Winmark Corporation d/b/a Play It Again Sports v. Domain Park Limited
Claim Number: FA0709001077566
Complainant is Winmark Corporation d/b/a Play It Again Sports (“Complainant”), represented by Catherine
P. Heaven, 4200 Dahlberg Drive, Suite 100, Minneapolis, MN 55422. Respondent is Domain Park Limited (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <playitagainsportsnorthdekalb.com>, <playitagainsportssd.com> and <playitagainsportstampa.com>, registered with Moniker Online Services, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her 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 September 26, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 16, 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@playitagainsportsnorthdekalb.com, postmaster@playitagainsportssd.com, and postmaster@playitagainsportstampa.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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <playitagainsportsnorthdekalb.com>, <playitagainsportssd.com> and <playitagainsportstampa.com> domain names are confusingly similar to Complainant’s PLAY IT AGAIN SPORTS mark.
2. Respondent does not have any rights or legitimate interests in the <playitagainsportsnorthdekalb.com>, <playitagainsportssd.com> and <playitagainsportstampa.com> domain names.
3. Respondent registered and used the <playitagainsportsnorthdekalb.com>, <playitagainsportssd.com> and <playitagainsportstampa.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant operates over 380 franchises under the PLAY IT AGAIN SPORTS mark and has continuously used the PLAY IT AGAIN SPORTS mark for the sale of used and new sporting goods equipment since at least 1988. Complainant also holds a service registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,562,785 issued October 24, 1989).
Respondent registered the <playitagainsportsnorthdekalb.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
PLAY IT AGAIN SPORTS mark pursuant to Policy ¶ 4(a)(i) through registration
with the USPTO. See
Respondent’s <playitagainsportsnorthdekalb.com>, <playitagainsportssd.com> and <playitagainsportstampa.com> domain names each contain Complainant’s mark in its entirety and then include the generic top level domain (“gTLD”) “.com” and the geographic terms “North Dekalb,” “SD” (these are the state initials for South Dakota), and “Tampa” respectively. Moreover, each disputed domain name omits the spaces between each word. It is well established that the omission of spaces and the inclusion of a gTLD are irrelevant for a Policy ¶ 4(a)(i) analysis. Furthermore, the inclusion of geographic terms will not negate a finding of confusing similarity. As such, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See 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 Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (“as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names,” they are not relevant to a Policy ¶ 4(a)(i) analysis); see also VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between the complainant’s VERISIGN mark and the <verisignindia.com> and <verisignindia.net> domain names where the respondent added the word “India” to the complainant’s mark).
The Panel concludes that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case that Respondent has no
rights or legitimate interests in the disputed domain names. See VeriSign
Inc. v. VeneSign
Respondent has not submitted a response to the
Complaint. Accordingly, the Panel
presumes that Respondent has no rights or legitimate interests in the <playitagainsportsnorthdekalb.com>, <playitagainsportssd.com> and <playitagainsportstampa.com>
domain names, but will still consider all the evidence in the record in light
of the factors listed under Policy ¶ 4(c).
See G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Respondent’s failure to
respond means that Respondent has not presented any circumstances that would
promote its rights or legitimate interests in the subject domain name under
Policy ¶ 4(a)(ii).”); see also CMGI, Inc.
v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the respondent’s
failure to produce requested documentation supports a finding for the
complainant).
Nowhere in Respondent’s WHOIS information or elsewhere in
the record does it indicate that Respondent ever was or is commonly known by
any of the disputed domain names.
Furthermore, Respondent has not sought, nor has Complainant granted
permission for the PLAY IT AGAIN SPORTS mark to be used. Absent any affirmative evidence to the
contrary, the Panel finds pursuant to Policy ¶ 4(c)(ii) that Respondent is not
commonly known by any of the disputed domain names. See 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); see
also Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum
Respondent’s disputed domain names all contain Complainant’s
mark in its entirety and resolve to websites featuring commercial search engines
and sponsored links to third parties, some of whom offer services in direct
competition with those offered under Complainant’s mark. Moreover, two of the disputed domain names
also contain a general offer that the domain names might be for sale. The Panel finds that the Respondent is not
using the disputed domain names in connection with a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) or in a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001)
(stating that the respondent’s use of the complainant’s entire mark in domain
names makes it difficult to infer a legitimate use); see also Golden
Bear Int’l, Inc. v. Kangdeock-ho, FA
190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name
confusingly similar to Complainant’s mark to divert Internet users to websites
unrelated to Complainant's business does not represent 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 also
TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb.
Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the
complainant’s marks to send Internet users to a website which displayed a
series of links, some of which linked to the complainant’s competitors, was not
a bona fide offering of goods or services).
The Panel concludes that Policy ¶ 4(a)(ii) has been satisfied.
The <playitagainsportsnorthdekalb.com> and <playitagainsportssd.com> domain
names both display prominently the suggestion that the “domain may be for sale
by its owner.” The Panel finds in
respect to these two disputed domain names that Respondent has registered and
is now using these disputed domain names in bad faith pursuant to Policy ¶
4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum
Respondent’s disputed domain names all resolve websites
featuring a commercial search engine and sponsored links to third-parties, some
of whom offer services in competition with those offered under Complainant’s
mark. The Panel finds in regards to the <playitagainsportstampa.com>
domain name, that this establishes Respondent’s bad faith registration and use
thereof pursuant to Policy ¶ 4(b)(iii) and in regards to the <playitagainsportsnorthdekalb.com>
and <playitagainsportssd.com>
domain names, this acts as further evidence of bad
faith. See Puckett, Individually v. Miller, D2000-0297 (WIPO
The commercial search engine and sponsored links on the
websites that resolve from the disputed domain names presumably financially
benefit Respondent through the use of click-through fees. The Panel finds this to be additional
evidence of bad faith pursuant to 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 Kmart
v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the
respondent profits from its diversionary use of the complainant's mark when the
domain name resolves to commercial websites and the respondent fails to contest
the complaint, it may be concluded that the respondent is using the domain name
in bad faith pursuant to Policy ¶ 4(b)(iv)).
The Panel concludes 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 <playitagainsportsnorthdekalb.com>, <playitagainsportssd.com> and <playitagainsportstampa.com> domain names be TRANSFERRED from Respondent to Complainant.
Judge Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: November 1, 2007
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