SPORT2000 Sleeps Too Long on its Rights
In a recent domain name dispute over the domain, www.SPORT2000.com, a single member Panel denied a request to transfer. See Sport 2000 Brand AG v. sport2000 (WIPO Case No. D2012-2449, January 28, 2013). Complainant Sport Brand AG owns many trade marks involving the words “Sport 2000” and since 1988, has used them in the sport retail industry. Sport Brand AG claims to have more than 3,500 retail outlets in 25 countries. Complainant operates a domain at www.Sport2000International.com. The disputed domain was registered in 1998. Respondent provided a response and was represented pro se.
Paragraph 4(a) of the ICANN UDRP Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith.
Regarding the first element, the Panel provided a short yet instructive review of the facts.
The disputed domain name contains the word elements of the Complainant’s trade mark in their entirety. The difficulty for the Complainant in this case is that each of the trade mak registrations of which it provides evidence are for those word elements in a particular script or presentation and there is some question as to whether the Complainant has acquired trade mark rights in the combination of generic words “Sport 2000” itself. The only evidence that the Complainant offers of acquired rights in relation to that combination of generic words are: its use as part of a range of domain name registrations; and the size and extent of its business operations in which, presumably, the word combination is often used, at least verbally, without the design elements of the trade mark. Given the likely extent of that use of the word combination itself, the Panel finds, on balance, that the disputed domain name is identical or confusingly similar to the disputed domain name.
As a result, the Panel found that Complainant was able to satisfy ¶4(a)(i) of the Policy.
Complainant hit a road block on the second prong, wherein the Panel noted “This task is rendered more crucial in cases, such as the present one, in which the Complainant’s trade mark consists of a combination of generic words applied to the promotion of goods or services with which they are almost automatically associated.” The Panel acknolwedged that a using a website with generic links for a PPC (pay-per-click) means can be permissble. Further, the Panel found that Complainant presented insufficient evidence to rebut Respondents assertion that it could not have known about Complainant’s rights prior to registration. Another huge problem for Complainant was the length of time it waited to bring the action. Ultimately, the Panel found that Complainant was unable to satisfy ¶4(a)(ii) of the Policy.
As a result, the Panel DENIED Complaint’s request to transfer the disputed domain.