DECISION

The Sports Authority Michigan, Inc. v. Elias Skander d/b/a Web Registration Service

Claim Number: FA0212000135598

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 Elias Skander d/b/a Web Registration Services, Montreal, PQ, CANADA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are  <thesportsauthorty.com> and <tesportsauthority.com>, registered with Enom, Inc.

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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 2, 2002; the Forum received a hard copy of the Complaint on December 2, 2002.

On December 2, 2002, Enom, Inc. confirmed by e-mail to the Forum that the domain names <thesportsauthorty.com> and <tesportsauthority.com> are registered with Enom, Inc. and that the Respondent is the current registrant of the names.  Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 December 4, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 26, 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@thesportsauthorty.com and postmaster@tesportsauthority.com by e-mail.

A timely Response was received and determined to be complete on December 23, 2002.

Complainant’s additional submissions were submitted on December 27, 2002.

On January 2, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.  Respondent requests that the Panel find that Complainant has engaged in reverse domain name hijacking.

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that Respondent’s domain names <thesportsauthorty.com> and <tesportsauthority.com> are identical and confusingly similar to Complainant’s famous SPORTS AUTHORITY and THE SPORTS AUTHORITY marks and flagship domain name <thesportsauthority.com>.  Respondent has no rights or legitimate interests in the disputed domain names.  Respondent registered and used the disputed domain names in bad faith.

B. Respondent

Respondent, Web Registration Service, contends it registered the domain names <thesportsauthorty.com> and <tesportsauthority.com> in good faith.  Respondent claims that it has been using the two domain names in connection with a bona fide offering of goods and services in connection with a legitimate business of redirecting web traffic.  Respondent contends that redirecting “typos” to their intended destination is a legitimate form of business.

C. Additional Submissions

Complainant contends that Respondent is a “typosquatter” who has no legitimate interest in the domain names and that Respondent registered and is using the domain names in bad faith.

FINDINGS

With sales of $1.4 billion in fiscal year 2001, Complainant, The Sports Authority Michigan, Inc., and its licensees, The Sports Authority, Inc., and related companies (collectively “TSA”) claims to be the largest national full-line sporting goods retailer in the United States.  TSA operates 201 retail stores, and a full service e-commerce website located at <thesportsauthority.com>, also accessible at <sportsauthority.com>.  In 2000, <thesportsauthority.com> was named the #2 overall shopping site on the Internet.  TSA, its goods and services, and its SPORTS AUTHORITY and THE SPORTS AUTHORITY marks are well known throughout North America.

During 1999, TSA launched its Internet retail site, <thesportsauthority.com>, giving customers the opportunity to shop at a full featured online “The Sports Authority” store twenty-four hours a day. 

Today, TSA operates 201 stores in the United States, along with another 35 stores in Japan under a licensing agreement.  The company employs over 12,000 people including corporate staff.  The company’s stock is traded publicly on the New York Stock Exchange under ticker symbol TSA.

TSA’s primary trademarks and service marks are SPORTS AUTHORITY and THE SPORTS AUTHORITY.  TSA adopted the name and mark THE SPORTS AUTHORITY in June of 1987.  

TSA has held its primary domain name, <sportsauthority.com>, since July 1995.  TSA holds a total of over 100 Internet domain names that are used in promoting TSA.  TSA has expended substantial time, effort and resources to develop its retail sporting goods Internet website.

Respondent, Web Registration Service, registered the domain names <thesportsauthorty.com> and <tesportsauthority.com> on December 30, 2001, as “typos” of Complainant’s URL and redirected those typos to the URL that was mistyped.  Respondent contends that this is growing business on the Internet that is sometimes referred to as an Internet spell checker where Web surfers are redirected to their intended destination with their mistype corrected automatically at no inconvenience to the Internet Surfer or the destination Website.

Respondent registered one of the domain names <thesportsauthority.com> with Complainant’s affiliate program that provides compensation to other domain holders who direct Internet shoppers to Complainant’s website.  Respondent registered the domain name to attract shoppers looking for Complainant’s website because anyone making the relevant typographical error would first visit Respondent’s website, then be re-directed via a hyperlink bearing Complainant’s SPORTS AUTHORITY mark and design to Complainant’s website.  If the shopper made a purchase from Complainant’s website, Respondent would then earn and be paid a commission.

Respondent is not an authorized licensee of Complainant, nor is he authorized to use Complainant’s SPORTS AUTHORITY and THE SPORTS AUTHORITY marks.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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 rights in the marks THE SPORTS AUTHORITY and SPORTS AUTHORITY through registration and continuous use of the marks.  The domain names <thesportsauthorty.com> and <tesportsauthority.com> are confusingly similar to Complainant’s marks.  See The Sports Auth. Michigan, Inc. v. Haywood Jablome, FA 124861 (Nat. Arb. Forum Nov. 4, 2002) (Respondent’s <sportauthority.com> domain name is confusingly similar to Complainant’s THE SPORTS AUTHORITY mark).

But for the slight typographical errors of missing letters “I” or “H”, the domain names <thesportsauthorty.com> and <tesportsauthority.com> are confusingly similar to Complainant’s SPORTS AUTHORITY and THE SPORTS AUTHORITY marks.  The domain names <thesportsauthorty.com> and <tesportsauthority.com> are also confusingly similar to TSA’s primary Internet domains, <sportsauthority.com> and <thesportsauthority.com>.  Indeed, the domain names at issue are identical but for the typographical errors consisting of the omission of the character “H” in the spelling of THE and the intentional omission of the character “I” in the spelling of AUTHORITY.  Respondent’s registration of these names is intended to misdirect web traffic of individuals who inadvertently mistype either the word THE or the word AUTHORITY when entering Complainant’s URLs. 

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

Rights or Legitimate Interests

Respondent has no legitimate interest with respect to the domain names <thesportsauthorty.com> and <tesportsauthority.com>.  Respondent’s interest in these domain names is their value as typographical errors in relation to the domain names associated with Complainant’s marks and websites.  See The Sports Auth. Michigan, Inc. v. Haywood Jablome, supra (by signing up for TSA’s affiliate program upon registering the domain name, Respondent intended to profit off the domain name, which is a misspelling of Complainant’s mark, from Complainant itself, thereby evidencing a lack of rights and legitimate interests in the domain name under Policy ¶¶ 4(c)(i) and (iii)).  Moreover, Respondent is not commonly known by the names SPORTS AUTHORITY or THE SPORTS AUTHORITY in accordance with Policy 4(c)(ii).  See Gallop, Inc. v. Amish Country Store, FA96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not commonly known by the mark).

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

Registration and Use in Bad Faith

Respondent’s domain names <thesportsauthorty.com> and <tesportsauthority.com> are merely misspellings of Complainant’s website and registered marks.  Respondent’s registration and use of these domain names is in bad faith. 

“Typosquatting” involves the registration and use of domain names that are the result of common typographical errors of well-known domain names and is evidence of bad faith in violation of Policy ¶ 4(b)(iv).  See The Sports Auth. Michigan, Inc. v. Internet Hosting, FA124516 (Nat. Arb. Forum Nov. 4, 2002) (defining “typosquatting” as registering a domain name that is a common mistyping of a mark in which a party has rights” and finding the practice of “typosquatting” to constitute bad faith use).  “Typosquatters” register and use domain names, which they know to be confusingly similar to well known trademarks.  Under the ICANN Policy, however, registration of a domain name which one knows to be identical or confusingly similar to another’s trademark is evidence of bad faith.  See Household Int’l, Inc. v. Cyntom Enters., FA 95784 (Nat. Arb. Forum Nov. 7, 2000).  In registering the domain names Respondent had actual or constructive knowledge of Complainant’s well-known marks.  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

In two separate National Arbitration Forum decisions, the Panel was presented with the identical issue of a typosquatter registering a misspelled variant of Complainant’s domain names in Complainant’s affiliates program.  In the matters of The Sports Auth. Michigan, Inc. v. Internet Hosting, supra and The Sports Auth. Michigan, Inc. v. Haywood Jablome, supra the panels found that the respective Respondents’ attempt to “typosquat” by registering domain names that were merely misspellings of Complainant’s website and registered marks constituted evidence of bad faith pursuant to Policy paragraph 4(b).

By registering the “typosquatted” domain name in TSA’s affiliate program, Respondent profits on the goodwill of TSA’s protected marks and primary Internet domain names.  See The Sports Auth. Michigan, Inc. v. Haygood Jablome, supra (“Respondent’s infringing behavior evidences bad faith registration and use under Policy ¶ 4(a)(iii)”); see also Deluxe Corp. v. Dallas Internet, FA105216 (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.

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

Reverse Domain Name Hijacking

Complainant has not engaged in reverse domain name hijacking.

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 names <thesportsauthorty.com> and <tesportsauthority.com> be transferred from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 7, 2002

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