DECISION

Winmark Corporation d/b/a Play It Again Sports v. In The Zone a/k/a Giant Sports Factory

Claim Number: FA0210000128652

PARTIES

Complainant is Winmark Corporation d/b/a Play It Again Sports, Minneapolis, MN (“Complainant”).  Respondent is InTheZone a/k/a Giant Sports Factory, San Diego, CA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <playitagainsport.com>, registered with Intercosmos Media Group.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 17, 2002; the Forum received a hard copy of the Complaint on October 21, 2002.

On October 18, 2002, Intercosmos Media Group confirmed by e-mail to the Forum that the domain name <playitagainsport.com> is registered with Intercosmos Media Group and that Respondent is the current registrant of the name.  Intercosmos Media Group has verified that Respondent is bound by the Intercosmos Media Group 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 October 22, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 11, 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@playitagainsport.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 December 4, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq.,  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 <playitagainsport.com> domain name is confusingly similar to Complainant’s PLAY IT AGAIN SPORTS mark.

Respondent has no rights or legitimate interests in the <playitagainsport.com> domain name.

Respondent registered and used the <playitagainsport.com> domain name in bad faith. 

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant owns two service marks for the PLAY IT AGAIN SPORTS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,562,785 and 1,738,778).  Complainant first received the service mark registration status on October 24, 1989.  Complainant uses the PLAY IT AGAIN SPORTS mark to denote its retail store, which it franchises out.  There are over 450 franchised stores nationwide and they all purchase and sell used and new sporting goods equipment.  Complainant also operates a website at <playitagainsports.com>, where it promotes its retail services and provides information on store locations. 

Respondent registered the <playitagainsport.com> domain name on June 25, 2000.  Complainant became aware of Respondent’s registration after a customer who was attempting to locate Complainant’s <playitagainsports.com> website was diverted to Respondent’s <giantsportsfactory.com> website.  At that time, Respondent was using the <playitagainsport.com> domain name to link to its <giantsportsfactory.com> website.  Complainant sent a cease and desist letter to Respondent, and Respondent replied with an offer to sell the domain name registration for $1,000.  After Complainant refused to purchase the domain name registration, Respondent has since used the domain name in connection with a website that sells apparel. 

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

Respondent has demonstrated its rights in the PLAY IT AGAIN SPORTS service mark through proof of registration with the USPTO.

Respondent’s <playitagainsport.com> domain name only differs from Complainant’s PLAY IT AGAIN SPORTS mark by omitting the “s” at the end of the mark along with the inconsequential addition of a generic top-level domain.  Deleting an “s” from a mark and incorporating that variation in a second-level domain does not defeat a claim of confusing similarity.  Also, since top-level domains are required in domain names they are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.  Therefore, Respondent’s <playitagainsport.com> domain name is confusingly similar to Complainant’s PLAY IT AGAIN SPORTS mark.  See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the Complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); 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).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to come forward and challenge the Complaint.  Complainant has submitted a prima facie Complaint, which effectively shifts the burden on Respondent to articulate rights or legitimate interests in the <playitagainsport.com> domain name.  Respondent has failed to meet its burden by not even responding, and the Panel will therefore presume that Respondent has no rights or legitimate interests in the <playitagainsport.com> domain name.  See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by the Complainant that the Respondent has no right or legitimate interest is sufficient to shift the burden of proof to the Respondent to demonstrate that such a right or legitimate interest does exist); see also 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).

Furthermore, Respondent’s failure to submit a Response allows the Panel to accept all allegations as true and 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).

The circumstances surrounding this dispute make it evident that Respondent has no rights or legitimate interests in the <playitagainsport.com> domain name.  First, Respondent initially used the <playitagainsport.com> domain name to divert Internet traffic to its <giantsportsfactory.com> website, which operates in the same industry as Complainant’s PLAY IT AGAIN SPORTS branded stores.  Second, when Complainant ordered Respondent to cease all use of the <playitagainsport.com> domain name, Respondent offered to sell the registration rights to Complainant for $1,000.  Finally, Respondent currently diverts the <playitagainsport.com> domain name traffic to an apparel website.  Thus, it is evident that Respondent is trading off of the goodwill of the PLAY IT AGAIN SPORTS service mark, and has no rights or legitimate interests in the subject domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).  See Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant's site to a competing website); see also Skipton Bldg. Soc’y v. Colman, D2000-1217 (WIPO Dec. 1, 2000) (finding no rights in a domain name where Respondent offered the infringing domain name for sale and the evidence suggests that anyone approaching this domain name through the world wide web would be "misleadingly" diverted to other sites).

Respondent is known to this Panel as In The Zone a/k/a Giant Sports Factory, as gleaned from the WHOIS information page.  There is no evidence and Respondent has failed to offer any evidence that would suggest Respondent is commonly known by the <playitagainsport.com> domain name.  Therefore, Respondent has no rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).  See 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 Respondent has no rights or legitimate interests in the <playitagainsport.com> domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent’s offer to sell the registration rights in the <playitagainsport.com> domain name to Complainant for $1,000 is evidence of bad faith registration.  The $1,000 asking price is presumably greater than Respondent’s out-of-pocket costs associated with the <playitagainsport.com> domain name, and Respondent has failed to state otherwise.  Hence, the Panel finds that this evidence permits a finding of bad faith registration pursuant to Policy ¶ 4(b)(i).  See John C. Nordt Co., Inc. v. Jewelry Exch., FA 96789 (Nat. Arb. Forum Apr. 11, 2001) (finding that Respondent exhibited bad faith when Respondent, a competitor of Complainant, attempted to sell a domain name, which was identical to Complainant’s MOTHER’S RING mark, to the Complainant for a profit); see also Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the Respondent demonstrated bad faith when he requested monetary compensation beyond out of pocket costs in exchange for the registered domain name).

Respondent initially used the <playitagainsport.com> domain name to divert Internet traffic to a website that operated in the same industry as Complainant’s PLAY IT AGAIN SPORTS branded stores.  Since Respondent operates in the same sporting goods industry, Complainant and Respondent are in competition.  Hence, Respondent’s diversionary use of the <playitagainsport.com> domain name was done in bad faith to disrupt Complainant’s business under Policy ¶ 4(b)(iii).  See Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where Respondent and Complainant were in the same line of business in the same market area); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business).

Furthermore, Respondent’s continued use of the <playitagainsport.com> domain name to divert Internet traffic to an apparel website constitutes bad faith use.  Internet consumers, like the one that notified Complainant about Respondent’s initial use, are likely to be confused as to Complainant’s affiliation with the subject domain name.  Respondent is presumably still commercially benefiting off of this diversionary use.  Therefore, Respondent’s use constitutes bad faith pursuant to Policy ¶ 4(b)(iv).  See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the Respondent directed Internet users seeking the Complainant’s site to its own website for commercial gain).

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 <playitagainsport.com> be TRANSFERRED from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated: December 6, 2002

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