WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

JD Sports Fashion PLC v. Oouc Ucoo

Case No. D2020-1578

1. The Parties

The Complainant is JD Sports Fashion PLC, United Kingdom, represented by Urquhart-Dykes & Lord, United Kingdom.

The Respondent is Oouc Ucoo, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <jdsports.top> (the “Domain Name”) is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2020. On June 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 16, 2020, 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 June 20, 2020 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 June 22, 2020.

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 June 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 13, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 15, 2020.

The Center appointed Nicholas Smith as the sole panelist in this matter on July 26, 2020. 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 United Kingdom company founded in 1981 that is involved in the retail of sports, fashion and outdoor brands, including footwear. The Complainant operates over 700 stores in 19 territories around the world and also sells products through its various websites including “www.jdsports.com” (and similarly named national sites).

The Complainant has held a trademark registration for a mark consisting of the term JD SPORTS (the “JD SPORTS Mark”) in various jurisdictions since 2011, including a European Union trademark for the JD SPORTS Mark (registration no. 008182611) registered on December 13, 2011 for goods including footwear in class 25 and retail services relating to footwear in class 35.

The Domain Name was registered on March 31, 2020. The Domain Name is presently inactive but prior to the commencement of the proceeding resolved to a website (the “Respondent’s Website”) that purported to sell footwear to the general public under the name “www.jdsports.top”. The Respondent’s Website contains no disclaimer and makes no other reference to the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

(i) that the Domain Name is identical or confusingly similar to the Complainant’s JD SPORTS Mark;

(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and

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

The Complainant is the owner of the JD SPORTS Mark, having registered the JD SPORTS Mark in the European Union. The Domain Name is identical to the JD SPORTS Mark as it reproduces the mark and adds the generic Top-Level domain (“gTLD’) “.top”.

There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known by the Domain Name nor does the Respondent have any authorization from the Complainant to register the Domain Name. The Respondent is not making a legitimate noncommercial or fair use of the Domain Name. Rather the Respondent is using the Domain Name to resolve to a website that offers for sale footwear with the aim of misleading consumers and/or harming the reputation enjoyed by the Complainant, which does not amount to a bona fide offering of goods and services.

The Domain Name was registered and is being used in bad faith. By using the Domain Name to resolve to a website that offers competing goods, the Respondent is using the Domain Name to divert Internet users interested in the Complainant to the Respondent’s Website for commercial gain. Such conduct amounts to registration and use of the Domain Name in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

To prove this element, the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.

The Complainant is the owner of the JD SPORTS Mark, having a registration for the JD SPORTS Mark as a trademark in the European Union and various other jurisdictions.

Disregarding for the purposes of comparison the gTLD “.top” (being a technical requirement for the registration of a domain name) and the absence of a space between “jd” and “sports”, the Domain Name is identical to the JD SPORTS Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:

“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 your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(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 Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the JD SPORTS Mark or a mark similar to the JD SPORTS Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial or fair use.

The Respondent has used the Domain Name to operate a website that operates under the name JD SPORTS and offers goods in direct competition with the Complainant. The use of a domain name that is identical to the Complainant’s JD SPORTS Mark to resolve to a website offering goods in direct competition with the Complainant does not, on the face of it, amount to a bona fide offering of goods and services.

The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Name under the Policy. In the absence of such a Response, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(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 trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 (Policy, paragraph 4(b)).

The Panel finds that the Respondent was aware of the Complainant and its reputation in the JD SPORTS Mark at the time the Domain Name was registered. The Respondent has provided no explanation, and none is immediately obvious, why an entity would register a domain name identical to the JD SPORTS Mark and redirect it to a website offering footwear in direct competition with the Complainant unless there was an awareness of and an intention to create a likelihood of confusion with the Complainant and its JD SPORTS Mark. The registration of the Domain Name in awareness of the JD SPORTS Mark and in the absence of rights or legitimate interests amounts under these circumstances amounts to registration in bad faith.

The Respondent has used the Domain Name, identical to the JD SPORTS Mark, to offer footwear in competition with the Complainant. In these circumstances where the Respondent has offered no plausible explanation for the registration of the Domain Name, the Panel finds that that the Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the JD SPORTS Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website. (Policy, paragraph 4(b)(vi)).

Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under paragraph 4(a)(iii) 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 Domain Name <jdsports.top> be transferred to the Complainant.

Nicholas Smith
Sole Panelist
Date: August 3, 2020