FGL Sports Ltd. v chen pian pian, wu han pian pian wang luo ke ji you xian

WIPO Case No. D2025-1212

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

FGL Sports Ltd. v. chen pian pian, wu han pian pian wang luo ke ji you xian
gong si

Case No. D2025-1212

1. The Parties

The Complainant is FGL Sports Ltd., Canada, represented by Norton Rose Fulbright Canada LLP, Canada.

The Respondent is chen pian pian, wu han pian pian wang luo ke ji you xian gong si, China.

2. The Domain Name and Registrar

The disputed domain name <sportchekstore.com> is registered with Gname.com Pte. Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2025. On March 25, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 26, 2025, 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 March 26, 2025, 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 in English on March 31, 2025.

On March 26, 2025, the Center informed the Parties in Chinese and English, that the language of the submitted its request that English be the language of the proceeding.

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 in Chinese and English of the Complaint, and the proceedings commenced on April 1, 2025. In accordance with the Rules, paragraph 5, the due date for Response was April 21, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 22, 2025.

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The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on April 30, 2025. 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 Canadian retailer of a broad variety of clothing, shoes, and sporting goods and Complainant states that through decades of using the SPORTCHEK marks, these marks are among the most recognized brands in Canada and beyond, referring to Brand Finance’s Canada 100 (2024) ranking, valuing SPORTCHEK as Canada’s 87th of 100 strongest brands.
services. The Complainant’s SPORTCHEK-branded stores sell thousands of different products ranging from
clothing, footwear, equipment, bags and electronics related to sport and physical exercise. In 1991, the
Complainant acquired the company Sport Chek International Ltd. Since this acquisition, the Complainant has

been using the SPORTCHECK brand in association with over 190 retail stores across Canada. The

In 2011, the Complainant was acquired and has since been owned by Canadian Tire Corporation, Limited
(“CTC”), one of Canada’s largest retailers. While the Complainant owns and operates the SPORTCHEK
brand, the Complainant is entirely owned by CTC.

The Complainant is the owner of several registrations for SPORTCHEK in Canada, including, but not limited to registration No. TMA578781 (word mark), with a registration date of April 2, 2003; and registration No. TMA641931 (device mark), with a registration date of June 14, 2005. In addition to its brick-and-mortar retail stores, the Complainant operates its online business mainly via its website at “ registered on October 18, 2000, and also actively promotes and advertises its goods and services though social media platforms such as Facebook, Instagram, X, YouTube and LinkedIn.

The disputed domain name was registered on March 3, 2025, and is therefore of a considerably later date than the Complainant’s SPORTCHEK marks. The Complainant provides evidence that the disputed domain name was used to redirect Internet users to the domain name <sportdealsstore.com>, which allegedly hosted a website purportedly selling an array of clothing products and displaying a phone number, linked to the Complainant’s parent company CTC. However, the Panel notes that on the date of this Decision, the disputed domain name directs to a website displaying an error message.

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 it is the owner of various registered trademarks for SPORTCHEK.
The Complainant asserts that the disputed domain name is confusingly similar to the abovementioned
trademarks since it incorporates such marks in their entirety, adding only the descriptive word “store”. The
Complainant essentially contends that the Respondent is not affiliated with nor authorized by the
Complainant in any way and that the Respondent has no rights or legitimate interests in respect of the
disputed domain name. The Complainant also contends that the Respondent attempted to impersonate the
Complainant with the intent to trade on the Complainant’s recognition and goodwill and that by impersonating
the Complainant, the Respondent cannot demonstrate a bona fide offering of goods or services. The
Complainant also argues that the Respondent’s efforts to pass itself off as the Complainant and that by using
the disputed domain name, the Respondent was intentionally targeting the Complainant and its
SPORTCHEK marks. The Complainant alleges that such use made of the disputed domain name does not

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confer any rights or legitimate interests and that it proves that the Respondent has registered and used the
disputed domain name in bad faith.

Additionally, the Complainant also refers to a prior UDRP procedure (namely FGL Sports Ltd. v. zheng bin, WIPO Case No. D2025-0683) which was still pending at the time of filing of the Complaint. In this regard, the Complainant particularly points out that the disputed domain name in this case redirects users to the domain name <sportdealsstore.com>, which hosts a website displaying the Complainant’s SPORTCHEK marks, and the CTC Customer Relations phone number is shown in the footer of the website as an attempt to deceive customers into thinking the website is operated by, or affiliated with the Complainant or its parent company, CTC. The Complainant particularly contends that this website is identical to the website which was hosted at the domain name <sportchekca.com>, i.e., the domain name involved in prior case FGL Sports Ltd. v. zheng bin, WIPO Case No. D2025-0683, which, the Panel notes, was ordered to be transferred to the Complainant on April 18, 2025 by the respective panel in that proceeding. Based on the abovementioned facts and on the additional fact that a parallel case against the Respondent concerning the domain name <sportcheksale.com>, with a similar factual background, is currently pending under FGL Sports Ltd. v. chen pian pian, wu han pian pian wang luo ke ji you xian gong si, WIPO Case No. D2025-1210, the Complainant also argues that the Complainant has engaged in a pattern of bad faith conduct.

B. Respondent

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

6. Discussion and Findings

6.1 Preliminary Issue: Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.

The Complaint was filed in English. The Complainant requested that the language of the proceeding be English for several reasons, including the fact that the Respondent is allegedly capable of conducting business in English for the following reasons: the disputed domain name itself, which contains “sportchek”, is in English; the website previously hosted at the disputed domain name was available in English and purported (falsely) to represent a Canada-wide organization with a head office in Calgary, Alberta, Canada; the contents of the website are only available in English; and the listed items “for sale” were shown in Canadian dollars (CAD). Additionally, the Complainant also argues that the Complainant will be disadvantaged if it is required to translate its Complaint.

In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1).

Upon review of the available record, the Panel notes that the Respondent has not cooperated in any way in this proceeding (even though it was notified of the language of the proceeding and the commencement of the proceeding in Chinese and English) and has not objected to the use of the English language, and the Panel also notes the fact that the website at the disputed domain name seems to have been exclusively in English. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.

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6.2 Substantive Issues

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 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 entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms here, “store”, may bear on assessment of the second and third
elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between

the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

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 Panel notes, on the basis of the evidence filed by the Complainant, that the Respondent previously used
the disputed domain name to host a web-shop selling an array of clothing products. The Panel specifically
notes the provision of CTC’s phone number shown on the website. The Panel finds that by displaying CTC’s
phone number, the Respondent has an intention to pass itself off as the Complainant or at least connected to
the Complainant. Panels have held that the use of a domain name for illegitimate activity here, claimed
impersonation/passing off can never confer rights or legitimate interests on a respondent.
WIPO Overview 3.0, section 2.13.1.

However, the Panel notes that on the date of this Decision, the disputed domain name directs to an inactive webpage. In this regard, the Panel finds that holding a domain name passively, without making any use of it, also does not confer any rights or legitimate interests in the disputed domain name on the Respondent in this case (see in this regard earlier UDRP decisions such as Bollore SE v. 赵竹飞 (Zhao Zhu Fei), WIPO Case No. D2020-0691; and Vente-Privee.Com and Vente-Privee.com IP S.à.r.l. v. 崔郡 (jun cui), WIPO Case No. D2021-1685).

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Finally, the Panel also finds that the nature of the disputed domain name, being confusingly similar to the
Complainant’s trademarks and consisting only of the Complainant’s trademark combined with the descriptive
word “store”, carries a risk of implied affiliation and cannot constitute fair use, as it effectively impersonates
the Complainant and its products or suggests sponsorship or endorsement by the Complainant (see

WIPO Overview 3.0, section 2.5.1).

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 registered a domain name which is confusingly targeted the Complainant’s prior well-known trademarks for SPORTCHEK. This finding is incidentally further confirmed by the fact that the Respondent apparently attempted to misrepresent itself as the Complainant or as connected to the SPORTCHEK brands and products through its use of the website which was previously linked to the disputed domain name by displaying the CTC’s phone number. The Panel finds that this creates a presumption of bad faith. The Panel also notes that the Complainant’s trademarks in this case predate the registration date of the disputed domain name by many years, and that the Respondent could not have been reasonably unaware of them. Furthermore, the Panel notes that even a cursory Internet search at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainant owned prior rights in its trademarks for SPORTCHEK. In the Panel’s view, the above elements clearly indicate bad faith on the part of the Respondent, and the Panel therefore finds that it has been demonstrated that the Respondent registered the disputed domain name in bad faith.
similar to the Complainant’s intensely used and distinctive trademarks, see in this regard also previous
decisions under the Policy which have recognized the Complainant’s rights in its marks, such as FGL Sports
Ltd. v. chen ming juan 18707152476, WIPO Case No. D2025-0684. Furthermore, based on the evidence
filed by the Complainant concerning its brand rankings, turnover and general business operations referenced
above, the Panel accepts that the Complainant’s mark is well-known (at least in Canada). Therefore, the

As to use of the disputed domain name in bad faith, the Complainant provides evidence that the disputed domain name, which is inherently misleading, previously directed to an active website which showed an intent on the part of the Respondent to misleadingly pass it off as the Complainant’s website. The Panel concludes from these facts that the Respondent is intentionally attracting Internet users for commercial gain to such website, by creating consumer confusion between the website associated with the disputed domain name and the Complainant’s trademarks. This constitutes direct evidence of the Respondent’s bad faith under paragraph 4(b)(iv) of the Policy. The Panel therefore finds that it has been demonstrated that the Respondent has used and is using the disputed domain name in bad faith.

The Panel notes that on the date of this Decision, the disputed domain name directs to an inactive website. Panels have found that the non-use of a domain name (including a blank or “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
trademarks, and the composition of 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.

The Panel finds that the Complainant has established the third element of the Policy.

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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 <sportchekstore.com> be transferred to the Complainant.

/Deanna Wong Wai Man/
Deanna Wong Wai Man
Sole Panelist
Date: May 14, 2025