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Generic Top Level Domain Name (gTLD) Decisions |
The Sports Authority Michigan, Inc. v.
Internet Hosting
Claim Number: FA0209000124516
PARTIES
Complainant
is The Sports Authority Michigan, Inc.,
Ft. Lauderdale, FL, USA (“Complainant”) represented by Robert S. Gurwin, of Rader,
Fishman, Grauer PLLC. Respondent is Internet Hosting, Edmonton, AB, CANADA
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <wwwsportsauthority.com>
and <wwwthesportsauthority.com>, registered with Namescout Corp.
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 3, 2002; the Forum received
a hard copy of the
Complaint on September 3, 2002.
On
September 16, 2002, Namescout Corp. confirmed by e-mail to the Forum that the
domain names <wwwsportsauthority.com>
and <wwwthesportsauthority.com> are registered with Namescout
Corp. and that Respondent is the current registrant of the names. Namescout
Corp. has verified that
Respondent is bound by the Namescout Corp. 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 16, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of October 7, 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@wwwsportsauthority.com and postmaster@wwwthesportsauthority.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 names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant’s Submission makes the
following assertions:
1. Respondent’s <wwwsportsauthority.com> and <wwwthesportsauthority.com>
domain names are confusingly similar to
Complainant’s registered THE SPORTS AUTHORITY registered mark.
2. Respondent does
not have any rights or legitimate interests in the <wwwsportsauthority.com>
and <wwwthesportsauthority.com> domain
names.
3. Respondent
registered and used the <wwwsportsauthority.com> and <wwwthesportsauthority.com> domain
names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant, The Sports Authority
Michigan, Inc., is the holder of the service marks THE SPORTS AUTHORITY (U.S.
Reg. No. 1529035,
registered on March 7, 1989), THESPORTSAUTHORITY.COM (U.S.
Reg. No. 2409389, registered on November 28, 2000), and a host of variations
of
these marks. Complainant also holds numerous registrations of the mark
worldwide, including several in Canada, Respondent’s place
of domicile.
Complainant was the first North American business to adopt and use THE SPORTS
AUTHORITY mark, and the first retailer
to adopt and use the word “Authority” as
the core element of its identity. Complainant has used the
<thesportsauthority.com>
domain name since July of 1995, and has
subsequently registered over 115 variations of the same. Under this mark,
Complainant operates
as a retailer for sporting goods, and also sponsors a wide
variety of amateur and professional sports teams, events, and arenas.
Respondent, Internet Hosting, registered
its <wwwsportsauthority.com> and <wwwthesportsauthority.com> domain names on January 2, 2002. Respondent’s domain names
redirect Internet users to Complainant’s <thesportsauthority.com>
domain
name. Respondent is a member of Complainant’s affiliates program, a program
that provides compensation and a commission to
a domain holder who directs
Internet users to Complainant’s website. Every time a user is directed to
Complainant’s website from
Respondent’s disputed domains, it receives
compensation. Upon discovering this fact, Complainant struck the disputed domain
names
from its affiliate program. Respondent is not licensed or otherwise
authorized to make any use of Complainant’s THE SPORTS AUTHORITY
mark for any
purpose.
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 rights in its
THE SPORTS AUTHORITY mark through registration on the Principal Register of the
United States
Patent and Trademark Office (“USPTO”), as well as via continuous
and widespread use of the mark. Although Complainant’s mark consists
of generic
words, this does not prevent the Panel from holding that it has sufficient
rights to have standing to bring a Complaint.
See Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000)
(holding that ICANN Policy ¶ 4(a)(i) does not require Complainant to
demonstrate ‘exclusive rights,’
but only that Complainant has a bona fide basis
for making the Complaint in the first place). In this dispute, Complainant has
demonstrated
a “bona fide” basis for making this Complaint by demonstrating its
widespread, active, and registered use of its mark worldwide.
Respondent’s <wwwsportsauthority.com>
and <wwwthesportsauthority.com> domain names
are confusingly similar to Complainant’s THE SPORTS AUTHORITY mark. The only
differences between the domain names and
Complainant’s mark are the removal of
the spaces from THE SPORTS AUTHORITY, the addition of “.com” after the mark,
and the prefix
“www”. The deletion of a space and the addition of a “.com” from
a registered mark do not prevent a domain name from being found
confusingly
similar to a mark under the Policy. See Hannover Ruckversicherungs-AG v.
Ryu, FA 102724
(Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical
to HANNOVER RE, “as spaces are impermissible
in domain names and a generic
top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top-level of the domain name
such as “.net” or “.com” does not affect the domain
name for the purpose of
determining whether it is identical or confusingly similar).
Furthermore, Respondent’s addition of
“www” before Complainant’s mark is not enough of a variation to prevent a
finding of confusing
similarity by the Panel. 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.”).
The fact that the disputed domain names
are a combination of the two descriptive words “sports” and “authority” also
fails to prevent
a finding of confusing similarity in this dispute. See Nintendo Of Am. Inc. v. This Domain Is For
Sale, D2000-1197 (WIPO Nov. 1, 2000) (finding <game-boy.com>
identical and confusingly similar Complainant’s GAME BOY mark, even
though the
domain name is a combination of two descriptive words divided by a hyphen).
Accordingly, the Panel finds that the <wwwsportsauthority.com> and <wwwthesportsauthority.com> domain names are confusingly
similar to Complainant’s registered THE SPORTS AUTHORITY mark under Policy ¶
4(a)(i).
Rights or Legitimate Interests
The burden of proving a lack of rights or
legitimate interests in the domain names rests initially upon Complainant.
Under Policy
¶¶ 4(c)(i-iii), Respondent can rely on an offering of bona fide
goods or services connected with the disputed domain names, the fact
that it
has been commonly known by the domain names, or that it is making a legitimate
noncommercial or fair use of the domain names
to demonstrate a right or
legitimate interest. If Complainant rebuts each of these elements, it has satisfied
its burden by successfully
addressing any of the specified claims Respondent
could make under Policy ¶¶ 4(c)(i-iii), therefore shifting the burden to
Respondent.
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).
It is neither a bona fide offerings of
goods or services, nor an example of a legitimate noncommercial or fair use
under Policy ¶¶
4(c)(i) and (iii) when the holder of a domain name that is
confusingly similar to an established mark uses the domain name to earn
a
profit without approval of the holder of the mark. See Gorstew Ltd. v.
Carribean Tours & Cruises, FA 94927 (Nat. Arb. Forum July 28, 2000) (finding that Respondent’s use of the
disputed domain name to sell the services of
Complainant or to attract customers to Complainant, presumably for which
Respondents would be paid a fee, is classic trademark infringement, even if the
result of same is that some
revenue flows to Complainant, the owner of the
marks). Respondent has used its <wwwsportsauthority.com>
and <wwwthesportsauthority.com> domain names to direct Internet
users to Complainant’s website. Pursuant to this plan, Respondent registered
with Complainant’s affiliates
program, and receives a commission for every sale
Complainant made online from a user that came from Respondent’s websites. As
Complainant
has not licensed Respondent to use its mark, this type of activity
is not an offering of bona fide goods or services. Likewise, Respondent
is not
using the disputed domain names for a legitimate non-commercial or fair use if
it is profiting from every approaching Internet
user.
Complainant can also find no data
supporting the proposition that Respondent is commonly known by the domain
names. In linking the
disputed domain names directly to Complainant’s website,
it can be inferred that Respondent has never been commonly known by these
names. See Great S. Wood Pres., Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was
not commonly known by the domain name <greatsouthernwood.com>
where
Respondent simply linked the domain name to <bestoftheweb.com>).
Once a complainant has successfully
presented its prima facie case illustrating a respondent’s lack of
rights or legitimate interests in its domain name, the burden of demonstrating
rights and
legitimate interests in the domain name shifts to the respondent.
As Respondent submitted nothing to the
Panel in Response to the Complaint, Respondent fails to meet that burden. See
Canadian Imperial Bank of Commerce v.
D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no
rights or legitimate interests where no such right or interest was immediately
apparent to the Panel and Respondent did not come forward to suggest any right
or interest it may have possessed).
Accordingly, the Panel finds that
Respondent does not have any rights or legitimate interests in its domain names
under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Although the
Policy lists four circumstances that are considered evidence of bad faith
registration and use, the circumstances described
therein are not exhaustive,
but merely illustrative of situations clearly defining bad faith registration
and use. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000)
(finding that the criteria specified in 4(b) of the Policy is not an exhaustive
list of bad faith
evidence); see also Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010
(WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within
the ‘particular’ circumstances set out
in ¶ 4(b), does not mean that the domain
names at issue were not registered in and are not being used in bad faith”).
One example of bad faith use not directly
enumerated in the Policy is “typosqatting”, or registering a domain name that
is a common
mistyping of a mark in which a party has rights. See Yahoo! Inc. v. Zuccarini, D2000-0777
(WIPO Oct. 2, 2000) (finding bad faith where Respondent linked the domain
names, which contained the YAHOO! mark, to
several of YAHOO!’s own websites).
This practice of “typosquatting” has been recognized as a bad faith use of a
domain name under
the UDRP. See e.g. AltaVista Co. v. Stoneybrook,
D2000-0886 (WIPO Oct. 26, 2000) (awarding <wwwalavista.com>, among other
misspellings of altavista.com, to Complainant); Dow Jones & Co. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1,
2000) (awarding domain names <wwwdowjones.com>, <wwwwsj.com>,
<wwwbarrons.com> and <wwwbarronsmag.com>
to Complainants).
Registering both the <wwwsportsauthority.com>
and <wwwthesportsauthority.com> domain names qualifies as typosquatting, and can be viewed by the Panel
as examples of bad faith use.
Policy ¶ 4(b)(iv) itself illustrates an
example of bad faith use and registration when dealing with a popular mark. The
Policy states
that when a domain name is used to intentionally attempt to
attract, “for commercial gain, Internet users to [Respondent’s] web site…by
creating a likelihood of confusion with the complainant’s mark as to the
source, sponsorship, affiliation, or endorsement of [Respondent’s]
web site” it
is an example of bad faith use and registration. Redirecting Internet users
attempting to reach a complainant’s website
in order to gain a profit off of a
complainant is one example of bad faith use and registration under the Policy. See
Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding
Respondent registered and used the <deluxeform.com> domain name in bad
faith pursuant to Policy ¶ 4(b)(iv) by redirecting its users to Complainant’s
<deluxeforms.com> domain name, thus receiving
a commission from
Complainant through its affiliate program). Respondent’s actions are identical
to this type of activity.
Complainant has shown clear and
uncontested evidence that Respondent, via “typosquatting” and use of its
websites to gain a commission
from Complainant, acquired and used the disputed
domain names in bad faith. See Desotec
N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that
failing to respond allows a presumption that Complainant’s allegations are true
unless
clearly contradicted by the evidence).
Accordingly, the Panel finds that
Respondent both registered and used its domain names in bad faith, and Policy ¶
4(a)(iii) has been
satisfied.
DECISION
Having established all three elements
under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <wwwsportsauthority.com> and <wwwthesportsauthority.com> domain names be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated: November 4, 2002
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