The Sportsman's Guide, Inc. v. Gioacchino Zerbo
Claim Number: FA0909001282973
Complainant is The
Sportsman's Guide, Inc. (“Complainant”), represented by Stephen M. Werner, of Redcats USA,
REGISTRAR
The domain name at issue is <wwwsportsmansguide.com>, registered with Fabulous.com Pty Ltd.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 4, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 8, 2009.
On
On September 14, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 5, 2009 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@wwwsportsmansguide.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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wwwsportsmansguide.com> domain name is confusingly similar to Complainant’s THE SPORTSMAN’S GUIDE mark.
2. Respondent does not have any rights or legitimate interests in the <wwwsportsmansguide.com> domain name.
3. Respondent registered and used the <wwwsportsmansguide.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Sportsman’s Guide, Inc., began as a catalog
and mail order services provider and has continued to provide those services
since May of 1977. In early 1998,
Complainant began to use the THE SPORTSMAN’S GUIDE mark in association with
retail and on-line services, primarily for outdoor recreation products. Complainant holds multiple trademark
registrations with the United States Patent and Trademark Office (“USPTO”) for
its THE SPORTSMAN’S GUIDE mark (e.g., Reg. No. 1,430,664 issued
Respondent, Gioacchino Zerbo, registered the <wwwsportsmansguide.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 holds multiple trademark registrations of the THE
SPORTSMAN’S GUIDE mark with the USPTO (e.g., Reg. No. 1,430,664 issued
Complainant claims Respondent’s <wwwsportsmansguide.com>
domain name is confusingly similar to Complainant’s THE SPORTSMAN’S GUIDE
mark. The disputed domain name removes
the article “the,” the apostrophe between “n” and “s,” and the space between
“sportsmans” and “guide.” The disputed
domain name also adds the prefix, “www,” and adds the generic top-level domain
(“gTLD”) “.com.” The Panel finds the
subtraction of an article and the addition of the prefix “www” fails to
adequately distinguish the disputed domain name from Complainant’s mark. See
Therefore, the Panel finds Respondent’s <wwwsportsmansguide.com> domain name is confusingly similar to Complainant’s THE SPORTSMAN’S GUIDE mark pursuant to Policy ¶ 4(a)(i). The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have any rights or legitimate interests in any of the <wwwsportsmansguide.com> domain name. The burden shifts to Respondent to prove it does have rights or legitimate interests when Complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not have rights or legitimate interests in the <wwwsportsmansguide.com> domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Respondent’s <wwwsportsmansguide.com> domain name resolves to a parked website featuring hyperlinks to Complainant’s competitors who sell outdoor recreation products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry).
Respondent has offered no evidence, and there is no evidence in the record, suggesting that Respondent is commonly known by the <wwwsportsmansguide.com> domain name. Complainant asserts that Respondent is not authorized to use the THE SPORTSMAN’S GUIDE mark. The WHOIS information identifies Respondent as “Gioacchino Zerbo.” Therefore, the Panel finds that Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <wwwsportsmansguide.com> domain name to redirect Internet users, interested in Complainant’s services, to Respondent’s parked website featuring links to Complainant’s competitors in the outdoor recreation products industry and a commercial search engine. The Panel finds Respondent’s use of the disputed domain name disrupts Complainant’s outdoor recreation product business, which constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Respondent is using the confusingly similar disputed domain name to resolve to a website offering links to Complainant’s competitors and a commercial search engine. The Panel infers Respondent received click-through fees from these links. Through Respondent’s use of the confusingly similar disputed domain name, Internet users may become confused as to Complainant’s affiliation and sponsorship of the resolving website. The Panel finds Respondent’s use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also University of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds 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 <wwwsportsmansguide.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: October 21, 2009
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