Academy, Ltd., d/b/a Academy Sports and Outdoors v. Transure Enterprise Ltd c/o Host Master
Claim Number: FA0909001283916
Complainant is Academy,
Ltd., d/b/a Academy Sports and
Outdoors (“Complainant”), represented by Wendy C. Larson, Texas, USA.
Respondent is Transure Enterprise
Ltd c/o Host Master (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <academysportsandoutdors.com>, <academysportsoutdoor.com>, and <acedamysportsandoutdoors.com>, registered with Above, Inc.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On
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 <academysportsandoutdors.com>, <academysportsoutdoor.com>, and <acedamysportsandoutdoors.com> domain names are confusingly similar to Complainant’s ACADEMY SPORTS + OUTDOORS mark.
2. Respondent does not have any rights or legitimate interests in the <academysportsandoutdors.com>, <academysportsoutdoor.com>, and <acedamysportsandoutdoors.com> domain names.
3. Respondent registered and used the <academysportsandoutdors.com>, <academysportsoutdoor.com>, and <acedamysportsandoutdoors.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Academy Ltd. d/b/a Academy Sports &
Outdoors, is a sporting goods retailer.
Complainant operates 110 stores in at least eleven states. Complainant’s retail stores sell a wide range
of sporting goods including apparel. Complainant
holds a trademark registration with the United States Patent and Trademark
Office (“USPTO”) for its ACADEMY SPORTS + OUTDOORS mark (Reg. No. 3,338,039
issued
Respondent registered the <academysportsandoutdors.com>, <academysportsoutdoor.com>,
and <acedamysportsandoutdoors.com> domain names no earlier
than
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 registered the ACADEMY SPORTS + OUTDOORS
mark with the USPTO (Reg. No. 3,338,039 issued
Complainant alleges Respondent’s <academysportsandoutdors.com>, <academysportsoutdoor.com>,
and <acedamysportsandoutdoors.com> domain names are
confusingly similar to Complainant’s ACADEMY SPORTS + OUTDOORS mark. Each of the disputed domain names subtracts
the symbol “+” and adds the generic top-level domain (“gTLD”) “.com.” The <academysportsandoutdors.com> and <acedamysportsandoutdoors.com>
domain names further add the generic term “and,” and contain common
misspellings of Complainant’s mark. The
Panel finds common misspellings, the removal of a symbol, the addition of a
generic term, and the addition of a gTLD fail to adequately distinguish the
disputed domain names from Complainant’s mark.
See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29,
2001) (finding the <belken.com> domain name confusingly similar to the
complainant's BELKIN mark because the name merely replaced the letter “i” in
the complainant's mark with the letter “e”); see also Adamovske Strojirny
v. Tatu Rautiainen, D2000-1394 (WIPO Dec. 20, 2000) (finding confusing
similarity between the <adast.com> domain name and the complainant’s
three different marks, consisting of a combination of a symbol with the words
“ADAST”, “ADAST dominant” and “ADAST maxima”); see also Victoria’s Secret v.
Plum Promotions, FA 96503 (Nat. Arb. Forum
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have any
rights or legitimate interests in the <academysportsandoutdors.com>, <academysportsoutdoor.com>,
and <acedamysportsandoutdoors.com> domain names. Once Complainant makes a prima facie case in support of its allegations, the burden shifts
to Respondent to prove that it does have rights or legitimate interests
pursuant to Policy ¶ 4(a)(ii). The Panel
finds Complainant has made a sufficient prima
facie case. Due to Respondent’s
failure to respond to the Complaint, the Panel may assume that Respondent does
not have rights or legitimate interests in the disputed 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 Do
the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO
Respondent uses the disputed domain names to resolve to
parked websites featuring commercial search engines and hyperlinks further
containing Complainant’s mark but resolving to websites unrelated to
Complainant. Complainant claims
Respondent receives click-through fees from the search engines and hyperlinks. The Panel finds Respondent’s use of the disputed
domain names is not a bona fide offering
of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or
fair use of the disputed domain names pursuant to Policy ¶ 4(c)(iii). See
Constellation Wines
Complainant asserts that Respondent is not authorized to use the ACADEMY SPORTS + OUTDOORS mark. Respondent failed to offer evidence showing Respondent is commonly known by the <academysportsandoutdors.com>, <academysportsoutdoor.com>, and <acedamysportsandoutdoors.com> domain names. The WHOIS information on the record lists Respondent as “Transure Enterprise Ltd c/o Host Master” and there is no evidence on the record showing Respondent is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges Respondent’s use of the <academysportsandoutdors.com>, <academysportsoutdoor.com>,
and <acedamysportsandoutdoors.com> domain names is a part of a pattern of bad faith use and
registration. Respondent has been a
respondent in numerous UDRP proceedings in which disputed domain names
were transferred from Respondent to the complainants in those cases. See, e.g.,
LEGO Juris A/S v. Above.com Domain Privacy, Host Master / Transure
The Panel infers Respondent profits from the <academysportsandoutdors.com>, <academysportsoutdoor.com>,
and <acedamysportsandoutdoors.com> domain names through
click-through fees resulting from the commercial search engine and unrelated
hyperlinks. Because Respondent’s domain
names are confusingly similar to Complainant’s ACADEMY SPORTS + OUTDOORS mark,
Internet users accessing Respondent’s domain names may become confused as to
Complainant’s affiliation with the resulting website and disputed domain
names. The Panel finds that such use
constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See
Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006)
(holding that the respondent’s previous use of the
<bankofamericanfork.com> domain name to maintain a web directory was
evidence of bad faith because the respondent presumably commercially benefited
by receiving click-through fees for diverting Internet users to unrelated
third-party websites); see also The
Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For
The Panel finds 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 <academysportsandoutdors.com>, <academysportsoutdoor.com>, and <acedamysportsandoutdoors.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: October 27, 2009
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