Academy, Ltd., d/b/a Academy Sports & Outdoors v. Private Registration (name) c/o Private Registration (name)
Claim Number: FA0911001294451
Complainant is Academy,
Ltd., d/b/a Academy Sports &
Outdoors (“Complainant”), represented by Wendy C. Larson, Texas, USA.
Respondent is Private
Registration (name) c/o Private
Registration (name) (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <academysportsgoods.com>, registered with Bargin Register, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 13, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 16, 2009.
After numerous requests, the Registrar, Bargin Register, Inc., has not confirmed to the National Arbitration that the <academysportsgoods.com> domain name is registered with Bargin Register, Inc. or that the Respondent is the current registrant of the name. Registrar’s non-compliance has been reported to ICANN. The FORUM’s standing instructions are to proceed with this dispute.
On December 2, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 22, 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@academysportsgoods.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 29, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <academysportsgoods.com> domain name is confusingly similar to Complainant’s ACADEMY mark.
2. Respondent does not have any rights or legitimate interests in the <academysportsgoods.com> domain name.
3. Respondent registered and used the <academysportsgoods.com> domain name 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 which owns 110 stores in eleven states. Complainant has operated under its ACADEMY mark for over fifty years. Complainant offers a wide variety of sporting goods under its ACADEMY mark. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its ACADEMY mark (e.g., Reg. No. 1,911,968 issued August 15, 1995).
Respondent registered the <academysportsgoods.com> domain name on March 17, 2008. The disputed domain name resolves to a parked website that features a commercial search engine and hyperlinks relating to Complainant’s competitors in the sporting good retail business.
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 mark with the USPTO (e.g., Reg. No. 1,911,968 issued August
15, 1995). The Panel finds that
Complainant has established rights in the ACADEMY mark pursuant to Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb.
Forum July 12, 2006) (finding that the complainants had established rights in
marks where the marks were registered with a trademark authority); see also Reebok Int’l Ltd. v.
Complainant contends Respondent’s <academysportsgoods.com> domain name is confusingly similar to Complainant’s ACADEMY mark. The disputed domain name includes Complainant’s mark, adds the descriptive terms “sports goods,” which describe Complainant’s sporting good retail business, and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds the additions of descriptive terms and a gTLD fail to sufficiently distinguish the disputed domain name from Complainant’s mark. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Therefore, the Panel finds Respondent’s <academysportsgoods.com> domain name is confusingly similar to Complainant’s ACADEMY mark pursuant to ¶ 4(a)(i).
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 <academysportsgoods.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 that 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 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).
Complainant asserts that Respondent is not authorized to use the ACADEMY mark. Respondent has failed to offer evidence showing Respondent is commonly known by the <academysportsgoods.com> domain name. The WHOIS information on the record is not similar to the disputed domain name 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 <sciencechannelstore.com> domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also 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).
Respondent uses the <academysportsgoods.com> domain name to resolve to a parked website containing a commercial search engine and hyperlinks to Complainant’s competitors in the sporting goods industry. Complainant alleges Respondent receives click-through fees from the hyperlinks featured on the resolving website. The Panel finds Respondent’s use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s <academysportsgoods.com> domain
name resolves to a parked website featuring the aforementioned hyperlinks. Internet users intending to purchase sporting
goods from Complainant may instead purchase sporting goods from a competitor of
Complainant because of Respondent’s use of the confusingly similar disputed
domain name. The Panel finds that this
use of the disputed domain name constitutes a disruption of Complainant’s sporting
goods business, and therefore constitutes bad faith registration and use
pursuant to Policy ¶ 4(b)(iii). See Am. Airlines, Inc. v.
The Panel infers Respondent profits from the disputed domain name through click-through fees resulting from the competing hyperlinks. Because Respondent’s domain name is confusingly similar to Complainant’s ACADEMY mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website and disputed domain name. Respondent attempts to profit from that confusion. The Panel finds that such use constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also 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).
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 <academysportsgoods.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: January 12, 2010
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