The Sports Authority Michigan, Inc. v. Haywood Jablome
Claim Number: FA0209000124861
Complainant is The Sports Authority Michigan, Inc., Fort Lauderdale, FL (“Complainant”) represented by Robert S. Gurwin, of Rader Fishman & Grauer PLLC. Respondent is Haywood Jablome, New York, NY (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwsportauthority.com>, registered with OnlineNIC.com.
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 10, 2002; the Forum received a hard copy of the Complaint on September 10, 2002.
On September 11, 2002, OnlineNIC.com confirmed by e-mail to the Forum that the domain name <wwwsportauthority.com> is registered with OnlineNIC.com and that Respondent is the current registrant of the name. OnlineNIC.com has verified that Respondent is bound by the OnlineNIC.com 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 11, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 1, 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 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 name be transferred from Respondent to Complainant.
The <wwwsportauthority.com> domain name is confusingly similar to Complainant’s THE SPORTS AUTHORITY mark.
Respondent has no rights or legitimate interests in the <wwwsportauthority.com> domain name.
Respondent registered and used the <wwwsportauthority.com> domain name in bad faith.
Respondent failed to submit a Response in this proceeding.
Complainant is a licensee of The Sports Authority, Inc. (TSA), which is the largest national full-line sporting goods retailer in the United States. TSA owns a United States Patent and Trademark Office registration for the mark THE SPORTS AUTHORITY (Reg. No. 1,527,526). The mark was first use by TSA in 1987 and received registration status on February 18, 1989. Complainant is fully authorized to use the mark THE SPORTS AUTHORITY.
The first THE SPORTS AUTHORITY sporting goods store was opened in Fort Lauderdale, Florida in 1987. By 1995, TSA expanded to 136 stores in 26 states and in Canada, and reached $1 billion in sales. Currently, there are 201 THE SPORTS AUTHORITY stores in the United States and 35 stores in Japan, authorized to use the mark through licensing agreements.
TSA heavily advertises the mark THE SPORTS AUTHORITY through a wide variety of amateur and professional sports teams, events and arenas. In addition, TSA developed a commercial website to promote and enhance THE SPORTS AUTHORITY related services in 1999, <thesportsauthority.com>.
Respondent registered the <wwwsportauthority.com> domain name on January 7, 2002. Respondent does not actively use the domain name to resolve to a website with content. However, upon registering the domain name, Respondent signed up for TSA’s affiliate program, whereby TSA pays other domain name holders who direct Internet traffic to TSA’s <thesportsauthority.com> website. If a diverted Internet user were to purchase something at TSA’s website Respondent would receive a commission.
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 its rights in the mark THE SPORTS AUTHORITY through proof of registration with the USPTO and continuous use of the mark dating back to 1987.
Respondent’s <wwwsportauthority.com> domain name is predominantly similar to Complainant’s THE SPORTS AUTHORITY mark. The differences between the domain name and the mark are simple. First, the domain name contains “www” in the second- level domain, which is a common technique used by individuals seeking to register another entity’s mark. Second, the domain name omits the word “the” from Complainant’s THE SPORTS AUTHORITY mark. Lastly, Respondent’s domain name makes the “SPORTS” part of the mark singular; the dominant portion of the second-level domain is “sportauthority.” All of these minor changes are common typographical errors that Internet users may make when searching for Complainant’s goods and services and thus the changes are inconsequential. Hence, the <wwwsportauthority.com> domain name is confusingly similar to Complainant’s THE SPORTS AUTHORITY mark. 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”); see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to the Complainant’s STATE FARM mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
As part of its prima facie case, Complainant contends that Respondent has no rights or legitimate interests in the <wwwsportauthority.com> domain name. Complainant has satisfied its burden and successfully shifted the burden of proof onto Respondent to articulate its rights or legitimate interests in the domain name. Respondent, however, has failed to submit a Response and thus Complainant’s allegations remain uncontested. Therefore, the Panel presumes that Respondent has no rights or legitimate interests in the domain name. 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); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Furthermore, due to Respondent’s failure to come forward, the Panel accepts all reasonable allegations as true and will draw all reasonable inferences in favor of Complainant. See 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”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).
Respondent does not actively use the <wwwsportauthority.com> domain name in connection with a website and has failed to show demonstrable plans to use the domain name. Respondent has held the domain name less than a year and such an amount of time is normally insufficient to find passive holding of a domain name. Respondent, however, signed up for TSA’s affiliate program upon registering the domain name. Under the affiliate program a domain name holder uses its domain name to direct Internet traffic to Complainant’s home website, <thesportsauthority.com>. Additionally, every diverted shopper that purchases something from Complainant creates a commission for the domain name holder. Hence, it was Respondent’s intent to profit off of the domain name, which is a misspelling of Complainant’s mark, from Complainant itself. Thus, it is clearly evident from Respondent’s conduct that it lacks rights and legitimate interests in the domain name under Policy ¶ 4(c)(i) and (iii). See Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any notice of the dispute, the Respondent had not used the domain names in connection with any type of bona fide offering of goods and services); see also Encyclopaedia Brittanica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (finding that fair use does not apply where the domain names are misspellings of Complainant's mark).
Complainant never authorized Respondent to use the mark THE SPORTS AUTHORITY for any reason, let alone to profit from a misspelled version of the mark. The only information regarding Respondent’s identity indicates that Respondent is known as “Haywood Jablome.” There exists no evidence that would allow the conclusion that Respondent is commonly known by the <wwwsportauthority.com> domain name. Therefore, Respondent has no rights or legitimate interests in the <wwwsportauthority.com> domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent apparently was aware of Complainant’s interests in the mark THE SPORTS AUTHORITY because Respondent’s <wwwsportauthority.com> domain name is comprised of common infringing characteristics, namely, “www” in the second-level domain and a misspelled version of Complainant’s mark. In addition, Respondent sought to associate the mark with Complainant’s <thesportsauthority.com> domain name for profit from Complainant. Respondent clearly intended to profit from a related version of the mark THE SPORTS AUTHORITY without obtaining a license from Complainant. Respondent’s infringing behavior evidences bad faith registration and use under Policy ¶ 4(a)(iii). See Kraft Foods (Norway) v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (finding that the fact “that the Respondent chose to register a well known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").
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 the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <wwwsportauthority.com> be transferred from Respondent to Complainant.
Sandra Franklin, Panelist
Dated: November 4, 2002
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