Academy, Ltd., d/b/a Academy Sports & Outdoors v. Charlie Kalopungi
Claim Number: FA1009001347406
Complainant is Academy, Ltd., d/b/a Academy Sports & Outdoors ("Complainant"), represented by Wendy C. Larson, Texas, USA. Respondent is Charlie Kalopungi ("Respondent"), Seychelles.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <academyspoorts.com> and <academysportsanoutdoors.com>, registered with MONIKER ONLINE SERVICES, 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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 20, 2010; the National Arbitration Forum received payment on September 21, 2010.
On September 21, 2010, MONIKER ONLINE SERVICES, INC. confirmed by e-mail to the National Arbitration Forum that the <academyspoorts.com> and <academysportsanoutdoors.com> domain names are registered with MONIKER ONLINE SERVICES, INC. and that Respondent is the current registrant of the names. MONIKER ONLINE SERVICES, INC. has verified that Respondent is bound by the MONIKER ONLINE SERVICES, INC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 23, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 13, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@academyspoorts.com and postmaster@academysportsanoutdoors.com. Also on September 23, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 27, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 the Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <academyspoorts.com> and <academysportsanoutdoors.com> domain names are confusingly similar to Complainant’s ACADEMY.COM mark.
2. Respondent does not have any rights or legitimate interests in the <academyspoorts.com> and <academysportsanoutdoors.com> domain names.
3. Respondent registered and used the <academyspoorts.com> and <academysportsanoutdoors.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 operating over 110 stores. Complainant’s retail stores sell a wide range of goods including sporting goods, apparel, footwear, bicycles, sport bags, backpacks, backyard and patio furniture and accessories, boating and marine products, camping products, fishing products, hunting products, hiking products, and exercise equipment. Complainant owns a trademark registration for its ACADEMY.COM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,834,786 issued April 20, 2004).
Respondent, Charlie Kalopungi, registered the <academyspoorts.com> disputed domain name on June 27, 2010 and the <academysportsanoutdoors.com> domain name on July 9, 2010. The <academyspoorts.com> domain names resolves to a webpage featuring pay-per-click links unrelated to Complainant. Respondent’s <academysportsanoutdoors.com> domain name resolves to a website featuring links that compete with Complainant.
Complainant has provided evidence that Respondent has been the respondent in at least three prior UDRP proceedings all of which resulted in the transfer of the disputed domain names to the respective complainants in those cases. See FG Wilson (Eng’g) Ltd. v. Charlie Kalopungi/AA7 Grp. Ltd., FA 1336834 (Nat. Arb. Forum Sept. 7, 2010); see also Intuit Inc. v. Charlie Kalopungi aa7group@gmail.com, D2010-1172 (WIPO July 9, 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.COM mark based on its registration of the mark with the USPTO (Reg. No. 2,834,786 issued April 20, 2004). The Panel finds that Complainant’s registration of the mark with the USPTO is sufficient to establish Complainant’s rights in the ACADEMY.COM mark for the purpose of Policy ¶ 4(a)(i). 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).”). The Panel also finds that it is irrelevant that Respondent resides or operates in a country other than where the mark is registered. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant asserts that Respondent’s <academyspoorts.com> and <academysportsanoutdoors.com> domain names are confusingly similar to Complainant’s ACADEMY.COM mark. Respondent’s <academyspoorts.com> domain name contains Complainant’s entire mark and merely adds a misspelled version of the descriptive term “sports,” containing an additional letter “o.” The Panel finds that this addition is insufficient to 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.”). Respondent’s <academysportsanoutdoors.com> domain name contains the entirety of Complainant’s mark and adds the descriptive terms “sports” and “outdoors,” as well as the generic term “an.” The Panel finds these additions are not sufficient to avoid a finding of confusing similarity. See Kohler Co., supra; see also AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the <theotheraol.com> and <theotheraol.net> domain names were confusingly similar to the AOL mark, as the addition of common terms to a mark does not distinguish the domain names from the mark). Therefore, the Panel finds that Respondent’s <academyspoorts.com> and <academysportsanoutdoors.com> domain names are confusingly similar to Complainant’s ACADEMY.COM mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights and legitimate interests in the <academyspoorts.com> and <academysportsanoutdoors.com> domain names. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Complainant has made a prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may infer that Respondent does not have rights or legitimate interests in the <academyspoorts.com> and <academysportsanoutdoors.com> domain names. 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). Nevertheless, the Panel will examine the record to determine whether or not Respondent has rights or legitimate interests in the disputed domain names according to the Policy ¶ 4(c) factors.
Complainant asserts that Respondent is not commonly known by the <academyspoorts.com> and <academysportsanoutdoors.com> domain names. The WHOIS information for the disputed domain names lists “Charlie Kalopungi” as the registrant of the domain names. Without evidence in the record to the contrary, the Panel finds that Respondent is not commonly known by the <academyspoorts.com> and <academysportsanoutdoors.com> domain names for the purposes of Policy ¶ 4(c)(ii). See 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); 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).
Complainant argues that Respondent’s <academyspoorts.com> domain names resolves to a webpage featuring pay-per-click links unrelated to Complainant. Complainant further argues that Respondent’s <academysportsanoutdoors.com> domain name resolves to a website featuring links that compete with Complainant. The Panel finds that Respondent’s use of confusingly similar disputed domain names to display pay-per-click links to third-parties, whether unrelated to Complainant or competing with Complainant, is not 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 Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant); 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 that Policy ¶ 4(a)(ii) has been satisfied.
Complainant has provided evidence that Respondent has been the respondent in at least two prior UDRP proceedings all of which resulted in the transfer of the disputed domain names to the respective complainants in those cases. See FG Wilson (Eng’g) Ltd. v. Charlie Kalopungi/AA7 Grp. Ltd., FA 1336834 (Nat. Arb. Forum Sept. 7, 2010); see also Intuit Inc. v. Charlie Kalopungi aa7group@gmail.com, D2010-1172 (WIPO July 9, 2010). The Panel finds that Respondent’s behavior constitutes a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also 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”).
Complainant asserts that Respondent’s <academysportsanoutdoors.com> domain name resolves to a website featuring links that compete with Complainant. The Panel finds that Respondent’s registration and use of the <academysportsanoutdoors.com> domain name to link Internet users to sellers of exercise and sports equipment that directly compete with Complainant 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant alleges that Respondent presumably receives a fee when Internet users visit the disputed domain names and click on the displayed links and are redirected to third-party websites. Complainant further alleges that Respondent has thus intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement of Respondent’s websites and the links displayed on Respondent’s websites. The Panel agrees and finds that Respondent has demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Univ. 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).”); see also 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).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <academyspoorts.com> and <academysportsanoutdoors.com> domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: October 29, 2010
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