Sports Holdings, Inc. v. Chen Bao Shui
Claim Number: FA0706001021064
Complainant is Sports Holdings, Inc. (“Complainant”), represented by David
Benck, 3763 Howard Hughes Parkway, Suite 170A, Las Vegas, NV 89169. Respondent is Chen Bao Shui (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <hibbitssportinggoods.com>, registered with Enom, Inc.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On July 10, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 30, 2007 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@hibbitssportinggoods.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 <hibbitssportinggoods.com> domain name is confusingly similar to Complainant’s HIBBETT SPORTS mark.
2. Respondent does not have any rights or legitimate interests in the <hibbitssportinggoods.com> domain name.
3. Respondent registered and used the <hibbitssportinggoods.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Sports Holdings, Inc.,
is a national retailer with over 600 sporting goods stores in 23 states. Complainant deals in the marketing of shoes,
sports apparel and equipment under its HIBBETT SPORTS mark. Complainant holds trademark registrations
with the United States Patent and Trademark Office (“USPTO”),
including the HIBBETT SPORTS mark (Reg. No. 2,717,584 issued
Respondent registered the <hibbitssportinggoods.com> domain name on
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); 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.”).
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.
The Panel finds that Complainant’s trademark registration
with the USPTO sufficiently establishes Complainant’s rights in the HIBBETT SPORTS
mark pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum
The Panel finds that the <hibbitssportinggoods.com> domain name is confusingly similar to Complainant’s HIBBETT SPORTS mark under Policy ¶ 4(a)(i) as it contains the word “hibbit,” which is phonetically identical to Complainant’s mark. The addition of the suffix “ing” and the generic term “goods” does nothing to eliminate the confusing similarity, as the term has an obvious relationship to Complainant’s business as a sporting goods retailer. Furthermore, the addition of the generic top-level domain “.com” does not make the disputed domain name unique under Policy ¶ 4(a)(i), as a top-level domain is required in the creation of all domain names. Accordingly, Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See YAHOO! Inc. v. Murray, D2000-1013 (WIPO Nov. 17, 2000) (finding that the domain name <yawho.com> is confusingly similar to the complainant’s YAHOO mark); see also VeriSign, Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that the pronunciation and spelling between the domain name <venesign.com> and the complainant’s mark, VERISIGN, are so close that confusion can arise in the mind of the consumer); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . .").
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant must first establish that Respondent lacks
rights and legitimate interests with respect to the <hibbitssportinggoods.com> domain name.
Once Complainant makes a prima
facie case, the burden of proof then shifts, and Respondent must prove that
it has rights or legitimate interests in the disputed domain name. In the instant case, the Panel finds
complainant has presented a prima facie
case. See Compagnie Generale des Matieres Nucleaires v.
Greenpeace Int’l, D2001-0376 (WIPO
Respondent has failed to respond to every attempt to
communicate made by Complainant as well as the Complaint which led to this
proceeding. Therefore, it can be
presumed that Respondent lacks all rights and legitimate interests in the <hibbitssportinggoods.com> domain name. See Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the
respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd.,
D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to
respond can be construed as an admission that they have no legitimate interest
in the domain names). With this in mind,
the Panel will examine the record to determine if Respondent has rights or
legitimate interests under Policy ¶ 4(c).
Respondent is using the <hibbitssportinggoods.com> domain name to display hyperlinks to a number of third-party websites, some of which are in direct competition with Complainant. The Panel presumes that Respondent is using the disputed domain name to earn click-through fees, and therefore finds Respondent has not made a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
Furthermore, Respondent’s WHOIS information does not indicate that Respondent is commonly known by the <hibbitssportinggoods.com> domain name and there is nothing in the record to suggest that Respondent is commonly known by the disputed domain name. Additionally, Complainant asserts that Respondent is neither authorized nor licensed to use Complainant’s HIBBETT SPORTS mark. This indicates that Respondent has no rights or legitimate interests in the disputed domain name. See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the 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 the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name). Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Based on unchallenged evidence provided by Complainant, the Panel finds that Respondent receives click-through fees for the hyperlinks displayed on the website that resolves from the <hibbitssportinggoods.com> domain name. The Panel also finds that the disputed domain name registered to Respondent is capable of creating a likelihood of confusion as to Complainant’s affiliation with the disputed domain name and resulting website. This commercial benefit constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent has attempted to commercially benefit from the misleading <qwestwirless.com> domain name by linking the domain name to adult oriented websites, gambling websites, and websites in competition with Complainant. Respondent’s attempt to commercially benefit from the misleading domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”).
Additionally, the Panel finds that Respondent is using the <hibbitssportinggoods.com> domain name to redirect
Internet users to a website that contains hyperlinks to third-party websites, some
of which are in direct competition with Complainant. Use such as this constitutes a disruption of
Complainant’s business and qualifies as bad faith registration and use under
Policy ¶ 4(b)(iii). See Puckett,
Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the
respondent has diverted business from the complainant to a competitor’s website
in violation of Policy ¶ 4(b)(iii)); see also EBAY, Inc. v. MEOdesigns, D2000-1368
(WIPO Dec. 15, 2000) (finding that the respondent registered and used the
domain name <eebay.com> in bad faith where the respondent has used the
domain name to promote competing auction sites).
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 <hibbitssportinggoods.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: August 13, 2007
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