FGL Sports Ltd. v pan yu

WIPO Case No. D2025-0797

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

FGL Sports Ltd. v. pan yu

Case No. D2025-0797

1. The Parties

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

The Respondent is pan yu, China.

2. The Domain Name and Registrar

The disputed domain name <sportchekca.shop> (the “Disputed Domain Name”) 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 registrar verification in connection with the Disputed Domain Name. On February 27, 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 February 27, 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 February 28, 2025.

On February 27, 2025, the Center informed the Parties in Chinese and English, that the language of the Registration Agreement for the Disputed Domain Name (the “Registration Agreement”) is Chinese. The following day, the Complainant requested English to be the language of the proceeding. The Respondent

did not submit any comment on the Complainant’s submission.

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”).

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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 March 6, 2025. In accordance with the Rules, paragraph 5, the due date for Response was March 26, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 14, 2025.

The Center appointed Peter J. Dernbach as the sole panelist in this matter on April 21, 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

Founded in the 1970s, the Complainant is a Canadian company primarily engaged in the retail business. In 2011, the Complainant was acquired by, and has since been owned by Canadian Tire Corporation, Limited (also commonly known by its acronym “CTR”, which stands for “Canadian Tire Retail”) (Complaint Annexes 4

and 5). The Complainant currently operates over 190 retail stores across Canada under the “Sportchek” brands by Brand Finance (Complaint Annex 9).
brand, which it acquired in 1991, offering a wide range of sporting apparel and equipment. In addition to its
physical retail operations, the Complainant has since 2001 been running an e-commerce platform through its

domain name <sportchek.ca>, registered on October 18, 2000, to sell sporting goods online (Complaint

As of the date of this Decision, the Complainant holds the following valid trademarks registered in Canada
(each a “Sportchek Mark” and collectively the “Sportchek Marks”) (Complaint Annex 3):

(i)        Registration No. TMA578781, registered on April 2, 2003, for the word mark SPORTCHEK, covering goods and services in classes 8, 9, 11, 12, 14, 16, 20, 22, 25, 28, and 35;

(ii)       Registration No. TMA598371, registered on December 23, 2003, for the word mark SPORTCHEK.CA, covering services in class 35;

(iii)      Registration No. TMA641931, registered on June 14, 2005, for the figurative mark SPORTCHEK, covering goods and services in classes 4, 8, 9, 11, 12, 18, 20, 21, 22, 24, 25, 28, and 35;

(iv)      Registration No. TMA613263, registered on June 21, 2004, for the figurative mark SPORTCHEK SPORTCHEK.CA, covering services in classes 35 and 42; and

(v)       Registration No. TMA613172, registered on June 18, 2004, for the figurative mark SPORTCHEK.CA, covering services in classes 35 and 42.

The Disputed Domain Name was registered on February 13, 2025 (Complaint Annex 1), and previously resolved to a website (the “Respondent’s Website”) until no later than March 6, 2025, when a DNS resolution error occurred. While active, the Respondent’s Website appeared to sell sneakers priced in Canadian dollars, and listed “[…][email protected]” as the customer service contact email address (Complaint Annex 10).

The Respondent, according to the information provided by the Registrar, appears to be an individual with an address located in China.

5. Parties’ Contentions

A. Complainant

The Complainant requests that the Disputed Domain Name be transferred to the Complainant, arguing that it has met all the elements required under paragraph 4(a) of the Policy, as summarized below:

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(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the

Complainant has rights.

The Complainant asserts that the Disputed Domain Name incorporates its trademarks, SPORTCHEK and Marks. The Complainant argues that the addition of the element “ca” immediately following “sportchek” and the use of “.shop” in the Disputed Domain Name do not prevent a finding of confusing similarity. On the contrary, the Complainant believes that these elements only increase the likelihood of confusion.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The Complainant asserts that the Respondent has not been authorized or licensed by the Complainant to use the Sportchek Marks and denies any affiliation with the Respondent. Furthermore, the Complainant points out the absence of evidence showing that the Respondent was commonly known by the Disputed Domain Name prior to its registration. The Complainant claims that the Respondent has never made bona fide use of the Disputed Domain Name. Instead, the Complainant contends that the Respondent used the Disputed Domain Name to fraudulently impersonate the Complainant, an illicit activity that can neither confer any rights or legitimate interests on the Respondent nor be considered bona fide use.

For these reasons, the Complainant argues that the Respondent has no rights or legitimate interests in the

Disputed Domain Name.

(iii) The Disputed Domain Name has been registered and is being used in bad faith.

The Complainant argues that, given the fact that the Disputed Domain Name was registered decades after the Sportchek Marks had been registered and used, it is highly unlikely that the Respondent was unaware of the Sportchek Marks when registering the Disputed Domain Name. The Complainant believes that the incorporation of the Sportchek Marks in their entirety into the Disputed Domain Name is indicative of the Respondent’s bad faith. Additionally, the Complainant points to the Respondent’s Website, which appeared to sell sporting goods and listed a contact email address containing the acronym of the Complainant’s parent company. This, the Complainant argues, was a scheme to fraudulently pass off and impersonate the Complainant, further evidence of bad faith.

For these reasons, the Complainant contends that the Disputed Domain Name has been registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

6.1. Language of the Proceeding

Notwithstanding that Chinese is the language of the Registration Agreement, the Panel, in exercising its
discretion under paragraph 11(a) of the Rules, determines that the language of the proceeding should be
English, after considering all relevant circumstances as described below.

Paragraph 11(a) of the Rules provides that, “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” In addition, paragraphs 10(b) and 10(c) of the Rules require the Panel to “ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case”, and to “ensure that the administrative proceeding takes place with due expedition.”

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The Panel acknowledges that the Registration Agreement is in Chinese. However, it also notes that the Complaint was filed in English, and the Complainant has requested that English be the language of the proceeding on the following grounds: (i) English is the working language of the Complainant and its

representatives in this case; (ii) the Disputed Domain Name resolved to an English-language website (i.e.,
the Respondent’s Website), which falsely purported to represent the Complainant—a Canada-wide
organization headquartered in Calgary, Alberta, Canada—and appeared to offer goods priced in Canadian
dollars; and (iii) requiring the Complainant to translate the Complaint into Chinese would result in additional
time and expense, placing the Complainant at a disadvantage.

The Panel finds the Complainant’s submissions credible. In particular, the fact that the Respondent’s Website was presented in English is a strong indication that the Respondent has a sufficient understanding of English that it will still have a fair opportunity to present its case. Furthermore, the Panel notes that the Respondent was given an opportunity to comment on the language of the proceeding but failed to submit any response. Accordingly, the Panel determines that proceeding in English serves to expedite the process and avoids unnecessary costs for the Parties.

Having considered the foregoing, the Panel concludes that it is appropriate to conduct the proceeding in language of the proceeding should be English.

6.2. Analysis of Substantive Issues

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove all the three following requirements are met, so as to prevail in this administrative proceeding and obtain the requested relief (in this case, transfer of the Disputed Domain Name):

(i)        the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii)       the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii)      the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has successfully demonstrated its rights in the Sportchek Marks for the purposes of the Policy (Complaint Annex 3).

Furthermore, the Panel finds that the word elements of the Sportchek Marks are reproduced and fully incorporated into the Disputed Domain Name. The Disputed Domain Name also contains the elements “ca” and “.shop” immediately after “sportchek”. The Panel does not find that these elements prevent a finding of confusing similarity. The Panel notes that the Sportchek Marks are widely recognized—and are readily recognizable in the Disputed Domain Name. The Panel finds that not only is “.shop” a generic top-level domain name, typically disregarded in assessments of confusing similarity, but it may also mislead Internet users into believing that the Disputed Domain Name is associated with the Complainant’s physical and online stores.

Accordingly, the Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant’s trademarks under the Policy (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7), and finds that the first element of the Policy has been satisfied.

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.

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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 (see WIPO Overview 3.0, section 2.1).

Having reviewed the available record, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name, thereby shifting the burden of production to the Respondent. The reasons for this finding are as follows:

(i)        The Complainant asserts that the Respondent has not been authorized or licensed by the Complainant to use the Sportchek Marks and denies any affiliation with the Respondent.

(ii)       The Complainant points out the absence of any evidence showing that the Respondent was commonly known by the Disputed Domain Name prior to its registration.

(iii)      The Complainant claims that the Respondent has never made bona fide use of the Disputed Domain Name. Instead, the Complainant has provided convincing evidence showing that the Disputed Domain Name was used to host a website that appeared to sell sneakers priced in Canadian dollars and also listed a contact email address containing “CTR”—an acronym of the Complainant’s parent company. The Panel is therefore persuaded that the Disputed Domain Name was used for fraudulent purposes to impersonate and pass off the Complainant—illegal activities that can neither confer any rights or legitimate interests on the Respondent, nor constitute bona fide use.

As the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name, the burden of production shifts to the Respondent. The Respondent has not rebutted the Complainant’s prima facie case, nor has it provided any relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name, such as those enumerated in the Policy or otherwise.

Therefore, the Panel finds that 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 this case, the Panel observes that the registrations of the Sportchek Marks and the Complainant’s domain name <sportchek.ca>, under which the Complainant operates its e-commerce website, predate the registration of the Disputed Domain Name by over a decade or more. The Panel finds it inconceivable that the Respondent could have been unaware of the Complainant’s trademarks and domain name at the time of registering the Disputed Domain Name in 2025. Moreover, the fanciful nature of the word “chek”, especially in relation to sporting goods, makes it highly implausible that the Respondent could have chosen the Disputed Domain Name, incorporating the “sportchek” element in its entirety, purely by chance. Therefore, the Panel concludes that the Disputed Domain Name was registered in bad faith.

Previous panels have held that using a domain name for illicit activities such as impersonation, passing off, and other forms of fraud constitutes bad faith (WIPO Overview 3.0, section 3.4). Upon reviewing the case, the Panel notes that the Disputed Domain Name previously resolved to the Respondent’s Website, which

appeared to be selling sneakers and listed the contact email address “[…][email protected]” for customer
service. Considering that the Complainant and its brands are well-known for both physical and online

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sporting goods retail stores, and that the Complainant is owned by another leading retail business often referred to by the acronym “CTR”, the Panel is convinced that the Disputed Domain Name was used to impersonate and pass off the Complainant. In the Panel’s view, this use could only either be a fraudulent

scheme to trick Internet users out of their money or, at best, an attempt to attract users to the Respondent’s the source, sponsorship, affiliation, or endorsement of the Respondent’s Website or the sneakers it sold (paragraph 4(b)(iv) of the Policy). Therefore, the Panel also finds that the Disputed Domain Name was used in bad faith.

In conclusion, the Panel finds that the Complainant has successfully established the third element of the

Policy.

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 <sportchekca.shop> be transferred to the Complainant.

/Peter J. Dernbach/
Peter J. Dernbach
Sole Panelist
Date: May 13, 2025