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Generic Top Level Domain Name (gTLD) Decisions |
The Sports Authority Michigan Inc. v.
Batu 5
Claim
Number: FA0307000176541
Complainant is The Sports Authority Michigan Inc.,
Ft. Lauderdale, FL, (“Complainant”) represented by Robert S. Gurwin, of Rader Fishman & Grauer PLLC. Respondent is Batu 5, Kuala Lumpur, Malaysia (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <thesports-authority.com>, registered with
Iholdings.Com, Inc. d/b/a Dotregistrar.Com.
The
undersigned certifies that he or acted independently and impartially and to the
best of his knowledge has no known conflict in
serving as Panelist in this
proceeding.
John
J. Upchurch Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on July 30, 2003; the Forum
received a hard copy of the
Complaint on July 31, 2003.
On
August 07, 2003, Iholdings.Com, Inc. d/b/a Dotregistrar.Com confirmed by e-mail
to the Forum that the domain name <thesports-authority.com> is
registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com and that Respondent
is the current registrant of the name. Iholdings.Com,
Inc. d/b/a
Dotregistrar.Com has verified that Respondent is bound by the Iholdings.Com,
Inc. d/b/a Dotregistrar.Com 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
August 7, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
August 27, 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@thesports-authority.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
September 11, 2003, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the Forum appointed
John J. Upchurch 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <thesports-authority.com>
domain name is confusingly similar to Complainant’s SPORTS AUTHORITY mark.
2. Respondent does not have any rights or
legitimate interests in the <thesports-authority.com> domain name.
3. Respondent registered and used the <thesports-authority.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Since 1989,
Complainant has held a registered trademark with the United States Patent and
Trademark Office for SPORTS AUTHORITY (Reg.
No. 1,527,526) and THE SPORTS
AUTHORITY (Reg. No. 1,529,035), both in relation to retail store services
featuring sporting equipment
and clothing.
With sales of
$1.4 billion in fiscal year 2001, Complainant is the largest national full-line
sporting goods retailer in the United
States.
Complainant operates 201 retail stores in the United States, and an
e-commerce website located at its preferred domain name,
<thesportsauthority.com>,
also accessible at <sportsauthority.com>. Complainant has held the
www.sportsauthority.com domain name since July 1995, and its preferred domain
name was registered in September
1997.
Respondent
registered the disputed domain name on January 31, 2003. Respondent is using the disputed domain name
as part of a scheme to attract shoppers looking for Complainant’s website. The disputed domain name automatically
redirects shoppers from Respondent’s active website to Complainant’s
website. In accordance with
Complainant’s affiliate program, if a shopper, after being redirected, makes a
purchase from Complainant’s website,
Respondent is paid a commission by
Complainant.
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.
Complainant has
established that is has rights in the SPORTS AUTHORITY mark through
registration with the United States Patent and
Trademark Office. Furthermore, the only distinction between
Complainant’s mark and the disputed domain name is the addition of a
hyphen. The addition of a hyphen to
Complainant’s mark does not create a distinct characteristic capable of
overcoming a Policy ¶ 4(a)(i)
confusingly similar analysis. See Nintendo Of Am. Inc. v. This Domain Is For Sale, D2000-1197 (WIPO
Nov. 1, 2000) (finding <game-boy.com> identical and confusingly similar
Complainant’s GAME BOY mark, even
though the domain name is a combination of
two descriptive words divided by a hyphen); see also Easyjet Airline
Co. Ltd. v. Harding, D2000-0398 (WIPO June 22, 2000) (finding it obvious
that the domain name <easy-jet.net> was virtually identical to
Complainant's EASYJET mark and therefore that they are confusingly similar).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to come forward with a Response.
Therefore, the Panel is permitted to make reasonable inferences in favor
of Complainant and accept Complainant’s allegations as true. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000)
(finding that failing to respond allows a presumption that Complainant’s
allegations are true unless
clearly contradicted by the evidence); see also
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”).
Furthermore,
based on Respondent’s failure to respond, it is presumed that Respondent lacks
all rights and legitimate interests in
the disputed domain name. 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 Geocities v.
Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has
no rights or legitimate interest in the domain name because Respondent
never
submitted a Response nor provided the Panel with evidence to suggest
otherwise).
As previously
noted, Respondent has registered the disputed domain name in Complainant’s
affiliate program, with the intention of
profiting off the domain name at
Complainant’s expense, thereby evidencing a lack of rights and legitimate
interests in the domain
name under Policy ¶¶ 4(c)(i) and (iii). See Sports
Auth. Mich., Inc. v. Jablome, FA 124861 (Nat. Arb. Forum Nov. 4, 2002) (by signing up for Complainant’s
affiliate program upon registering the domain name, a misspelling of
Complainant’s mark, Respondent
intended to profit off the domain name at Complainant’s
expense, thereby evidencing a lack of rights and legitimate interests in
the
domain name under Policy ¶¶ 4(c)(i) and (iii)); see also 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).
Respondent
has not come forward with any proof and there is no evidence on record to
establish that Respondent is commonly known by
the disputed domain name or
SPORTS AUTHORITY. Therefore, Respondent
has failed to establish that it has rights or legitimate interests in the
disputed 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); 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).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
In light of the
worldwide fame of the Complainant’s mark, and the reputation of
<sportsauthority.com> as the leading sporting
goods retail site on the Internet,
it is inconceivable that Respondent could have registered the disputed domain
name without actual
knowledge of Complainant’s rights. Under the ICANN Policy, registration of a
domain name which one knows to be identical or confusingly similar to another’s
trademark
is evidence of bad faith registration and use 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").
Further evidence
of Respondent’s bad faith registration and use is Respondent’s registration of
the disputed domain name in Complainant’s
affiliate program. See Sports Auth. Mich., Inc. v. Internet
Hosting, FA 124516 (Nat. Arb. Forum Nov. 4, 2002) (finding that redirecting
Internet users attempting to reach a complainant’s website in
order to gain a
profit off of a complainant is one example of bad faith use and registration
under the Policy); see also 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).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <thesports-authority.com> domain name be TRANSFERRED
from Respondent to Complainant.
John
J. Upchurch , Panelist
Dated: September 23, 2003
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