WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dominic Thiem v. David Pakozdi

Case No. D2020-1631

1. The Parties

The Complainant is Dominic Thiem, Austria, represented by Schonherr Rechtsanwalte GmbH, Austria.

The Respondent is David Pakozdi, Hungary.

2. The Domain Name and Registrar

The disputed domain name <dominicthiem.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2020. On June 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 23, 2020, the Registrar transmitted by email to the Center its verification response:

(a) confirming it is the Registrar for the disputed domain name;

(b) disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint;

(c) indicating the language of the registration agreement is English;

(d) confirming (if confirmation be needed) the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to the disputed domain name.

The Center sent an email communication to the Complainant on June 29, 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 July 1, 2020.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Policy, 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 July 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 4, 2020. On August 13, 2020, the Center sent an email communication to the Respondent indicating that an administrative oversight had occurred at the time of Complaint notification, and inviting the Respondent to indicate its intention whether to participate in the administrative proceeding. The Respondent did not submit any reply.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on September 2, 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 professional tennis player who, at the time the Complaint was submitted, was ranked No. 3 in the world by the Association of Tennis Professionals (ATP).

In 2011, he was ranked world No. 2 junior by the International Tennis Federation. That year, amongst other things, he played in the French Open Boys’ final and won the 2011 Orange Bowl. In 2015, the Complainant won his first ATP title – the 2015 Open Nice Cote d’Azur in France. He reached his first Grand Slam semi-final in 2016 at the French Open.

Prior to last weekend, when he won the US Open, the Complainant had won 16 ATP Tour singles titles and reached three Grand Slam Finals: the French Open in 2018 and 2019, and the Australian Open in January 2020.

The Complainant has had sponsorship or endorsement arrangements in place since 2011, beginning with Adidas. When the Complaint was filed, his sponsorships, endorsements or co-operations included Adidas, Babolat, Red Bull, Bank Austria, Rolex, and SkySport.

The Complainant owns European Union Trademark (EUTM) No. 016761132, DOMINIC THIEM, in respect of a range of goods and services in International Classes 25, 28, 32, and 41. The application for registration was filed on May 24, 2017 and registered on September 12, 2017.

According to the Registrar, the Respondent registered the disputed domain name on January 24, 2011. Since then, the disputed domain name has resolved to a website which purports to be a “fan site”.

Until earlier this year, the webpage featured the Complainant’s name and photograph playing a tennis stroke, a paragraph of description and a table of essential details such birth date, age, hand, preferred surface and the like. The footer included links to a number of similarly rudimentary sites to other tennis players of similar age including Andrew Whittington, Danka Kovinic, Nikola Milojevic, and Estelle Cascino. Until recently, the content of the website remained essentially unchanged. For a period in 2014, the message:

“If you were the administrator of this website, please send a message to us. Click HERE!”

appeared in red across the top of the page. The website, and those of the tennis players listed in the footer, appear to have included banner advertisements in prominent positions. These are displayed only as blank boxes in the pages captured by the Wayback Machine at <archive.org> so it is not possible to identify what was being advertised at the time.

The content of the website changed recently. Following that change, the webpage has consisted of six bullet points of essential statistics about the Complainant and the message:

“Do you want to be the new administrator of this fanpage? Send an email to: dologvan gmail com The price of the domain: 3500 USD.”

The disputed domain name is also listed on <sedo.com> as for sale for a price of EUR 4,200.

5. Discussion and Findings

No response has been filed. The Complaint has been sent, however, to the Respondent¹ at the physical and electronic coordinates confirmed as correct by the Registrar in accordance with paragraph 2(a) of the Rules. Bearing in mind the duty of the holder of a domain name to provide and keep up to date correct WhoIs details, therefore, the Panel finds that the Respondent has been given a fair opportunity to present his or its case.

When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:

(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

The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.

There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.

The Complainant has proven ownership of the registered trademark, EUTM No. 016761132 for DOMINIC THIEM.

As the Complainant points out, it is not relevant at this stage of the inquiry (which is essentially a standing requirement) that the trademark was registered after the Respondent registered the disputed domain name. See, e.g., Esquire Innovations, Inc. v. Iscrub.com c/o Whois Identity Shield; and Vertical Axis, Inc, Domain Adminstrator, WIPO Case No. D2007-0856. That consideration may become relevant, however, under other requirements of the Policy.

The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. See, e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11.

Disregarding the “.com” gTLD, the disputed domain name consists of the Complainant’s registered trademark alone. Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:

(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.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., WIPO Overview 3.0, section 2.1.

The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it.

The disputed domain name is plainly not derived from the Respondent’s name. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name.

To the extent that the website might be thought to be a genuine “fan site”, the Complainant points out that panels have been reluctant to accept there is a right or legitimate interest to operate a genuine fan site using a domain name identical to a complainant’s trademark due to the risks of misunderstanding the website as an official or endorsed site. See, e.g., WIPO Overview 3.0, section 2.7.2.

It is unnecessary, however, to embark on that inquiry in this case. As noted in section 4 above, the Respondent is not hosting any fan-related material, and is moreover offering the disputed domain name for sale for USD 3,500 or EUR 4,200. As panels tend to assess rights or legitimate interests at the date the Complaint was filed (see WIPO Overview 3.0, section 2.11), that offer for sale is a strong indicator, as the Complainant contends, that the website is not a genuine “fan site”. In the present case, there are also additional considerations. First, the Respondent appears also to have incorporated pay-per-click advertising on earlier versions of the website. Secondly, the content of the website itself as a “fan site” in the past, if it can be called that, has been quite rudimentary. A website which has only limited content might not necessarily lack bona fides, for example, if it had been operation for a limited time. However, that is not the case here where the website was (or appears to have been) largely static for almost nine years. The websites linked to the other tennis players listed in the footer are similarly rudimentary.

Taken together, these factors support the Complainant’s allegation that the website is not a genuine “fan site”.

Consequently, having regard to all the considerations referred to above, the Panel finds that the Complainant has established a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name. The basis on which the Respondent has adopted the disputed domain name, therefore, calls for explanation or justification. The Respondent, however, has not sought to rebut that prima facie case or advance any claimed entitlement. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.

C. Registered and Used in Bad Faith

Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see, e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.

Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.

Typically, the registration of a domain name will not be in bad faith where it was registered long before the complainant acquired its trademark. That general rule, however, is subject to important qualification. So for example as the learned panelist explained in ExecuJet Holdings Ltd. v. Air Alpha America, Inc., WIPO Case No. D2002-0669:

“This finding does not necessarily dispose of the matter. For the purposes of the Policy, a domain name registration can have been undertaken in bad faith even if the trade marks rights at which such bad faith was directed arose after the registration of the domain name. This might be the case where a registrant speculated on an impending merger between companies that would create a new name combining in whole or in part the names of the merger partners. Another example concerns the situation where a registrant based its registration of the domain name on its insider knowledge of the intentions of a (former) business partner or employer in relation to the latter's development of a new trademark. From the intent of the Policy, it is clearly irrelevant whether a registrant intended to abuse an existing trademark right or one which that registrant specifically knew would arise.” (emphasis supplied)

See also Pacific-10 Conference v. Kevin Lee, WIPO Case No. D2011-0200.

Similarly, the record in this case supports a finding that the Respondent was aware of the Complainant and speculated that a domain name based on his name would become valuable.

As the Complainant contends, it appears to be “simply inconceivable” that the Respondent registered the disputed domain name – which is the Complainant’s name and not in any recognisable way derived from the Respondent’s name – without being aware of its confusing similarity to the Complainant especially as the disputed domain name began resolving to a website about the Complainant, as a tennis player, shortly afterwards.

The publication of websites in essentially the same format about the other tennis players linked in the footer to the webpage to which the disputed domain name resolved further indicates knowledge and awareness of the sport and emerging or potential, future stars and if held by the Respondent is evidence of a pattern of conduct.

In these circumstances, the Panel finds that the disputed domain name was registered and, if for no other reason than the offer for sale, used in bad faith.

Accordingly, the Complainant has established all three requirements under the Policy.

6. 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, <dominicthiem.com>, be transferred to the Complainant.

Warwick A. Rothnie
Sole Panelist
Date: September 21, 2020

¹ For the purposes of this decision, references to the Respondent should be understood as references to Mr. Pakozdi as identified by the Registrar unless the context requires the contrary.