Academy, Ltd., d/b/a Academy Sports & Outdoors v. Transure Enterprise Ltd c/o Host Master
Claim Number: FA1002001309191
Complainant is Academy, Ltd., d/b/a Academy Sports & Outdoors
(“Complainant”), represented by Wendy C. Larson, Texas, USA. Respondent is Transure Enterprise Ltd c/o Host Master (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <academysprorts.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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 22, 2010; the National Arbitration Forum received a hard copy of the Complaint on February 23, 2010.
On February 22, 2010, Above, Inc. confirmed by e-mail to the National Arbitration Forum that the <academysprorts.com> domain name is registered with Above, Inc. and that Respondent is the current registrant of the name. Above, Inc. has verified that Respondent is bound by the Above, Inc. 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 February 26, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 18, 2010 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@academysprorts.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 26, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 <academysprorts.com> domain name is confusingly similar to Complainant’s ACADEMY SPORTS + OUTDOORS mark.
2. Respondent does not have any rights or legitimate interests in the <academysprorts.com> domain name.
3. Respondent registered and used the <academysprorts.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, holds a trademark registration with the
United States Patent and Trademark Office (“USPTO”) for the ACADEMY SPORTS +
OUTDOORS mark (Reg. No. 3,338,039 issued November 20, 2007) in connection with
retails stores selling a wide range of goods, including sporting goods.
Respondent, Transure
Enterprise Ltd c/o Host Master, registered the <academysprorts.com> domain name on September 6, 2009. The disputed domain name resolves to a
commercial website featuring links to third-party sites, some of which directly
compete with Complainant.
Respondent has been the respondent in at least 58 other UDRP proceedings where the disputed domain name was transferred to the complainant. See Hot Topic, Inc. v. Transure Enterprise Ltd., FA 1301619 (Nat. Arb. Forum January 12, 2010).
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 asserts rights in its ACADEMY SPORTS + OUTDOORS mark
through its holding of a trademark registration for the ACADEMY SPORTS +
OUTDOORS mark with the USPTO (Reg. No. 3,338,039
issued November 20, 2007). The Panel
finds that Complainant has established rights in the ACADEMY SPORTS + OUTDOORS mark
under Policy ¶ 4(a)(i) through its trademark registration with the USPTO. See
Expedia, Inc. v. Tan, FA 991075 (Nat.
Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered
with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Renaissance
Hotel Holdings, Inc. v. Renaissance
Complainant argues that
Respondent’s <academysprorts.com> domain name is confusingly similar to Complainant’s ACADEMY SPORTS +
OUTDOORS mark pursuant to Policy ¶ 4(a)(i).
Respondent’s disputed domain name is confusingly similar because it deletes
the word “outdoors” and the “+” from Complainant’s mark and adds the letter “r”
and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the deletion of a word
from Complainant’s mark creates a confusing similarity between the disputed
domain name and Complainant’s mark. See WestJet Air
Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20,
2001) (finding that the <westjets.com> domain name is confusingly similar
to the complainant’s mark, where the complainant holds the
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Based on the arguments made in the Complaint, the Panel finds that Complainant has established a prima facie case in support of its contentions and Respondent has failed to submit a Response to these proceedings. 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 AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”). Nevertheless, the Panel will examine the record to determine if Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
The WHOIS information lists the registrant as “Transure Enterprise Ltd c/o Host Master.” There does not appear to be any evidence in
the record that Respondent is commonly known by the disputed domain name
pursuant to Policy ¶ 4(c)(ii).
Therefore, the Panel finds that Respondent is not commonly known by the
disputed domain name pursuant to Policy ¶ 4(c)(ii). See
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); 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).
Respondent’s <academysprorts.com> domain name was registered
on September 6, 2009. The disputed
domain name resolves to a commercial website featuring links to third-party
sites, some of which directly compete with Complainant. The Panel finds that Respondent’s use does
not constitute a bona fide offering
of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See 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); see also 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has been the respondent in at least 58 other UDRP proceedings where the disputed domain name was transferred to the complainant in that case. See Hot Topic, Inc. v. Transure Enterprise Ltd., FA 1301619 (Nat. Arb. Forum January 12, 2010). The Panel finds that Respondent’s registration and use of the disputed domain name is part of a pattern that evidences bad faith pursuant to Policy ¶ 4(b)(ii). See Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”); see also Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)).
The Panel finds that Respondent’s use of the <academysprorts.com> to redirect Internet users
seeking Complainant’s website to a website that provides links to Complainant’s
competitors constitutes a disruption of Complainant’s business under Policy ¶
4(b)(iii). See 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)); see also 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).
The Panel finds Respondent’s
use of the confusingly similar domain name to attract Internet users seeking
Complainant’s products and services and divert them to a website featuring
third-party links from which Respondent presumably receives click through fees
is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July
18, 2006) (finding that the respondent engaged in bad faith registration and
use by using a domain name that was confusingly similar to the complainant’s
mark to offer links to third-party websites that offered services similar to
those offered by the complainant); see
also
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 relief shall be GRANTED.
Accordingly, it is Ordered that the <academysprorts.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 9, 2010
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