DECISION

The Sports Authority Michigan, Inc. v. Tim Akre a/k/a Sports Authority Shop

Claim Number:  FA0303000147315

PARTIES

Complainant is The Sports Authority Michigan, Inc., Ft. Lauderdale, FL (“Complainant”) represented by Robert S. Gurwin, of Rader, Fishman & Grauer PLLC. Respondent is Tim Akre a/k/a Sports Authority Shop, Rockford, IL (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <sportsauthorityshop.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 March 4, 2003; the Forum received a hard copy of the Complaint on March 4, 2003.

On March 4, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain name <sportsauthorityshop.com> is registered with Enom, Inc. and that 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 March 5, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 25, 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@sportsauthorityshop.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 March 31, 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.

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 makes the following assertions:

1. Respondent’s <sportsauthorityshop.com> domain name is confusingly similar to Complainant’s SPORTS AUTHORITY mark.

2. Respondent does not have any rights or legitimate interests in the <sportsauthorityshop.com> domain name.

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

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, The Sports Authority Michigan, Inc., holds rights in the SPORTS AUTHORITY mark, registered on the Principal Register of the U.S. Patent and Trademark Office (“USPTO”) on February 28, 1989 (U.S. Reg. No. 1,527,526).  Under this mark, Complainant has become the largest national full-line sporting goods retailer in the U.S., with sales of $1.4 billion during the 2001 fiscal year.  Today, Complainant operates 201 stores in the U.S. and an additional 35 stores in Japan, and employs over 12,000 people.

In addition to operating hundreds of retail stores, Complainant maintains a significant presence on the Internet. Complainant operates an e-commerce website at <thesportsauthority.com>, also accessible from the <sportsauthority.com> domain name. In 2000, its <thesportsauthority.com> was named the #2 overall shopping website on the Internet.

Respondent, Tim Akre a/k/a Sports Authority Shop, registered the <sportsauthorityshop.com> domain name on November 15, 2002, and is not licensed or authorized to use Complainant’s SPORTS AUTHORITY mark for any purpose. Respondent has commenced preparations to sell a variety of discounted golf clubs at the disputed domain name.

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 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 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 the SPORTS AUTHORITY mark through registration on the Principal Register of the USPTO as well as through widespread and continuous use of the mark in commerce.

Respondent’s <sportsauthorityshop.com> domain name is confusingly similar to Complainant’s SPORTS AUTHORITY mark.  Other than the inconsequential deletion of the space between the words SPORTS and AUTHORITY, Respondent has registered a domain name which entirely incorporates Complainant’s mark.  Respondent’s addition of the generic word “shop” does not distinguish the domain name from the mark for the purposes of Policy ¶ 4(a)(i), especially considering that Complainant operates an online “shop” at its <sportsauthority.com> domain name. See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business).

Accordingly, the Panel finds that the <sportsauthorityshop.com> domain name is confusingly similar to Complainant’s SPORTS AUTHORITY mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Complainant carries the initial burden of demonstrating that Respondent has no rights or legitimate interests in the <sportsauthorityshop.com> domain name.  Complainant can meet its burden with a showing that Policy ¶¶ 4(c)(i)-(iii) does not apply 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 with respect to 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 G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).

Complainant’s uncontroverted allegations aver that Respondent intends to operate a commercial website at the <sportsauthorityshop.com> domain name, selling discounted golf clubs.  Any sales of sporting goods from the infringing domain name, done in competition with Complainant’s own website, is not a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i), nor is this use of Complainant’s mark a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that “[I]t would be unconscionable to find a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to Complainant’s mark and for the same business”).

Both parties in this dispute are domiciled in the U.S., and Complainant registered its SPORTS AUTHORITY mark on the Principal Register of the USPTO years before Respondent registered the disputed domain name.  Given the widespread fame of Complainant’s mark in the U.S. and Respondent’s failure to submit a response to the Complaint stating otherwise, the Panel finds that Respondent is not “commonly known by” the name SPORTS AUTHORITY SHOP or <sportsauthorityshop.com>, pursuant to Policy ¶ 4(c)(ii). See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <sportsauthorityshop.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent registered a domain name that differs from Complainant’s famous mark by one inconsequential and generic word. Respondent’s <sportsauthorityshop.com> domain name was thus designed to create a “likelihood of confusion” in the minds of Internet users as to the “source, sponsorship, affiliation, or endorsement” of the domain name. Respondent deliberately created this likelihood of confusion, and is using the domain name to host a commercial website which it will use to sell products that directly compete with Complainant. In “intentionally attempting to attract” Internet users “for commercial gain” Respondent’s activities evidence bad faith use and registration pursuant to Policy ¶ 4(b)(iv). See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though Respondent has not used the domain name because “It makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”); 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 the Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).

The Panel thus finds that Respondent registered and used the <sportsauthorityshop.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <sportsauthorityshop.com> domain name be TRANSFERRED from Respondent to Complainant.

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

Dated:  April 4, 2003

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