Sports Holdings, Inc. v. Domain Administration Limited c/o David Halstead
Claim Number: FA0706001021078
Complainant is Sports Holdings, Inc. (“Complainant”), represented by David
Benck, 3763 Howard Hughes Parkway, Suite 170A, Las Vegas, NV 89169. Respondent is Domain Administration Limited c/o David
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hibbetssports.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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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 <hibbetssports.com> domain name is confusingly similar to Complainant’s HIBBETT SPORTS mark.
2. Respondent does not have any rights or legitimate interests in the <hibbetssports.com> domain name.
3. Respondent registered and used the <hibbetssports.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has been continuously using the HIBBETT SPORTS
trademark in connection with the operation of sporting goods stores since 1980. Complainant owns trademark registrations with
the United States Patent and Trademark Office (“USPTO”) for the HIBBETT SPORTS mark
(Reg. No. 2,717,584 issued
Respondent registered the <hibbetssports.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.
Complainant has sufficiently established its rights in the HIBBETT SPORTS mark pursuant to Policy ¶ 4(a)(i) through registration of the mark with the United States Patent and Trademark Office, dating back to the filing date of the application for registration. See Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”); see also J. C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 U.S.P.Q. 435 (C.C.P.A. 1965) (registration on the Principal Register is prima facie proof of continual use of the mark, dating back to the filing date of the application for registration).
Respondent’s <hibbetssports.com> domain name is a misspelling of Complaint’s HIBBETT SPORTS mark that replaces the second “t” with an “s.” The disputed domain name and Complainant’s mark differ further in two ways: (1) the omission of the space between “HIBBETT” and “SPORTS,” and (2) the addition of a generic top-level domain. It is well established that omitted spaces and top level domains are disregarded in a Policy ¶ 4(a)(i) analysis. As such, the Panel finds that the <hibbetssports.com> domain name is confusingly similar to Complainant’s HIBBETT SPORTS mark pursuant to Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Albertson’s, Inc. v. Bennett, FA 117013 (Nat. Arb. Forum Sept. 5, 2002) (“[T]he absence of a space and the hyphen between the words of the mark are not changes that are capable of overcoming a Policy ¶ 4(a)(i) analysis.”); 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).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii),
Complainant must initially make out a prima
facie case that Respondent has no rights or legitimate interest in the
domain name at issue. See VeriSign Inc. v.
Respondent has failed to submit a response to the
Complaint. The Panel thus presumes that Respondent
has no rights or legitimate interests in the <hibbetssports.com> domain name, but will still consider all
available evidence with respect to the factors listed in Policy ¶ 4(c) before
making this determination. See America Online, Inc. v. AOL Int'l,
Respondent’s WHOIS information does not indicate that Respondent is commonly known by the <hibbetssports.com> domain name, nor is there any other information in the record to indicate that Respondent is or ever has been known by the disputed domain name. Further, Respondent has not sought, nor has Complainant granted, a license or permission to Respondent to use Complainant’s mark in any way. Therefore, the Panel finds that Respondent is not commonly known by 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 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).
Respondent is not using the <hibbetssports.com> domain
name in connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair way pursuant to Policy
¶ 4(c)(iii). The <hibbetssports.com>
domain name is being used as a
commercial search engine and features sponsored links to third parties, some of
which are in direct competition with Complainant’s mark. These hyper links presumably provide
Respondent compensation. The Panel finds
that this is further evidence that the Respondent has no rights or legitimate
interests in the disputed domain name pursuant to either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).
See 24 Hour Fitness
USA, Inc. v. 24HourNames.com-Quality Domains For
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
The disputed domain names resolve to a web page that features hyperlinks to third parties which offer goods and services that are in direct competition with those offered under Complainant’s mark. This is presumed to disrupt Complainant’s business. The Panel finds that Respondent registered and used the <hibbetssports.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Tribeca Film Ctr., Inc. v. Brusasco-Mackenzie, D2000-1772 (WIPO Apr. 10, 2001) (holding that “a respondent can ‘disrupt the business of a competitor’ only if it offers goods or services that can compete with or rival the goods or services offered by the trademark owner”); 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).
Respondent’s <hibbetssports.com> domain name resolves
to a website featuring a commercial search engine and sponsored links to direct
competitors of Complainant. It is
presumed that such links commercially benefit the Respondent through the accrual
of click-through-fees. Consequently, the
Panel finds this to be further evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hibbetssports.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: August 20, 2007
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