The Sports Authority Michigan, Inc. v. Internet Hosting
Claim Number: FA0209000124516
Complainant is The Sports Authority Michigan, Inc., Ft. Lauderdale, FL, USA (“Complainant”) represented by Robert S. Gurwin, of Rader, Fishman, Grauer PLLC. Respondent is Internet Hosting, Edmonton, AB, CANADA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wwwsportsauthority.com> and <wwwthesportsauthority.com>, registered with Namescout Corp.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 3, 2002; the Forum received a hard copy of the Complaint on September 3, 2002.
On September 16, 2002, Namescout Corp. confirmed by e-mail to the Forum that the domain names <wwwsportsauthority.com> and <wwwthesportsauthority.com> are registered with Namescout Corp. and that Respondent is the current registrant of the names. Namescout Corp. has verified that Respondent is bound by the Namescout Corp. 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 16, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 7, 2002 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 and email@example.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 October 24, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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 names be transferred from Respondent to Complainant.
A. Complainant’s Submission makes the following assertions:
1. Respondent’s <wwwsportsauthority.com> and <wwwthesportsauthority.com> domain names are confusingly similar to Complainant’s registered THE SPORTS AUTHORITY registered mark.
2. Respondent does not have any rights or legitimate interests in the <wwwsportsauthority.com> and <wwwthesportsauthority.com> domain names.
3. Respondent registered and used the <wwwsportsauthority.com> and <wwwthesportsauthority.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Sports Authority Michigan, Inc., is the holder of the service marks THE SPORTS AUTHORITY (U.S. Reg. No. 1529035, registered on March 7, 1989), THESPORTSAUTHORITY.COM (U.S. Reg. No. 2409389, registered on November 28, 2000), and a host of variations of these marks. Complainant also holds numerous registrations of the mark worldwide, including several in Canada, Respondent’s place of domicile. Complainant was the first North American business to adopt and use THE SPORTS AUTHORITY mark, and the first retailer to adopt and use the word “Authority” as the core element of its identity. Complainant has used the <thesportsauthority.com> domain name since July of 1995, and has subsequently registered over 115 variations of the same. Under this mark, Complainant operates as a retailer for sporting goods, and also sponsors a wide variety of amateur and professional sports teams, events, and arenas.
Respondent, Internet Hosting, registered its <wwwsportsauthority.com> and <wwwthesportsauthority.com> domain names on January 2, 2002. Respondent’s domain names redirect Internet users to Complainant’s <thesportsauthority.com> domain name. Respondent is a member of Complainant’s affiliates program, a program that provides compensation and a commission to a domain holder who directs Internet users to Complainant’s website. Every time a user is directed to Complainant’s website from Respondent’s disputed domains, it receives compensation. Upon discovering this fact, Complainant struck the disputed domain names from its affiliate program. Respondent is not licensed or otherwise authorized to make any use of Complainant’s THE SPORTS AUTHORITY mark for any purpose.
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 the 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 the 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 established rights in its THE SPORTS AUTHORITY mark through registration on the Principal Register of the United States Patent and Trademark Office (“USPTO”), as well as via continuous and widespread use of the mark. Although Complainant’s mark consists of generic words, this does not prevent the Panel from holding that it has sufficient rights to have standing to bring a Complaint. See Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require Complainant to demonstrate ‘exclusive rights,’ but only that Complainant has a bona fide basis for making the Complaint in the first place). In this dispute, Complainant has demonstrated a “bona fide” basis for making this Complaint by demonstrating its widespread, active, and registered use of its mark worldwide.
Respondent’s <wwwsportsauthority.com> and <wwwthesportsauthority.com> domain names are confusingly similar to Complainant’s THE SPORTS AUTHORITY mark. The only differences between the domain names and Complainant’s mark are the removal of the spaces from THE SPORTS AUTHORITY, the addition of “.com” after the mark, and the prefix “www”. The deletion of a space and the addition of a “.com” from a registered mark do not prevent a domain name from being found confusingly similar to a mark under the Policy. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); 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).
Furthermore, Respondent’s addition of “www” before Complainant’s mark is not enough of a variation to prevent a finding of confusing similarity by the Panel. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is confusingly similar to Complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet.”).
The fact that the disputed domain names are a combination of the two descriptive words “sports” and “authority” also fails to prevent a finding of confusing similarity in this dispute. 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).
Accordingly, the Panel finds that the <wwwsportsauthority.com> and <wwwthesportsauthority.com> domain names are confusingly similar to Complainant’s registered THE SPORTS AUTHORITY mark under Policy ¶ 4(a)(i).
Rights or Legitimate Interests
The burden of proving a lack of rights or legitimate interests in the domain names rests initially upon Complainant. Under Policy ¶¶ 4(c)(i-iii), Respondent can rely on an offering of bona fide goods or services connected with the disputed domain names, the fact that it has been commonly known by the domain names, or that it is making a legitimate noncommercial or fair use of the domain names to demonstrate a right or legitimate interest. If Complainant rebuts each of these elements, it has satisfied its burden by successfully addressing any of the specified claims Respondent could make under Policy ¶¶ 4(c)(i-iii), therefore shifting the burden to Respondent. 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).
It is neither a bona fide offerings of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii) when the holder of a domain name that is confusingly similar to an established mark uses the domain name to earn a profit without approval of the holder of the mark. See Gorstew Ltd. v. Carribean Tours & Cruises, FA 94927 (Nat. Arb. Forum July 28, 2000) (finding that Respondent’s use of the disputed domain name to sell the services of Complainant or to attract customers to Complainant, presumably for which Respondents would be paid a fee, is classic trademark infringement, even if the result of same is that some revenue flows to Complainant, the owner of the marks). Respondent has used its <wwwsportsauthority.com> and <wwwthesportsauthority.com> domain names to direct Internet users to Complainant’s website. Pursuant to this plan, Respondent registered with Complainant’s affiliates program, and receives a commission for every sale Complainant made online from a user that came from Respondent’s websites. As Complainant has not licensed Respondent to use its mark, this type of activity is not an offering of bona fide goods or services. Likewise, Respondent is not using the disputed domain names for a legitimate non-commercial or fair use if it is profiting from every approaching Internet user.
Complainant can also find no data supporting the proposition that Respondent is commonly known by the domain names. In linking the disputed domain names directly to Complainant’s website, it can be inferred that Respondent has never been commonly known by these names. See Great S. Wood Pres., Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not commonly known by the domain name <greatsouthernwood.com> where Respondent simply linked the domain name to <bestoftheweb.com>).
Once a complainant has successfully presented its prima facie case illustrating a respondent’s lack of rights or legitimate interests in its domain name, the burden of demonstrating rights and legitimate interests in the domain name shifts to the respondent.
As Respondent submitted nothing to the Panel in Response to the Complaint, Respondent fails to meet that burden. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).
Accordingly, the Panel finds that Respondent does not have any rights or legitimate interests in its domain names under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Although the Policy lists four circumstances that are considered evidence of bad faith registration and use, the circumstances described therein are not exhaustive, but merely illustrative of situations clearly defining bad faith registration and use. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence); see also Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in ¶ 4(b), does not mean that the domain names at issue were not registered in and are not being used in bad faith”).
One example of bad faith use not directly enumerated in the Policy is “typosqatting”, or registering a domain name that is a common mistyping of a mark in which a party has rights. See Yahoo! Inc. v. Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) (finding bad faith where Respondent linked the domain names, which contained the YAHOO! mark, to several of YAHOO!’s own websites). This practice of “typosquatting” has been recognized as a bad faith use of a domain name under the UDRP. See e.g. AltaVista Co. v. Stoneybrook, D2000-0886 (WIPO Oct. 26, 2000) (awarding <wwwalavista.com>, among other misspellings of altavista.com, to Complainant); Dow Jones & Co. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (awarding domain names <wwwdowjones.com>, <wwwwsj.com>, <wwwbarrons.com> and <wwwbarronsmag.com> to Complainants). Registering both the <wwwsportsauthority.com> and <wwwthesportsauthority.com> domain names qualifies as typosquatting, and can be viewed by the Panel as examples of bad faith use.
Policy ¶ 4(b)(iv) itself illustrates an example of bad faith use and registration when dealing with a popular mark. The Policy states that when a domain name is used to intentionally attempt to attract, “for commercial gain, Internet users to [Respondent’s] web site…by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site” it is an example of bad faith use and registration. 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 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). Respondent’s actions are identical to this type of activity.
Complainant has shown clear and uncontested evidence that Respondent, via “typosquatting” and use of its websites to gain a commission from Complainant, acquired and used the disputed domain names in bad faith. 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).
Accordingly, the Panel finds that Respondent both registered and used its domain names in bad faith, and Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <wwwsportsauthority.com> and <wwwthesportsauthority.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra Franklin, Panelist
Dated: November 4, 2002
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