DECISION

Herman's World of Sports v Chuck La Tournous d/b/a patpending creative

Claim Number: FA0301000142119

PARTIES

Complainant is Herman's World of Sports, Bethpage, NY (“Complainant”), of Herman's World of Sports.  Respondent is Chuck La Tournous d/b/a patpending creative, Port Reading, NJ (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <wearesports.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.

Edmund P. Karem

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on January 15, 2003; the Forum received a hard copy of the Complaint on January 15, 2003.

On January 20, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain name <wearesports.com> is registered with Enom, Inc. and that the Respondent is the current registrant of the name. 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 January 27, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 17, 2003 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@wearesports.com by e-mail.

A timely Response was received and determined to be complete on February 9, 2003.

On February 17, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Edmund P. Karem as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends Respondent has no rights to the trademark protected slogan “We Are Sports” because it is legally protected by the trademark registration and Respondent is seeking to benefit financially from the sale of the domain name or is intentionally trying to attract users to the site by confusing the user into thinking that they are reaching Complainant’s site.  In fact, Complainant urges that Respondent’s site introduces visitors to Sports Authority Banners and Advertisements that occupies 70% of Respondent’s website.  Sports Authority is a leading competitor of Complainant. 

Complainant contends the registration was in bad faith and because it will mislead Internet users, that Respondent made statements concerning the thousands of dollars that would have to be paid to Respondent for Complainant to acquire the name and is being used under false pretenses to direct Internet users to <sportsvision.com> which is a website the majority of which is given over to the advertising of Sports Authority, a leading competitor of Complainant.      

 B. Respondent

Respondent contends that the domain name <wearesports.com> has never been used exclusively by Complainant or its predecessors.  Complainant predecessor, Herman’s Sporting Goods, Inc. first filed with the US Patent and Trademark Office at a time when two other companies already had the phrase registered as a trademark.  A Google search of the phrase, We Are Sports led to 610 instances of the phrase used by organizations engaged in various facets of sports and sports commerce.  Complainant never uses the phrase on its own but generally on its website www.hermanssports.com features the domain name as “Herman’s we are sports.”

Respondent contends it has a legitimate interest in respect to the domain name because Herman’s Sporting Goods was established in 1917 and in the mid-1990s went through two bankruptcies.  After the second the company ceased operations and closed all of its stores in May of 1996.  On October 28, 1996 the Respondent registered the domain name at issue to consolidate two existing sites.  At the time of the registration there had not been a purchase of the assets of Herman’s Sporting Goods by the Complainant.   Agreement to buy the assets was entered into on December 1, 2000, four years after Respondent had established and consistently used the domain name in dispute.

Respondent contends it is not in bad faith because it has never offered the domain for sale in the six years since its registration.  It is further the Respondent’s contention it has actively attempted to develop the site since its inception.  Respondent acknowledges a conversation with Complainant relative to the domain name but denies any dollar figure for sale was ever discussed. 

FINDINGS

The disputed domain name <wearesports.com> was registered with the US Patent and Trademark Office on November 17, 1987 by Herman’s Sporting Goods, Inc.  Registration number 1465931.  When the Complainant decided to operate an online sporting goods site it discovered the domain name at issue was taken.  Complainant contends that when they contacted Respondent regarding the issue of rightful ownership Respondent made clear the name was for sale at an overpriced sum. 

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

The difference between Complainant’s trademark and the domain name is the spacing of the words we are sports.  Spaces are impermissible in domain names and the name is required to be followed by .com or .net.  Under such circumstances it has been held that the domain name is identical.  See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002).  See also Coty Cosmetics Inc. v. Jaguar Ltd., AF-0416 (eResolution Oct. 24, 2000). 

Complainant’s mark is sufficiently distinctive to establish enforceable rights in the mark.  See The Men’s Wearhouse, Inc. v. Brian Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”).  The arbitrator finds that the registered trademark of the Complainant and the domain name are identical or confusingly similar.

 

            Rights or Legitimate Interests

The Respondent registered the domain name at a time when Complainant’s predecessor in interest was in bankruptcy and not actively engaged in business.  From the date of registration of the domain name the Respondent has actively used the domain name for various legitimate purposes.  It therefore has rights and legitimate interest in the domain name.  See 3Z Produce v. Globaldomain , FA 94659 (Nat. Arb. Forum June 9, 2000).  

Registration and Use in Bad Faith

The arbitrator finds that the disputed domain name was registered on October 28, 1996.

Its six year possession of the disputed domain name’s registration without an offer to sell evidences it did not register the domain name with the primary purpose of selling its registration to Complainant, making policy section 4 (b)(i) inapplicable.  See Mark Warner 2001 v. Larson, FA 95746 (Nat. Arb. Forum Nov. 15, 2000).  This domain name was not registered primarily for the purpose of selling it to the owner of the trademark. 

Complainant was not in existence when the domain name was registered and thus the domain name was not registered in bad faith.  See Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO October 5, 2001).  

DECISION

The arbitrator’s decision is that the complaint be dismissed and that the domain name remain registered to the Respondent.  

Edmund P. Karem, Panelist
Dated: March 3, 2003

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