to communicate in that language. Moreover, the Respondent has not expressed any wish to respond to the Complaint or otherwise participate in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay. Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. 6.2 Analysis and Findings Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements: (i) the disputed domain name is identical or confusingly similar to a trademark 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. A. Identical or Confusingly Similar Based on the evidence submitted, the Panel finds that the Complainant has rights in the JD SPORTS trademark. The disputed domain name incorporates the Complainant’s trademark as its initial element, omitting only the space between “JD” and “SPORTS”. This difference can be disregarded in a comparison with the Complainant’s trademark as domain names do not include spaces for technical reasons. The disputed domain name contains three additional elements. The first of these, combined with the final letter of the trademark which precedes it, spells “shop”, which is merely a dictionary word. A dictionary word is not sufficient to dispel the confusing similarity of the disputed domain name to the Complainant’s trademark. (See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd. , WIPO Case No. D2001-0110 ). The overlap between the final letter of the trademark and that additional word is so minor that it does not dispel the confusing similarity either. The second additional element is “uk” which, as an abbreviation for “United Kingdom”, is merely a geographical term. A geographical term is not sufficient to dispel the confusing similarity of the disputed domain name to the Complainant’s trademark. (See Playboy Enterprises International, Inc. v. Zeynel Demirtas , WIPO Case No. D2007-0768 ). The third additional element is the generic Top-Level Domain (“gTLD”) suffix “.com”. A gTLD suffix generally has no capacity to distinguish a domain name from a trademark either. (See Lego Juris A /S v. Chen Yong, WIPO Case No. D2009-1611 ; Dr. Ing. H.c. F. Porsche AG v. zhanglei , WIPO Case No. D2014-0080 ). Consequently, the only distinctive element of the disputed domain name for the purposes of this comparison is the Complainant’s JD SPORTS trademark, minus the space. Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy: (i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or (ii) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the Respondent has] acquired no trademark or service mark rights; or (iii) [the Respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. As regards the first circumstance, the Respondent uses the disputed domain name in connection with the offering of sports footwear for sale. The issue is whether that offering was bona fide . The only distinctive element of the disputed domain name is the Complainant’s trademark, minus the space, yet, according to the Complaint, the Respondent has no business or other relationship to the Complainant. There is nothing on the Respondent’s website that would indicate any reason for choosing the disputed domain name in connection with the offering of sports footwear other than to misleadingly divert Internet users to the site with intent for commercial gain. Accordingly, the Respondent’s use of the disputed domain name in connection with the offering of goods or services is not bona fide within the terms of the first circumstance of paragraph 4(c) of the Policy. As regards the second circumstance, the Respondent’s name is Wang Dehua. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy. As regards the third circumstance, the disputed domain name resolves to a website that offers goods for commercial sale. This is not a legitimate noncommercial or fair use of the disputed domain name covered by the third circumstance of paragraph 4(c) of the Policy. In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent did not rebut that case because he did not file a Response. Therefore, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows: “(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.” The Respondent registered the disputed domain name in 2016, years after the Complainant obtained its trademark registration. The only distinctive element of the disputed domain name is the Complainant’s trademark, minus the space. The disputed domain name combines the Complainant’s trademark with the dictionary word “shop”, although the two elements overlap in one letter, and with the geographical term “uk”. The Complainant is based in the United Kingdom and operates online shops selling, among others, the same brands of footwear as those offered on the Respondent’s website. The Respondent offers no explanation for its choice to register the disputed domain name including the Complainant’s trademark. This all gives the Panel reason to believe that the Respondent was aware of the Complainant’s trademark and its goods and services at the time that it registered the disputed domain name. This conclusion is confirmed by the top results in a search of the term “jdsports” on the Chinese search engine Baidu, which include the Complainant’s official website “www.jdsports.co.uk”. The Respondent uses the disputed domain name, including the Complainant’s trademark, with a website to offer sports footwear for sale. The brands of sports footwear offered are also offered on the Complainant’s official websites. The Respondent’s website does not display the Complainant’s trademark in its content but that does not prevent the disputed domain name from attracting Internet users to the site. It can also be observed that the layout on the Respondent’s website is similar to the layout of a page offering similar goods on the Complainant’s official website. The Respondent has no connection with the Complainant. Given these facts, the Panel considers that the Respondent’s use of the disputed domain name intentionally attempts to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the products on that website. Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy. 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 <jdsportshopuk.com> be transferred to the Complainant. Matthew Kennedy Sole Panelist Date: August 27, 2016
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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