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Generic Top Level Domain Name (gTLD) Decisions |
The Sports Authority Michigan, Inc. v.
Haywood Jablome
Claim Number: FA0209000124861
PARTIES
Complainant
is The Sports Authority Michigan, Inc.,
Fort Lauderdale, FL (“Complainant”) represented by Robert S. Gurwin, of Rader
Fishman & Grauer PLLC.
Respondent is Haywood Jablome,
New York, NY (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <wwwsportauthority.com>,
registered with OnlineNIC.com.
PANEL
The
undersigned certifies that she has acted independently and impartially and to
the best of her knowledge has no known conflict
in serving as Panelist in this
proceeding.
Sandra
Franklin as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on September 10, 2002; the Forum
received a hard copy of the
Complaint on September 10, 2002.
On
September 11, 2002, OnlineNIC.com confirmed by e-mail to the Forum that the
domain name <wwwsportauthority.com>
is registered with OnlineNIC.com and that Respondent is the current registrant
of the name. OnlineNIC.com has verified
that Respondent is bound by the OnlineNIC.com registration agreement and has
thereby agreed to resolve
domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On
September 11, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of October 1, 2002 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via
e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts,
and to postmaster@wwwsportauthority.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification,
the Forum transmitted
to the parties a Notification of Respondent Default.
On
October 24, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed Sandra
Franklin as Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has discharged its responsibility
under Paragraph 2(a) of
the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to
employ reasonably available
means calculated to achieve actual notice to
Respondent.” Therefore, the Panel may
issue its decision based on the documents submitted and in accordance with the
ICANN Policy, ICANN Rules,
the Forum’s Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response
from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
<wwwsportauthority.com> domain
name is confusingly similar to Complainant’s THE SPORTS AUTHORITY mark.
Respondent
has no rights or legitimate interests in the <wwwsportauthority.com> domain name.
Respondent
registered and used the <wwwsportauthority.com>
domain name in bad faith.
B.
Respondent
Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant is a licensee of The Sports
Authority, Inc. (TSA), which is the largest national full-line sporting goods
retailer in
the United States. TSA owns
a United States Patent and Trademark Office registration for the mark THE
SPORTS AUTHORITY (Reg. No. 1,527,526).
The mark was first use by TSA in 1987 and received registration status
on February 18, 1989. Complainant is
fully authorized to use the mark THE SPORTS AUTHORITY.
The first THE SPORTS AUTHORITY sporting
goods store was opened in Fort Lauderdale, Florida in 1987. By 1995, TSA expanded to 136 stores in 26
states and in Canada, and reached $1 billion in sales. Currently, there are 201 THE SPORTS
AUTHORITY stores in the United States and 35 stores in Japan, authorized to use
the mark through
licensing agreements.
TSA heavily advertises the mark THE
SPORTS AUTHORITY through a wide variety of amateur and professional sports
teams, events and arenas. In addition,
TSA developed a commercial website to promote and enhance THE SPORTS AUTHORITY
related services in 1999, <thesportsauthority.com>.
Respondent registered the <wwwsportauthority.com> domain
name on January 7, 2002. Respondent
does not actively use the domain name to resolve to a website with
content. However, upon registering the
domain name, Respondent signed up for TSA’s affiliate program, whereby TSA pays
other domain name holders
who direct Internet traffic to TSA’s
<thesportsauthority.com> website.
If a diverted Internet user were to purchase something at TSA’s website
Respondent would receive a commission.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to
“decide a complaint on the basis of the statements and documents submitted in
accordance with the Policy, these Rules and any rules and principles of law
that it deems applicable.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's
undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate
pursuant to paragraph 14(b) of
the Rules.
Paragraph
4(a) of the Policy requires that the Complainant must prove each of the
following three elements to obtain an order that
a domain name should be
cancelled or transferred:
(1) the domain name registered by Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has
rights; and
(2)
Respondent has no rights or legitimate interests in respect of the domain name;
and
(3)
the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Complainant has established its rights in
the mark THE SPORTS AUTHORITY through proof of registration with the USPTO and
continuous
use of the mark dating back to 1987.
Respondent’s <wwwsportauthority.com> domain name is predominantly similar
to Complainant’s THE SPORTS AUTHORITY mark.
The differences between the domain name and the mark are simple. First, the domain name contains “www” in the
second- level domain, which is a common technique used by individuals seeking
to register
another entity’s mark.
Second, the domain name omits the word “the” from Complainant’s THE
SPORTS AUTHORITY mark. Lastly, Respondent’s
domain name makes the “SPORTS” part of the mark singular; the dominant portion
of the second-level domain is
“sportauthority.” All of these minor changes are common typographical errors that
Internet users may make when searching for Complainant’s goods and
services and
thus the changes are inconsequential.
Hence, the <wwwsportauthority.com>
domain name is confusingly similar to Complainant’s THE SPORTS AUTHORITY
mark. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1,
2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is
confusingly similar
to Complainant’s registered trademark BANK OF AMERICA
because it “takes advantage of a typing error (eliminating the period between
the www and the domain name) that users commonly make when searching on the
Internet”); see also State Farm
Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June
15, 2000) (finding that the domain name <statfarm.com> is confusingly
similar to the Complainant’s
STATE FARM mark).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
As part of its prima facie case,
Complainant contends that Respondent has no rights or legitimate interests in
the <wwwsportauthority.com> domain
name. Complainant has satisfied its
burden and successfully shifted the burden of proof onto Respondent to
articulate its rights or legitimate
interests in the domain name. Respondent, however, has failed to submit a
Response and thus Complainant’s allegations remain uncontested. Therefore, the Panel presumes that
Respondent has no rights or legitimate interests in the domain name. See Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts
that Respondent has no rights or legitimate interests in
respect of the domain,
the burden shifts to Respondent to provide credible evidence that substantiates
its claim of rights and legitimate
interests in the domain name); see also
Pavillion Agency, Inc. v. Greenhouse
Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’
failure to respond can be construed as an admission that they have no
legitimate interest in the domain names).
Furthermore, due to Respondent’s failure
to come forward, the Panel accepts all reasonable allegations as true and will
draw all reasonable
inferences in favor of Complainant. See Talk City, Inc. v. Robertson,
D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is
appropriate to accept as true all allegations of the Complaint”);
see also
Vertical Solutions Mgmt., Inc. v.
webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure
to respond allows all reasonable inferences of fact in the allegations of
Complainant
to be deemed true).
Respondent does not actively use the <wwwsportauthority.com> domain
name in connection with a website and has failed to show demonstrable plans to
use the domain name. Respondent has
held the domain name less than a year and such an amount of time is normally
insufficient to find passive holding of
a domain name. Respondent, however, signed up for TSA’s
affiliate program upon registering the domain name. Under the affiliate program a domain name holder uses its domain
name to direct Internet traffic to Complainant’s home website,
<thesportsauthority.com>.
Additionally, every diverted shopper that purchases something from
Complainant creates a commission for the domain name holder. Hence, it was Respondent’s intent to profit
off of the domain name, which is a misspelling of Complainant’s mark, from
Complainant
itself. Thus, it is clearly
evident from Respondent’s conduct that it lacks rights and legitimate interests
in the domain name under Policy
¶ 4(c)(i) and (iii). See Ritz-Carlton
Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that
prior to any notice of the dispute, the Respondent had not used the domain
names
in connection with any type of bona fide offering of goods and services);
see also Encyclopaedia Brittanica,
Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (finding that fair use
does not apply where the domain names are misspellings of Complainant's mark).
Complainant never authorized Respondent
to use the mark THE SPORTS AUTHORITY for any reason, let alone to profit from a
misspelled
version of the mark. The
only information regarding Respondent’s identity indicates that Respondent is
known as “Haywood Jablome.” There
exists no evidence that would allow the conclusion that Respondent is commonly
known by the <wwwsportauthority.com>
domain name. Therefore, Respondent
has no rights or legitimate interests in the <wwwsportauthority.com> domain name pursuant to Policy ¶
4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
Respondent was not commonly known by the mark and
never applied for a license
or permission from Complainant to use the trademarked name); see also Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known
by the mark).
Accordingly, the Panel finds that Policy
¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent apparently was aware of
Complainant’s interests in the mark THE SPORTS AUTHORITY because Respondent’s <wwwsportauthority.com> domain
name is comprised of common infringing characteristics, namely, “www” in the
second-level domain and a misspelled version of
Complainant’s mark. In addition, Respondent sought to associate
the mark with Complainant’s <thesportsauthority.com> domain name for
profit from
Complainant. Respondent
clearly intended to profit from a related version of the mark THE SPORTS
AUTHORITY without obtaining a license from Complainant. Respondent’s infringing behavior evidences
bad faith registration and use under Policy ¶ 4(a)(iii). See Kraft Foods (Norway) v. Wide, D2000-0911 (WIPO Sept. 23, 2000)
(finding that the fact “that the Respondent chose to register a well known mark
to which he has
no connections or rights indicates that he was in bad faith
when registering the domain name at issue”); see also Entrepreneur
Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that
"[w]here an alleged infringer chooses a mark he knows to be similar to
another, one can
infer an intent to confuse").
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
shall be hereby
granted.
Accordingly, it is Ordered that the
domain name <wwwsportauthority.com>
be transferred from Respondent to Complainant.
Sandra Franklin, Panelist
Dated: November 4, 2002
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