When your UDRP fails, try, try again.
We covered the UDRP for SoccerMall.com two months ago, and despite a lack of response by the Respondent, it was denied.
It seems that the same Complainant, Hassan Shams, filed a second one – again, at the National Arbitration Forum – once again seeking to have the domain SoccerMall.com transferred over.
Once again, there was no response by the Respondent. The Complainant alleged the following:
- For over sixteen years, Complainant has used the SOCCER MALL mark in connection with retail and online store services, including selling soccer uniforms, footwear, socks, shinguards, jerseys, gloves, pants, shorts, knee protectors, t-shirts, sweatshirts, sweat pants, soccer balls, backpacks, travel bags, duffel bags, baseball hats, equipment, and related sported goods and sportswear. Complainant has registered the SOCCER MALL mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,986,219, filed Sept. 16, 2014, registered June 28, 2016). The <soccermall.com> domain name is confusingly similar to Complainant’s mark, save for the elimination of the space between the words of Complainant’s mark and the affixation of the “.com” generic top-level domain (“gTLD”).
- Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known by the domain name, and Complainant has not granted any permission to Respondent to use the domain name. Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the websites to which the domain name redirects contain links to products that are directly competitive with Complainant’s business. Additionally, the websites to which the domain name redirects contain displays offering the domain name for sale.
- The domain name was registered and is being used in bad faith. First, Respondent has made general offers to sell the domain name. Second, the websites to which the domain name redirects contain links to products that are directly competitive with Complainant’s business. Third, because Complainant’s application with the USPTO predates Respondent’s acquisition of the domain name, May 4, 2015, it is clear that Respondent registered the domain name with at least constructive knowledge of Complainant’s mark; the domain name has changed ownership at least three times within the past two years, which suggests that the most recent “Updated Date” is the earliest date Respondent could claim as an acquisition date.
The Panelist, Ho Hyun Nahm made a reference to having a “second bite at the cherry,” regarding the Complainant’s second attempt at getting SoccerMall.com via a UDRP:
“No doubt disappointed with the decision reached by the earlier single-member Panel in Forum Case No. FA 1689685, Complainant has instituted this UDRP proceeding with the Forum to have “a second bite at the cherry,” no doubt with a view to obtaining a favorable result the second time around. Complainant presents as new evidence the assertion that Respondent did not initially register the domain name in August 2000; rather, Complainant contends that Respondent acquired the domain name on May 4, 2015, after Complainant filed for its now registered SOCCER MALL trademark, and after Complainant’s purported first use in commerce date of October 10, 2000. In support of this contention, Complainant argues that the domain name has changed ownership at least three times within the past two years, which suggests that the most recent “Updated Date” is the earliest date Respondent could claim as an acquisition date.”
Furthermore, Mr. Ho Hyun Nahm stated:
“Complainant’s action is barred by res judicata, a legal principle that a final decision on the merits by a court or tribunal having jurisdiction, is conclusive between the parties to a suit as to all matters that were argued, or that could have been argued, in the earlier proceeding. “
With all that in mind, the second UDRP for the domain SoccerMall.com was denied as well.
You can read all about it here.
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