Edmonton Oilers Hockey Corp. v account receivable

WIPO Case No. D2024-4766

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Edmonton Oilers Hockey Corp. v. account receivable

Case No. D2024-4766

1. The Parties

The Complainant is Edmonton Oilers Hockey Corp., Canada, represented by Greenberg Traurig, LLP,

United States of America (“US”).

The Respondent is account receivable, US.

2. The Domain Name and Registrar

The disputed domain name <edmonstonoilers.com> is registered with Squarespace Domains II LLC (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2024. On November 19, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 19, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Redacted for Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on November 20, 2024, 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 November 21, 2024.

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 November 22, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 12, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 13, 2024.

page 2

The Center appointed Dawn Osborne as the sole panelist in this matter on December 18, 2024. 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 owns and operates the professional ice hockey team EDMONTON OILERS which was formed in 1972 in the National Hockey League.

The Complainant is the owner of several trademark registrations for OILERS and EDMONTON OILERS, including the following:

- United States trademark registration No. 1,567,617 for OILERS (word mark), registered on November 21,
1989, in class 41;
- United States trademark registration No.1,566,457 for OILERS (figurative mark), registered on November
14, 1989, in class 41,
- United States trademark registration No. 2,840,696 for OILERS (figurative mark), registered on May 11,
2004, in class 25;
- Canada trademark registration No. TMA328,864 for EDMONTON OILERS (word mark), registered on June
19, 1987, in classes 6, 11, 16, 21, 32;
- Canada trademark registration No. TMA425,426 for EDMONTON OILERS (word mark), registered on
March 18, 1994, in class 41;
- Canada trademark registration No. TMA330,917 for EDMONTON OILERS (word mark), registered on

August 14,1987, in classes 5, 9, 11, 12, 14, 16, 18, 20, 21, 24, 25, 26, 28, 30, 34.

The Complainant operates its website at “

The disputed domain name was registered on January 26, 2024, which points to a holding page featuring the disputed domain name and the words “We’re under construction. Please check back for an update soon”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that:

The Complainant is the owner of, inter alia, the mark EDMONTON OILERS registered as detailed above.

The disputed domain name registered in 2024 is confusingly similar for the purposes of the Policy to the Complainant’s mark, adding the single letter “s” and the generic Top-Level Domain (“gTLD”) “.com” neither of which prevents confusing similarity between the disputed domain name and the Complainant’s mark. The disputed domain name is obviously intended to be a typosquatting registration differing by one letter “s” from the Complainant’s domain name <edmontonoilers.com>.

The Respondent is not commonly known by the disputed domain name and has not been authorised by the Complainant to use its mark. The disputed domain name points to a holding page but is not being otherwise used so there has been no bona fide offering of goods and services or legitimate noncommercial fair use.

The Respondent has no rights or legitimate interests in the disputed domain name.

page 3

The Respondent has been the subject of an adverse decision Edmonton Oilers Hockey Corp. v. Accounts Receivable, edmonstonoilers, WIPO Case No. D2024-2186 under the UDRP concerning a very similar domain name, <ebmontonoilers.com>, registered on the same day as the disputed domain name by the registrant “Accounts receivable” with similar false contact and mail exchange (“MX”) server details which also was intended to be a typosquatting registration differing by only one letter from the Complainant’s domain name, and which also pointed to a holding page, demonstrating a pattern of bad faith activity.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The Panel finds both the Complainant’s OILERS and EDMONTON OILERS marks are recognizable within the disputed domain name as only a single letter “s” has been added as a misspelling. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7 and 1.9.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The Respondent is not commonly known by the disputed domain name and has not been authorised by the offering of goods or services or legitimate noncommercial or fair use.

page 4

The disputed domain name differs from the Complainant’s trademark and domain name by a single letter “s”
and the disputed domain name appears intended to be typosquatting registration, an indication of the
Respondent’s knowledge of the Complainant’s mark and lack of rights or legitimate interests in the disputed
domain name. The disputed domain name is nevertheless very similar to the Complainant’s mark and the

Internet users can hardly notice such misspelling in the disputed domain name.

Considering the record, the Panel finds that it is more likely than not that the Respondent has supplied false
contact details to the WhoIs register which demonstrates a lack of rights or legitimate interests. WIPO

Overview 3.0, section 2.5.3.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the Respondent has not used the disputed domain name other than for a holding page.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

Panels have found that the non-use of a domain name (including a “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness and reputation of the Complainant’s trademark, and the composition of the disputed domain name intended to be a typosquatting registration, and the false or

incomplete contact details provided by the Respondent when registering the disputed domain name, and
finds that in the circumstances of this case the passive holding of the disputed domain name does not

prevent a finding of bad faith under the Policy.

Typosquatting is commonly held to be bad faith per se showing knowledge of a complainant’s mark. WIPO
Overview 3.0, section 3.2.1

The Respondent appears to have registered another domain name not the subject of these proceedings containing a misspelling of the Complainant’s trademark intended to be a typosquatting registration, pointing to a holding page and registered on the same day as the disputed domain name as “Accounts receivable” with similar false contact and MX server details demonstrating that the Respondent is engaging in a pattern of bad faith activity.

Further the high likelihood that the Respondent has submitted false contact details to the WhoIs database indicates bad faith. WIPO Overview 3.0, section 3.2.1.

The Panel finds that the Respondent registered and is using the disputed domain name in bad faith, and that the Complainant has established the third element of the Policy.

page 5

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 disputed domain name <edmonstonoilers.com> be transferred to the Complainant.

/Dawn Osborne/
Dawn Osborne
Sole Panelist
Date: December 26, 2024