DECISION

The Sports Authority Michigan, Inc. v. Domhold Co., a/k/a D'Vaul L.

Claim Number: FA0211000135011

PARTIES

Complainant is The Sports Authority Michigan, Inc., Ft. Lauderdale, FL (“Complainant”) represented by Robert S. Gurwin, of Rader, Fishman & Grauer PLLC.  Respondent is Domhold Co., a/k/a D'Vaul L., Newark, NJ (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <sportsauthoriy.com> and <thesportsauthoriy.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.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 26, 2002; the Forum received a hard copy of the Complaint on November 26, 2002.

On November 26, 2002, Enom, Inc. confirmed by e-mail to the Forum that the domain names <sportsauthoriy.com> and < thesportsauthoriy.com> are registered with Enom, Inc. and that 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 November 27, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 17, 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@sportsauthoriy.com and postmaster@thesportsauthoriy.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 January 2, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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

The  <sportsauthoriy.com> and <thesportsauthoriy.com> domain names are confusingly similar to Complainant's THE SPORTS AUTHORITY mark.

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 failed to submit a Response.

FINDINGS

Complainant is the largest national full-line sporting goods retailer in the United States.  Complainant operates 201 retail stores and a full service e-commerce website located at <thesportsauthority.com>. Complainant holds registered trademarks for THE SPORTS AUTHORITY with the United States Patent and Trademark Office (including Reg. Nos. 1,527,526 and 1,529,035).  Complainant has used its THE SPORTS AUTHORITY mark since 1987 in relation to its sports retail stores.

Respondent registered the disputed domain names on May 27, 2002.  Respondent is using the disputed domain names in order to redirect Internet users to Complainant’s website.  Respondent is a member of Complainant’s affiliate program and receives a commission for every Internet user it redirects to Complainant’s website.  Respondent does not have permission or a license from Complainant to use Complainant’s THE SPORTS AUTHORITY mark.

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 that it has rights in the THE SPORTS AUTHORITY mark through continuous use and registration with the United States Patent and Trademark Office.

Respondent’s <sportsauthoriy.com> domain name is confusingly similar to Complainant’s THE SPORTS AUTHORITY mark because it merely omits the “the” and misspells “authority.”  The omission of the word “the” does not add any distinctive characteristics because Complainant’s mark is still the dominant feature of the domain name.  See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy despite the addition of other words to such marks”).  Furthermore, the misspelling of the word “authority” does not add any distinguishing factors to the domain name because it merely takes advantage of a common Internet user spelling error.  See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding that the domain names, <davemathewsband.com> and <davemattewsband.com>, are common misspellings and therefore confusingly similar).

Respondent’s <thesportsauthoriy.com> domain name is confusingly similar to Complainant’s THE SPORTS AUTHORITY mark because it merely misspells the word “authority.”  The misspelling of a word within a domain name does not create any distinct features capable of overcoming a claim of confusing similarity because Complainant’s mark is still the dominant feature of the domain name.  Furthermore, the omission of the “t” within “authority” takes advantage of a common Internet user spelling error, and therefore creates no distinguishing features.  See Compaq Info. Techs. Group, L.P. v. Seocho , FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to Complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark); see also Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such generic typos do not change Respondent’s infringement on a core trademark held by Complainant).

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

Rights or Legitimate Interests

Respondent has failed to respond, therefore it is assumed that Respondent lacks rights and legitimate interests in the disputed domain names.  When Complainant asserts a prima facie case against Respondent, the burden shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  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 Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).

Furthermore, because Respondent has not submitted a Response, it is appropriate for the Panel to accept all reasonable allegations and inferences in the Complaint as true.  See 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); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).

Respondent is using the disputed domain names in order to divert Internet users to Complainant’s website.  Respondent is a member of Complainant’s affiliate program and is therefore making a profit from every Internet user it redirects to Complainant’s website.  Respondent does not have permission from Complainant to use its mark for this purpose.  Respondent’s use of the disputed domain names in order to redirect Internet users is not considered to be in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding Respondent had no rights or legitimate interests pursuant to Policy  ¶ 4(a)(ii) where it used the domain name <deluxeform.com> to redirect users to Complainant’s <deluxeforms.com> domain name and to receive a commission from Complainant through its affiliate program); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, it's use of the names was not in connection with the offering of goods or services or any other fair use).

There is no evidence on record, and Respondent has not come forward with any proof, that it is commonly known as THE SPORTS AUTHORIY, SPORTS AUTHORIY, <thesportsauthoriy.com>, or <sportsauthoriy.com>.  Therefore, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names 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); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

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

Registration and Use in Bad Faith

Respondent is using the disputed domain names in order to redirect Internet users to Complainant’s website.  As a member of Complainant’s affiliate program Respondent is making a profit from every Internet user it redirects.  Therefore, Respondent is using  confusingly similar domain names in order to cause Internet user confusion for its own commercial gain.  This type of behavior is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  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); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). 

Furthermore, based on the fact that Respondent is a member of Complainant’s affiliate program it can be inferred that Respondent had actual knowledge of Complainant’s rights in the THE SPORTS AUTHORITY mark when it registered the disputed domain names.  Registration of domain names that infringe on Complainant’s rights, despite actual knowledge of Complainant’s mark, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); 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 names <thesportsauthoriy.com> and <sportsauthoriy.com> be transferred from Respondent to Complainant.

Tyrus R. Atkinson, Jr., Panelist

Dated: January 9, 2003

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