national arbitration forum

 

DECISION

 

Winmark Corporation d/b/a Play It Again Sports v. Domain Park Limited

Claim Number: FA0709001077566

 

PARTIES

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”), Vaea Street, Level 2, Lotemau Centre, Apia, Samoa 0185, WS.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <playitagainsportsnorthdekalb.com>, <playitagainsportssd.com> and <playitagainsportstampa.com>, registered with Moniker Online Services, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 14, 2007; the National Arbitration Forum received a hard copy of the Complaint on September 17, 2007.

 

On September 17, 2007, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <playitagainsportsnorthdekalb.com> and <playitagainsportssd.com> domain names are registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the names.  On Sep 21, 2007, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <playitagainsportstampa.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name.  Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 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 October 18, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist.

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

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.

 

FINDINGS

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 August 18, 2007, the <playitagainsportssd.com> domain name on September 4, 2007, and the <playitagainsportstampa.com> domain name September 18, 2007.  All three domain names resolves to websites containing commercial search engines, and sponsored links to third-parties, some of which offer services in direct competition with those offered under Complainant’s mark.  Moreover, the <playitagainsportsnorthdekalb.com> and <playitagainsportssd.com> domain names both display prominently the suggestion that the “domain may be for sale by its owner.”

 

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.  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.

 

Identical and/or Confusingly Similar

 

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 U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).

 

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. 

 

Rights or Legitimate Interests

 

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 C.A., D2000-0303 (WIPO June 28, 2000) (“Respondent's default, however, does not lead to an automatic ruling for Complainant. Complainant still must establish a prima facie case showing that under the Uniform Domain Name Dispute Resolution Policy it is entitled to a transfer of the domain name.”).  The Panel finds that Complainant has done this, and so accordingly the burden shifts to Respondent to prove that it does have rights or legitimate interests in the disputed domain names.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).

 

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 Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).

 

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.

 

Registration and Use in Bad Faith

 

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 Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).

 

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 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 S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).

 

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.

 

DECISION

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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