The Complainant is Planet Sports GmbH of Munich, Germany, represented by BPM Legal., Germany.
The Respondent is WhoisGuard, Inc. of Panama City, Panama / Dieter Mieter of Berlin, Germany.
The disputed domain name <planet-sports.online> is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2018. On September 17, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 17, 2018, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on September 18, 2018 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 September 27, 2018.
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 September 28, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 18, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default October 19, 2018.
The Center appointed Theda König Horowicz as the sole panelist in this matter on October 30, 2018. 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 Complainant owns and promotes online shops for sport- and streetwear. Its first flagship store was opened in Munich in 2009. The Complainant currently has 12 stores in Germany in addition to its different online shops.
The Complainant is the owner of several trademark registrations since 1996 containing the trademark PLANET SPORTS including in Germany and as a European Union trademark.
Furthermore, the Complainant owns and uses several domain names comprising PLANET SPORTS, including <planet-sports.de> and <planet-sports.com>.
The disputed domain name was registered on August 3, 2018 through a privacy registration service and linked to a webpage requesting for data from the Internet user. The website was later deactivated.
The Complainant makes the following allegations:
- The disputed domain name incorporates the PLANET SPORTS trademarks and is identical to such marks.
- The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks and has not permitted the Respondent to apply for or use any domain name incorporating the trademark PLANET SPORTS. Furthermore, the Respondent used the disputed domain name deliberately to enact “phishing” activities and extort confidential client information from the Complainant. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. Consequently, there is no doubt that the Respondent has no rights or legitimate interests over the disputed domain name.
- The PLANET SPORTS trademarks are highly distinctive due notably to the strong online business of the Complainant. The fact that the Respondent used the disputed domain name for phishing activities by using a copy of the Complainant’s website evidences that the Respondent was aware of the Complainant’s rights over PLANET SPORTS. Phishing is a form of Internet fraud which is obviously evidence of bad faith. In addition, the Respondent registration of the disputed domain name prevents the Complainant from reflecting the trademark PLANET SPORTS in the corresponding domain name. The Respondent’s use of the disputed domain name is qualified to disrupt the Complainant’s business and is capable of reducing the number of visitors to the Complainant’s website which may adversely affect the business and therefore constitutes bad faith. Furthermore, the registration and use of the disputed domain name constitute an abusive threat for the Complainant. Finally, the fact that the Respondent used a privacy registration service suggests that he wants to hide his identity.
The Respondent did not reply to the Complainant’s contentions.
Under the Policy, in order to prevail, a complainant must prove the following three elements for obtaining the transfer of a domain name:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
The Complainant has shown to have trademark rights in PLANET SPORTS, in particular in Germany where both the Complainant and the Respondent are based.
The disputed domain name fully incorporates the trademark of the Complainant. The mere addition of the generic Top-Level Domain (“gTLD”) “online” is not sufficient to make a difference. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.
The Panel therefore concludes that the disputed domain name is identical to the Complainant’s marks.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes:
(1) the use of the domain name in connection with a bona fide offering of goods and services;
(2) being commonly known by the domain name; or
(3) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
The Panel finds that the Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name.
In particular, it appears that the Responded copied parts of the Complainant’s website in order to extort client information (so called “phishing”) which can under no circumstances be considered as a legitimate use (see WIPO overview 3.0, section 2.13).
Consequently, the burden of production shifts to the Respondent to rebut the showing by providing concrete evidence that he has rights or legitimate interests in the disputed domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
The Respondent submitted no reply to the case against him. No evidence is contained in the case file which would evidence that the Respondent has rights or legitimate interests in the disputed domain name.
The Panel thus finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
The third element requires that the Respondent registered and is using the disputed domain name in bad faith. See the Policy, paragraph 4(a)(iii). Paragraph 4(b) of the Policy enumerates non-exhaustive circumstances in which evidence of bad faith registration and use can be found:
(i) circumstances indicating that the respondent has registered or has 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 respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) respondent has 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 he has engaged in a pattern of such conduct; or
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to his 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 his website or location or of a product or service on his website or location.
As already mentioned above, both the Complainant and the Respondent are based in Germany. The Complainant has shown to have developed in Germany and online a wide activity in the field of selling sports- and streetwear under its brand PLANET SPORTS.
The Panel thus estimates that the Respondent must have indeed known the Complainant’s trademark PLANET SPORTS when registering the disputed domain name which is identical with the Complainant’s trademark and the <planet-sports.de> and <planet-sports.com> domain names
The Complainants has also shown evidence that the Respondent used the disputed domain name to get information and data from Internet users and potential clients of the Complainant. Such activity can obviously only be considered as bad faith use of the disputed domain name.
The fact that the Respondent used a privacy registration service for the disputed domain name and that the Respondent remained silent within these proceedings are additional indications for a finding of bad faith registration and use.
Considering the above-mentioned circumstances, the Panel finds that the Complainant has also satisfied the requirements of paragraph 4(a)(iii) 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 <planet-sports.online> be transferred to the Complainant.
Theda König Horowicz
Date: November 19, 2018
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