Royal Multisport Private Limited. v Deepak Jawade

WIPO Case No. D2023-0048

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Royal Multisport Private Limited. v. Deepak Jawade

Case No. D2023-0048

1. The Parties

The Complainant is Royal Multisport Private Limited., India, represented by Fidus Law Chambers, India.

The Respondent is Deepak Jawade, individual, India.

2. The Domain Name and Registrar

The disputed domain name <rajasthanroyals.org> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 5, 2023. On January 5, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 6, 2023, 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 (Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on January 9, 2023 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 January 12, 2023.

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 parties to try and reach a settlement. The proceedings were suspended on January 27, 2023. On February 2, 2023, the Complainant reported that the settlement efforts had failed and requested the Center to reinstitute the proceedings. On February 2, 2023, the Center reinstituted the proceedings and the Response

Complaint, and the proceedings commenced on January 24, 2023. In accordance with the Rules,
paragraph 5, the due date for Response was February 13, 2023. The Respondent sent an informal
communication to the Center on January 11, 2023. On January 16, 2023, the Center sent an email
communication to the parties enquiring whether they wished to try for a settlement. In reply, the

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due date was extended to February 20, 2023. The Respondent did not submit any further response,
accordingly, on February 27, 2023, the Center notified the parties that it would proceed to panel

appointment.

The Center appointed Harini Narayanswamy as the sole panelist in this matter on March 6, 2023. The Panel
finds that it was properly constituted and 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.

The Center had also sent an email communication on January 16, 2023, informing the parties that the disputed domain name was to expire on February 8, 2023, and that the Registrar had confirmed the disputed domain name would remain locked and would not expire during the course of the proceedings. Therefore, it would be the responsibility of the prevailing party to renew the disputed domain name after conclusion of the dispute.

4. Factual Background

The Complainant is a cricket team that participates in the Indian Premier League (IPL) cricket tournaments. The IPL is a Twenty20 cricket league established by Board of Control for Cricket in India and the first season was played in 2008. The tournament is played annually in summer and has immense viewership and popularity.

The Complainant host its website from the domain name <rajasthanroyals.com>, which it registered on registrations in India and in many other jurisdictions. Some of its Indian word mark registrations are:

RAJASTHAN ROYALS Registration No. 1825872, Class 16 registration date June 5, 2009; RAJASTHAN ROYALS Registration No. 1825873, Class 18 registration date June 5, 2009; RAJASTHAN ROYALS Registration No. 1825874, Class 25 registration date June 5, 2009; RAJASTHAN ROYALS Registration No. 1825875, Class 28 registration date June 5, 2009; RAJASTHAN ROYALS Registration No. 1825876, Class 41 registration date June 5, 2009.

The Respondent registered the disputed domain name <rajasthanroyals.org> on February 8, 2022. The disputed domain name is parked at the “afternic.com” website and appears to not have been used by the Respondent. The landing page of the disputed domain name displays a message that states “Rajasthanroyals.org maybe for sale” and a note in small print states: “We can verify that the domain is for sale over the phone, help you with the purchase process, and answer any questions. Contact us now” with the contact phone numbers displayed.

5. Parties’ Contentions
A. Complainant

The Complainant states it was incorporated in the year 2008, and owns the franchise for the cricket team Rajasthan Royals, formerly known as “Jaipur IPL Cricket Private Limited”. The Complainant states that it has continuously participated in the IPL tournaments and had emerged as winners in the first edition of IPL

in 2008. The Complainant contends that it has enormous popularity, reputation and a large following. The sponsorships from national and international brands.

The Complainant states that the present Complaint is based on the RAJASTHAN ROYALS trademark, which was adopted on January 1, 2008. Trademark registrations for the mark have been obtained in several jurisdictions including Australia, New Zealand, South Africa, and the European Union. The Complainant

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states that it sells various merchandise such as t-shirts, track suits, caps, mugs, mobile covers, laptop covers
and posters through its website and also through authorized third-party websites.

The Complainant states that it also operates a mobile application that has more than 10,000 downloads on the Google Play Store and it has a rating of 4.1 out of 5. The Complainant alludes to its strong social media presence and states that it has millions of followers on various social media platforms. The Complainant

contends that its promotional campaigns feature its trademark, and the mark is exclusively associated with
the Complainant. The Complainant has provided evidence of its social media presence, promotion of its
mark, third party and media references of its mark.

The Complainant asserts it is a prior user of the mark and that the Respondent has registered the disputed domain name more than a decade after the Complainant started using the trademark. The Complainant argues that since the disputed domain has not been put to any use by the Respondent from the time it was registered, and is merely parked, which is indicative of bad faith registration and use.

The Complainant requests for the transfer of the disputed domain name on the grounds that it is confusingly similar to a trademark in which it has rights, the Respondent lacks rights or legitimate interests in the disputed domain name and the disputed domain name has been registered and is being used in bad faith by the Respondent.

B. Respondent

The Respondent did not send a formal response in these proceedings. However, an informal email communication was sent by the Respondent to the Center on January 11, 2023, states:

“As you can see, last year I bought that domain from the GoDaddy domain platform and I am a big fan of the
Rajasthan Royal cricket team. For me, it is a unique collectible.

If Rajasthan Royal really cares about their THE most important domain then they should buy in the first place.

Now, I am ready to transfer to that domain name also. But as I mentioned earlier It is one of my main unique collectibles as a fan of THE Rajasthan royal.

I am ready for an off-court settlement.”

6. Discussion and Findings

The Complainant in these proceedings has to establish three elements under paragraph 4 (a) of the Policy to obtain transfer of the disputed domain name, these are:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii)       The Respondent lacks rights or legitimate interests in the disputed domain name; and

(iii)      The disputed domain name was registered and is being used in bad faith by the Respondent.

A. Identical or Confusingly Similar

The first element under paragraph 4(a) of the Policy requires the Complainant to establish the disputed domain name is confusingly similar to a trademark or a service mark in which it has rights.

The Complainant has furnished evidence of copies of its trademark registrations and has also provided evidence of promotion of its mark, and third-party media references to its mark. All the evidence collectively establishes the Complainant’s statutory and common law rights in the RAJASTHAN ROYALS mark.

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The disputed domain name reproduces the entire mark with no additional elements, except for the generic Top-Level Domain (“gTLD”) “.org”. Where a domain name incorporates the entire trademark, the domain name will generally be considered identical or confusingly similar to the mark for purposes of UDRP

standing. See section 1.7 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third
Edition (WIPO Overview 3.0).

The Panel accordingly finds that the disputed domain name is identical to the mark in which the Complainant has rights. The Complainant has fulfilled the requirements under the first element of the Policy.

B. Rights or Legitimate Interests

prima facie case that the Respondent lacks rights or legitimate interests, the Respondent can rebut the Complainant’s allegations with relevant submissions and supporting evidence to establish rights or legitimate interest in the disputed domain name. See Section 2.1 WIPO Overview 3.0.

The second element under paragraph 4(a) of the Policy requires the Complainant to demonstrate that the

The Complainant has argued that the Respondent lacks rights or legitimate interests in the disputed domain name which is parked and has not been put to any use. The Respondent has not provided any evidence of use, or of demonstrable preparations to use the disputed domain name in connection with a bona fide

offering of goods or services or for any legitimate noncommercial use, such as a genuine fan site. any intention to use the disputed domain name.

The Panel notes from the Respondent’s email communication that the disputed domain name is stated to be a unique collectible as the Respondent claims to be a fan of the Complainant. The Respondent’s registration of the disputed domain name clearly does not come under the safe harbor provisions set out under

paragraph 4(c) (iii), of making “noncommercial fair use” of the disputed domain name. To avail the defense
of paragraph 4(c) (iii), it is required that a noncommercial fan site must be active, it must be found to be
genuinely noncommercial, and clearly different from any official site of the Complainant. See section 2.7.1 of
WIPO Overview 3.0.

The Panel notes that the Respondent has stated he is a fan of the Complainant’s team but has not mentioned that he intends using the disputed domain name for purposes of running a fan site. There is a distinct difference between being a fan who registers and passively holds a domain name, and using the domain name to operate a genuine fan site. In Liverpool Football Club and Athletic Grounds v. Darren Mills, Mills NZ, WIPO Case No. D2021-4132, where football fans had registered a domain name incorporating the entire trademark of the football team and passively held the domain name, it was found that the domain name registration and use did not meet the requirements under paragraph 4(c) (iii) as there was no activity related to the domain name. Furthermore, it was found that due to the use of the entire trademark, there was a high risk of implied affiliation between the domain name and the identical well-known trademark of the complainant in that case. The right to operate a fan site does not mean that the right extends to the use of the entire mark.

In the present case, as in Liverpool Football [supra], the Respondent’s intention in registering the disputed domain name is not for any genuine non-commercial purposes, such as running a fan site. The Panel finds that the Respondent here seeks to derive gains by selling the disputed domain name to the owner of the mark. The landing page where the disputed domain name is parked indicates that it may be available for sale. The Respondent’s email communication also indicates that he is looking to transfer the disputed domain name to the Complainant, the owner of the trademark. The Panel notes that based on the Respondent’s statements, the proceedings were suspended for the parties to explore the possibility of settlement. The entire set of facts and circumstances, namely the nature of the disputed domain name, the lack of use of the disputed domain name by the Respondent and intention to sell the disputed domain name to the owner of the mark, are all suggestive of typical of cybersquatting behavior, and the described circumstances are not indicative of any rights or interests in favour of the Respondent.

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It has been determined in several previous cases that, where circumstances show the disputed domain name is registered and is held primarily to sell it to the owner of the trademark, the registrant of such a domain name lacks rights or legitimate interests. See Cruzeiro Licenciamentos Ltda. V. Davin Sallen, Sallen

Enterprises and J.D SallenEnterprises, WIPO Case No. D2000-0715.

The Complainant has established the second element under paragraph 4(a) of the Policy and has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The third element requires the Complainant to establish the disputed domain name has been registered and is being used in bad faith by the Respondent.

The Complainant has argued that the Respondent ought to have been aware of the Complainant’s rights in the RAJASTHAN ROYALS at the time of registration of the disputed domain name, and such constructive knowledge is sufficient to establish bad faith. Further, as the Respondent is located in India and given the high degree of popularity of the IPL tournaments in India, and the reputation associated with the Complainant’s mark, the Respondent has knowingly registered the disputed domain name consisting of the entire mark. The Panel acknowledges that the Complainant has established with supporting evidence the reputation associated with its mark due to its long and extensive use and the Respondent has registered the disputed domain name with knowledge of the mark. In the Respondent’s email communication of January 11, 2023, the Respondent is admittedly a fan of the Complainant’s team, which also establishes the Respondent’s knowledge of the mark.

It can be surmised from the material on record, that the Respondent is obviously aware of the Complainant’s mark and has registered the disputed domain name to derive unfair advantage based on the reputation associated with the mark. The Respondent acquired the disputed domain name consisting of the Complainant’s entire mark, then parked it on the “afternic.com” website, where the disputed domain name has been put up for sale, and finally the Respondent sent an email communication indicating an intention to sell or transfer the disputed domain name to the owner. The described facts and circumstances collectively indicate that the Respondent did not register and use the disputed domain name for any legitimate purpose but registered it with a view to derive opportunistic gain from the sale or transfer of the disputed domain name to the Complainant.

The Panel finds that disputed domain name was registered or acquired primarily for the purpose of either selling or transferring the disputed domain name to the owner of the mark for valuable consideration which is found to be bad faith registration and use as described under the provisions of the Policy paragraph 4 (b)(i).

The Panel concludes that the Complainant has satisfied the requirements under paragraph 4(a)(iii) of the
Policy, that the disputed domain name has been registered and is being used in bad faith by the

Respondent.

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 <rajasthanroyals.org> be transferred to the Complainant.

/Harini Narayanswamy/
Harini Narayanswamy
Sole Panelist
Date: March 20, 2023