DECISION

 

Wilkes-Barre Rugby Football Club, Inc. v. ZULKIFLI ZULKIFLI

Claim Number: FA2309002061054

 

PARTIES

Complainant is Wilkes-Barre Rugby Football Club, Inc. ("Complainant"), represented by Tony VanScoy, Pennsylvania, USA. Respondent is ZULKIFLI ZULKIFLI ("Respondent"), Indonesia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wilkesbarrerugby.com>, ('the Domain Name') registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Dawn Osborne as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on September 9, 2023; Forum received payment on September 9, 2023.

 

On September 11, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <wilkesbarrerugby.com> Domain Name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On September 12, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 2, 2023 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@wilkesbarrerugby.com. Also on September 12, 2023, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On October 3, 2023 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dawn Osborne as Panelist.

 

On October 3, 2023 the Panel made a procedural Order requesting further evidence from the Complainant by October 13, 2023 and giving the Respondent seven days to comment. The Complainant provided further evidence on the due date. No comments were received from the Respondent on this further evidence.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant's contentions can be summarised as follows:

 

Complainant has common law rights in the WILKES-BARRE RUGBY FOOTBALL CLUB INC mark based upon use of the mark in commerce for rugby football club services for over fifty years since 1973.

 

The Domain Name is identical to the distinctive part of the Complainant's mark for the purposes of the Policy coupled only with the gTLD .com. Complainant previously owned the Domain Name from 2003 until 2020 and used the Domain Name for its web site until the Domain Name expired and Respondent acquired it. 

 

Accordingly Respondent does not have rights or legitimate interests in the Domain Name. The Domain Name is currently being used for gambling advertisements nothing to do with the meaning of the Domain Name which refers to the Complainant. Respondent registered and uses the Domain Name in bad faith for commercial gain.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

C. Additional Submissions

The Complainant did not make further submissions, but provided further evidence of the common law rights in its name which is often abbreviated to WILKES-BARRE and WILKES-BARRE RUGBY in use, and evidence of the fact that it had previously owned the Domain Name through its authorised representative.

 

FINDINGS

Complainant has common law rights in the WILKES-BARRE RUGBY FOOTBALL CLUB INC mark, often abbreviated to WILKES-BARRE RUGBY and WILKES-BARRE, based upon use of the mark in commerce for rugby football club services for over fifty years since 1973.

 

Complainant previously owned the Domain Name from 2003 until 2020 when the Domain Name expired and the Respondent acquired it.

 

The Respondent is currently using the Domain Name for gambling advertisements.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

Paragraph 4(a) of the 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.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint").

 

Identical and/or Confusingly Similar

Complainant has common law rights in the mark WILKES-BARRE RUGBY FOOTBALL CLUB INC. and its abbreviations WILKES-BARRE and WILKES-BARRE RUGBY based upon use of the mark in commerce for rugby football club services for over fifty years.

 

The Domain Name consists of the  Complainant's WILKES-BARRE RUGBY common law trade mark, merely omitting its hyphen and adding the gTLD .com.

 

The omission of a hyphen in a protected mark is irrelevant when determining the confusing similarity of a disputed domain name. See MTD Products Inc v ICS Inc, FA 1721505 (Forum Apr. 18, 2017) (holding that "[t]he removal of the hyphen [from complainant's TROY-BILT mark in the disputed domain name] is, like most all embedded punctuation, insignificant"). 

 

The gTLD .com does not serve to distinguish the Domain Name from the Complainant's WILKES-BARRE RUGBY mark. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).

 

Accordingly, the Panel holds that the Domain Name is identical for the purpose of the Policy to a mark in which the Complainant has rights.

 

Rights or Legitimate Interests

The Respondent is not authorised by the Complainant and does not appear to be commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).

 

The Respondent has used the Domain Name for gambling advertisements which is not a bona fide offering of goods and services or a legitimate non commercial or fair use. See Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent's use of the complainant's LIFESTYLE LOUNGE mark to redirect Internet users to respondent's own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Spike's Holding, LLC v. Nexperian Holding Limited, FA 1736008 (Forum July 21, 2017) ("Using a confusingly similar domain to display unrelated content can evince a lack of a bona fide offering of goods or services or legitimate noncommercial or fair use… The Panel therefore finds that Respondent's unrelated use of the <finishnline.com> domain name evinces a lack of rights and legitimate interests under Policy ¶ 4(c)(i) & (iii)."). See also Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) ("Respondent's use of .. domain name resolves to a site containing … advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.").

 

The Respondent has not answered this Complaint or offered any explanation or evidence to rebut the prima facie case evidenced by the Complainant herein.

 

As such the Panel finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

The Domain Name has been pointed to a page bearing gambling advertisements for commercial gain, disrupting the Complainant's business. See Allianz of AM. Corp v Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use where the respondent was diverting Internet users searching for the complainant to its own website). See MySpace, Inc. v. Myspace Bot, FA 672161 (Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant's website to its own website for commercial gain because the respondent likely profited from this diversion scheme).

 

As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and used in bad faith primarily for the purposes of profit and has satisfied the third limb of the Policy.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <wilkesbarrerugby.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Dawn Osborne, Panelist

Dated: October 22, 2023