UK Based Sports Fashion Company – Registered Trademarks in India since 2015 – Domain Registered in November 2017 – Respondent merely parked the Domain Name – No Response filed by the Respondent – Complainant’s Allegation as to lack of legitimate interest and bad faith upheld – Domain Name ordered to be transferred
IN ARBITRATION IN INDRP CASE NO.1167
JD SPORTS FASHION PLC Hollinsbrook Way,
Playworth, Bury Lancashire BL9 8RR
THE REGISTRANT/ THE RESPONDENT
IN THE MATTER OF DISPUTED DOMAIN NAME: – JDSPORTS.CO.IN
ARBITRATION PANEL: – MR.S.C.INAMDAR, B.COM. LL.B., F.C.S.
DELIVERED ON THIS 9th DAY OF DECEMBER TWO THOUSAND NINETEEN AT PUNE, INDIA.
I. SUMMARISED INFORMATION ABOUT THE DISPUTE: –
COMPLAINANT JD SPORTS FASHION PLC Hollinsbrook Way, Playworth, Bury Lancashire BL9 8RR UNITED KINGDOM
RESPONDENT / REGISTRANT Doublefist Limited Wisconsin, US
DOMAIN NAME REGISTRAR Dynadot LLC 2 1 0 S Ellsworth Ave #345 San Mateo CA 944 10, US
II. CALENDAR OF MAJOR EVENTS:-
01 Arbitration case referred to me by NIXI 15.11.2019
02 Acceptance given by me 15.11.2019
03 Soft copy of complaint received 22.11.2019
04 Notice of Arbitration issued, with the period to file reply, if any, latest by 02.12.2019 22.11.2019
05 Period to file say by Respondent extended with instruction to file his say if any, latest by 06.12.2019 03.12.2019
06 Notice of closure of arbitration issued 07.12.2019
07 Award passed 09.12.2019
III PARTICULARS OF DISPUTED DOMAIN NAME & REGISTRATION:
1. Disputed domain name is ‘JDSPORTS.CO.IN1.
2. Date of registration of disputed domain name by Respondent is 16.11.2017
3. Registrar is Dynadot LLC
IV. PROCEDURE FOLLOWED IN ARBITRATION PROCEEDINGS: –
1) Arbitration proceedings were carried out as per .In Domain Name Dispute
Resolution Policy (INDRP) read with INDRP Rules of Procedure, Indian
Arbitration Act, 1996 (including amendments thereto) and Code of Civil
Procedure, wherever necessary.
2) The parties were requested to expedite their submissions so as to enable
this panel to pass award within the prescribed time frame of 60 days.
3) Copies of all communications were marked to both the parties and NIXI.
4) No personal hearing was requested / granted / held.
V. BRIEF INFORMATION OF THE COMPLAINANT: –
The Complainant in these arbitration proceedings is JD Sports Fashion PLC, which is situated in the United Kingdom. According to the Complainant it owns JD/ JD Sports brands, which have been derived from the initials of the founders – David Makin and John Warded. At present, the Complainant and its group of companies operate more than 200 stores spread over 16 countries. In August 2018 the Complainant opened its technology development center in Hyderabad, India, to offer retail experience by developing and testing various software applications and systems using web-applications, digital marketing tools, e-commerce applications etc. The
Complainant has two websites viz. www.idsports.co.uk and www.idsports.com.
The Complainant claims that it is the owner of trademarks ‘JD / JDSPORTS1 in various countries including India, the exhaustive list of which has been provided by the Complainant. In India it has registered trade mark ‘JD1 under registration No.2969783 in class 35.
Apart from registered trademarks it also owns domain names like jdsports.com, jdsports.in, jdsports.co.uk.
VI. SUMMARY OF GROUNDS OF THE COMPLAINT: –
The Complaint, inter-alia, is based on the following points, issues, representations or claims in brief:-
(A) CONTRAVENTION OF THE REGISTERED TRADEMARKS AND DOMAIN NAMES OF THE COMPLAINANT (CONTRAVENTION OF POLICY PARA 4(1) OF THE .IN DOMAIN NAME DISPUTE RESOLUTION POLICY) (INDRP) : –
i. The Complainant has furnished a copy of the registered mark in India which was registered on 21.05.2015 under number 2969783. This was much prior to the registration of the disputed domain name which was registered on 16.11.2017. Due to trademark registrations, the words JD/ JD SPORTS have been exclusively associated with the Complainant.
ii. The disputed domain name ‘JDSPORTS.CO.IN’ is bound to induce members of public and trade to believe that the Respondent has a trade connection, association, relationship or approval of the complainant, when it is not so.
iii. The distinctive and domain element in the Respondent’s domain is the word JD / JD Sports and hence the disputed domain is confusingly similar to the trade / service mark in which the Complainant has statutory and common law rights.
iv. The disputed domain name clearly incorporates the famous trademarks JD / JD Sports of the Complainant in entirety which is considered evidence of bad faith registration and use under INDRP.
(B) NO RIGHT OR LEGITIMATE INTEREST IN DISPUTED DOMAIN NAME (PARA 4fii) OF INDRP): –
i. The Complainant has not authorized or licensed or otherwise permitted the Respondent to apply for, register, use or offer for sale of the disputed domain name or any trademarks forming part thereof.
ii. The Respondent is not making any legitimate business under the disputed domain name.
iii. The Respondent’s registration of the disputed domain name is with the sole purpose to misappropriate and usurp the reputation and goodwill of the Complainant’s trademarks JD / JD Sports.
(C) REGISTRATION AND USE IN BAD FAITH (PARA 4fiii)) OF INDRP: –
i. The Respondent has fraudulently provided links to various third party e-commerce sites under the disputed domain name. It is obvious that the Respondent is making monetary gains by attracting unwary customers by misrepresenting an association with the Complainant.
ii. The very use of a domain name by someone with no connection with the Complainant suggests bad faith. (INDRP Case No.792 – TV
Sundram lyengar and Sons Pvt. Ltd. V/s Mr.Rohit Kumar, Kumar Enterprise).
(D) REMEDIES SOUGHT BY THE COMPLAINANT: –
On the above background of the Complaint and reasons described therein the Complainant has requested for TRANSFER OF DISPUTED DOMAIN
to the Complainant.
VII. RESPONDENT’S DEFENSE: –
The Respondent did not respond to the Notice of Arbitration even within the extended time.
VIII. REJOINDERS OF THE PARTIES: –
In view of non-filing of any say / reply by the Respondent, no rejoinder was called for.
IX. EVIDENCE RELtED UPON: –
This panel has, inter-alia, placed reliance upon the following evidences / details thereof, submitted by the Complainant: –
1. Copies of trademarks registered in India and in other countries in the name of the Complainant
2. Copy of printout of the whois details
3. Copies of other documents submitted with the Complaint
X. FINDINGS: –
Based on the complaint, contentions of it and annexures attached to it, this panel makes following observations: –
1. The Complainant is an owner of registered trade / service marks incorporating the word JD/ JD SPORTS in which it has legitimate interests and rights.
2. The registration of these marks is prior to the registration of the disputed domain name by the Respondent.
3. The Complainant has not authorised / licensed to the Respondent to use the word ‘JD/ JD SPORTS ” in any manner, nor the Respondent has claimed such authority having issued by the Complainant in his say.
4. The Respondent is not known by the word JD/ JD SPORTS or any resembling word to it.
5. The Respondent is not making use of disputed domain name for non-commercial or charitable purposes. On the contrary, it is evident that by providing links to third party websites, the Registrant is making monetary gains by trading on the goodwill and reputation of the Complainant.
6. The Respondent has not responded / replied to Notice of Arbitration, even the period extended suo-motu by this arbitration panel.
Based on the legal maxim ‘silence amounts to acceptance’, this panel concludes that all the submissions, allegations, statements and
claims made by the Complainant, have been accepted by the Respondent.
XI. CONCLUSION: –
On the basis of the averments in the Complaint, citations, documentary evidence and other substantiating points, this Arbitration Panel has come to the following conclusions: –
a. the disputed domain name contains registered trade I service mark of the Complainant in its entirety and is totally identical or confusingly similar to a name, trademark in which the Complainant has legitimate rights and interests.
b. the Respondent has no rights or legitimate interests in respect of the domain name. He has not been authorized, licensed / permitted to use the said domain name, nor has he been known individually or by his business by the name of the disputed domain name or any closely resembling term to it.
c. the disputed domain name is registered in bad faith by the Respondent and allowing him to continue to own the same would make injustice and loss to the Complainant as also it may pose serious threats to innocent people anywhere in the world.
d. Allowing a stranger to trade on someone else’s goodwill or reputation is an injustice on the legitimate person having spent efforts and money in building his brand, goodwill and reputation because it results in allowing unscrupulous persons to gain monetarily to the disadvantage of the person who is legitimately entitled to it.
XII. AWARD: –
On the basis of above findings on issues, foregoing discussion, conclusion and as per the remedies requested by the Complainant, this panel passes the following award: –
a. The disputed domain name JDSPORTS.CO.IN be transferred to the Complainant.
Place: – Pune, India
SOLE ARBITRATOR NATIONAL INTERNET EXCHANGE OF INDIA