WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sportsdirect.com Retail Limited v. WhoisGuard, Inc. / Phil Huggan

Case No. D2018-2576

1. The Parties

The Complainant is Sportsdirect.com Retail Limited of London, the United Kingdom, represented by Reynolds Porter Chamberlain LLP, the United Kingdom.

The Respondent is WhoisGuard, Inc. of Panama / Phil Huggan of the United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <sportsredirect.com> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2018. On November 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 12, 2018, the Registrar 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. The Center sent an email communication to the Complainant on November 13, 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 November 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 November 28, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 18, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 26, 2018.

The Center appointed Ian Lowe as the sole panelist in this matter on January 4, 2019. 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 leading sports retailer operating under the SPORTSDIRECT and SPORTSDIRECT.COM brands. It is part of the Sports Direct group of companies which includes Sports Direct International Plc, listed on the London Stock Exchange. Sports Direct was established in 1982. The online retail store at “www.sportsdirect.com” has a significant presence and is accessible globally with multiple currency options.

The Complainant is the proprietor of a substantial number of registered trademarks throughout the world comprising “sportsdirect” and “sportsdirect.com”, including United Kingdom trademark number 2597152A SPORTSDIRECT registered on August 3, 2012 and European Union trademark number 5427547 SPORTSDIRECT.COM stylized word mark, registered on September 27, 2011. The Complainant is also the registrant of over 500 domain names comprising “sportsdirect” or “sports-direct”.

The Domain Name was registered on March 8, 2018. It resolves to a webpage (the “Website”) comprising click-through links to a number of sports retailers that are competitors of the Complainant. The heading of the home page of the Website comprises “SPORTSREDIRECT.com” against a split blue and red banner whose colours appear to be identical to the red and blue colours used in the Complainant’s stylized word mark.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is identical or confusingly similar to its SPORTSDIRECT and SPORTSDIRECT.COM trademarks, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

For this Complaint to succeed in relation to the Domain Name the Complainant must prove that

(i) the 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 Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has uncontested rights in its SPORTSDIRECT and SPORTSDIRECT.COM trademarks (the “Marks”), both by virtue of its trademark registrations and as a result of the goodwill and reputation acquired through its use of the Marks over many years. The Domain Name comprises the entirety of the SPORTDIRECT.COM and SPORTSDIRECT.COM marks, with the insertion of the letters “re”. In the view of the Panel, the addition of these letters does not detract from the confusing similarity of the Domain Name to the Marks. Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant has made out a strong prima facie case that the Respondent could have no rights or legitimate interests in respect of the Domain Name. The Respondent is not authorized by the Complainant to use its Marks. The Respondent has used the Domain Name not in connection with a bona fide offering of goods or services, but for a website comprising click-through links to the websites of competitors of the Complainant. The Respondent has chosen not to respond to the Complaint or to take any steps to counter the prima facie case established by the Complainant. In the circumstances, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

In light of the nature of the Domain Name and the colours used in the banner at the top of the home page of the Website, the Panel is in no doubt that the Respondent had the Complainant and its rights in the Marks in mind when it registered the Domain Name. The home page of the Website comprises click-through links to competitors of the Complainant. The Panel is therefore in no doubt that the Respondent is using the Domain Name in a manner that takes unfair advantage of the Complainant’s well-known trademarks by attracting Internet users to the Website by creating a likelihood of confusion as to the affiliation or endorsement of the Website. The Panel considers that the obvious inference is that the use of a domain name for such activity is with a view to commercial gain and that this amounts to paradigm bad faith registration and use for the purposes of the Policy.

Accordingly, the Panel finds that the Domain Name has been registered and is being used in bad faith.

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 Domain Name <sportsredirect.com> be transferred to the Complainant.

Ian Lowe
Sole Panelist
Date: January 7, 2019