American Sports Licensing, Inc. v. Privacy Protect / Privacy Protection
Claim Number: FA1111001414168
Complainant is American Sports Licensing, Inc. (“Complainant”), represented by David A. Wheeler of Greenberg Traurig, LLP, Illinois, USA. Respondent is Privacy Protect / Privacy Protection (“Respondent”), represented by Jennifer D. Collins of The Ollila Law Group, LLC, Colorado, USA
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dickssporting.com>, registered with DYNAMIC DOLPHIN, INC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol Stoner, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 3, 2011; the National Arbitration Forum received payment on November 7, 2011.
On November 8, 2011, DYNAMIC DOLPHIN, INC. confirmed by e-mail to the National Arbitration Forum that the <dickssporting.com> domain name is registered with DYNAMIC DOLPHIN, INC. and that Respondent is the current registrant of the name. DYNAMIC DOLPHIN, INC. has verified that Respondent is bound by the DYNAMIC DOLPHIN, 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 November 10, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 30, 2011 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@dickssporting.com. Also on November 10, 2011, 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.
A timely Response was received and determined to be complete on November 21, 2011.
On November 29, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Carol Stoner, Esq., as Panelist.
Complainant requests that the domain name <dickssporting.com> be transferred from Respondent to Complainant. Respondent stipulates to the transfer of the domain name.
Respondent has consented to transfer of its <dickssporting.com> domain name to Complainant and has pro-offered a settlement offer to Complainant on November 14, 2011, which was rejected by Complainant. However, after the initiation of this proceeding, Dynamic Dolphin, Inc. placed a hold on Respondent’s account. Therefore, Respondent cannot transfer the disputed domain while this proceeding is pending.
In such a situation, the Panel is empowered, in an exercise of judicial expediency, to forego the traditional UDRP analysis and to order forthwith, an immediate transfer of the <dickssporting.com> name. However, this Panel,
in order to foster the transparency of the UDRP tribunal process, declines to take this eclipsed action. See Graebel Van Lines, Inc. v. Texas Int’l Prop. Assocs., FA 1195954 (Nat. Arb. Forum July 17, 2008), (wherein the Panel concluded that the transfer of the disputed domain name deserves to be analyzed along with the findings in accordance with the Policy.)
Further, Complainant, as evidenced by its November 14, 2011 rejection of Respondent’s offer of a no-cost transfer of the disputed name, has not implicitly consented to the transfer of the domain, without a decision on the merits by the Panel.
PARTIES' CONTENTIONS
A. Complainant
Dick’s Sporting Goods, commenced in 1948, is a full-line sporting goods retailer, which sells brand name sporting goods equipment, apparel and footwear in an online and retail store environment. By 1958, the retailer expanded its product line to include much of what customers now find at Dick’s Sporting Goods.
As of May 17, 2011, Dick’s Sporting Goods operated 447 stores in 42 states, 81 Golf Galaxy stores in 30 states and e-commerce and catalog operations for both Dick’s Sporting Goods and Golf Galaxy.
Complainant contends that the Dick’s Sporting Goods Marks are used extensively in connection with Dick’s Sporting Good’s internet-based marketing services and sales channel, namely <dickssportinggoods.com> and has attached screen shots as Exhibit D to evidence same.
The offending domain incorporates Complainant’s mark and is confusingly similar to the DICKSSPORTINGGOODS.COM Mark, as the only distinction is the missing element “goods.” Complainant contends that the word “goods” is generic and does not distinguish the disputed name from their mark because “dickssporting” is the dominant part of both the legitimate and the disputed domain names. Complainant contends that there is a confusing similarity between both marks’ appearance, sound and meaning.
Complainant further contends that Respondent has no rights or legitimate interests in the offending domain. Respondent has no trademark applications, registrations or other intellectual property rights to the domain, is not commonly known as <dickssporting.com> and use of the marks and logo is unauthorized.
Respondent has never operated any bona fide or legitimate business in conjunction with the offending domain and is not making a protected non-commercial or fair use of the offending domain. Rather, Respondent uses the offending domain and Dick’s logo, in conjunction with URL’s such as <easysurveyguide.com> and <surveytakealive.com> to direct Internet users to pay-per-click advertising pages, which promote other types of goods and services which are similar to and competitive with Complainant’s goods.
Complainant contends that the offending domain was registered and used in bad faith.
Complainant alleges the following evidence of Respondent’s bad faith registration. Respondent posted content on its website that includes the Dick’s Sporting Goods Marks and logo and targeted its website toward competing consumers for commercial gain. Respondent has at least constructive notice or knowledge of the marks because of Complainant’s registration of the marks with the United States Patent and Trademark Office (“USPTO”).
Complainant further contends that Respondent has actual knowledge of the marks due to the obvious connection between the unauthorized use of the “Dick’s logo” and the content featured on Respondent’s website, namely links to Dick’s Sporting Goods and Golf Galaxy competitors. This creates a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation and/or endorsement of the Respondent’s websites. The mere fact that Respondent has registered or acquired the offending domain, which incorporates the trademark of a well-known retail company, is alone sufficient to give rise to an inference of bad faith.
Complainant contends that the offending domain name was used in bad faith in that Respondent uses this domain to misdirect Internet users seeking information about Complainant’s goods and services to a website that offers click-through advertising programs, thereby attempting financial gain by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation and/or endorsement of the Respondent’s website.
B. Respondent
Respondent alleges that it did not register the disputed domain name <dickssporting.com> in bad faith, but rather acquired the name as part of a bulk transfer.
Nevertheless, Respondent states that the <dickssporting.com> domain name is not critical to its business and therefore, stipulates to its transfer, in the interest of cost savings. Complainant rejected Respondent’s settlement offer of November 14, 2011 to a no-cost transfer of the disputed domain name.
Respondent lastly contends that when a Respondent stipulates to a transfer of a domain name to Complainant, that the Panel need only transfer the domain name, without issuing an opinion on the merits of the case.
FINDINGS
(1) the domain name, <dickssporting.com>, 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.
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."
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:
(4) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(5) Respondent has no rights or legitimate interests in respect of the domain name; and
(6) the domain name has been registered and is being used in bad faith.
Complainant claims that it has rights in three trademarks that it has registered with the United States Patent and Trademark Office ("USPTO") as follows:
Mark Reg. No. Filing Date Reg. Date
DICK’S CLOTHING & SPORTING GOODS 1,557,325 5-9-1988 9-19-1989
DICK’S SPORTING GOODS and Design 3,239,877 8-18-2006 5-8-2007
DICKSSPORTINGGOODS.COM 2,621,711 2-1-1999 9-17-2002
This Panel finds that Complainant’s trademark registrations with the USPTO, as evidenced by its Exhibit C, affirmatively establish its rights in the marks under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
This Panel further finds that Complainant’s rights in the DICK’S CLOTHING & SPORTING GOODS, DICK’S SPORTING GOODS and Design, and DICKSSPORTINGGOODS.COM Marks date back to the filing dates of the trademark registrations: that is, May 9, 1988; August 18, 2006; and February 1, 1999; respectively. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Complainant argues that the <dickssporting.com> domain name is confusingly similar to its federally registered DICKSSPORTINGGOODS.COM mark. This Panel notes that the domain name in question merely removes the term “goods” from the mark. “Goods” is essentially an inoperative or inert “collective” part of speech, which term fails to distinguish the marks as to their appearance sound, meaning and connotation. That is, the dominant and distinguishable portion of the corresponding marks is “dicks sporting,” which terms are not only identical in both parties’ marks, but are employed to portray an identical array of consumer products. Therefore, this Panel concludes that the Respondent’s domain name of <dickssporting.com> is confusingly similar to Complainant’s Marks under Policy ¶ 4(a)(i). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’ mark in that it merely omits the descriptive term ‘personal.’”); see also Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show that it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA
780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
This Panel notes that the WHOIS information for the disputed domain name identifies “Privacy Protect / Privacy Protection” as the domain name registrant, which registrant name the Panel finds to be dissimilar from the domain name. Complainant disavows any consent given to Respondent, or any authorization of the use or license of Complainant’s Marks by the Respondent. Based upon this evidence, this Panel finds that Respondent is not commonly known by the <dickssporting.com> domain name pursuant to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also 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).
Complainant shows, through its Exhibit E, that Respondent uses the disputed domain name to resolve to two different survey type websites that eventually lead Internet users to pay-per-click advertising pages, which contain links to goods and services that are competitive in nature to Complainant’s offerings.
This Panel finds that Respondent’s use of the domain name as noted above is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Homer TLC, Inc. v. Wang, FA 1336037 (Nat. Arb. Forum Aug. 23, 2010) (holding that, where a disputed domain name purports to offer Internet users a gift card as compensation for filling out surveys, the Respondent’s use of the disputed domain name amounts to neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
Complainant has thus made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The burden then shifts to Respondent to show that it does have rights or legitimate interests. Respondent, in its abbreviated response, sans exhibits, speaks briefly to its belief that it did not register the disputed domain in bad faith, through its purchase of same in bulk purchase. Said Response is lacking in any proof that it does have rights or legitimate interests in the Mark. For example, Respondent has shown no evidence that it is commonly known by the disputed domain name of <dickssporting.com>, nor that it owns trademark or other intellectual property rights in the offending domain name through consent, authorization or bona fide use. Thus, Respondent has not met its reciprocal burden of proof, and therefore, lacks rights or legitimate interests under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith: Policy ¶ 4 (a) (iii).
Respondent’s brief response contains a denial that it registered the disputed name <dickssporting.com> in bad faith, citing that it did not acquire the disputed domain in bad faith, as the acquisition occurred as part of a bulk name transfer. This Panel rules that a “bulk name transfer” does not rise to the level of the defense of “good faith adoption” as even a cursory examination of the contents of the purchased transfer would reveal the existence of the confusingly similarity between the purchased inventory and such a well-known trademark as DICK’S SPORTING GOODS. Albeit a hypothetical lack of trademark recognition, the Respondent is charged with at least constructive notice or knowledge of the marks because of Complainant’s registration of the marks with the United States Patent and Trademark Office. See Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the U.S.P.T.O., a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”); Victoria’s Cyber Secret Ltd. v .V Secret Catalogue, Inc., 161 F. Supp. 2d 1339, 1349 (S.D. Fla. 2001) (noting that “a Principal Register registration of a trademark or servicemark is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. §1072”).
While constructive notice has not been generally held to suffice for a finding of bad faith registration and use, this Panel nonetheless finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) as Respondent is found to have had actual notice of Complainant’s trademark rights. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
Complainant’s Exhibit D consists of a webpage screenshot from Complainant’s<dickssportinggoods.com> web site. This webpage features the official DICK’S logo, a pictorial of sport figures in action shots and a classified array of sporting goods and apparel. Complainant’s Exhibit E is a printout of Respondent’s website to which the disputed domain resolves. The wallpaper of this website is a montage of sport action figures, in the performance of such activities as golf and football. This resolving website contains links to Dick’s Sporting Goods and Golf Galaxy’s competitors. The Panel’s consideration of Exhibit D and E in conjunction, is persuasive proof that Respondent had actual knowledge of Complainant’s Marks, due to the obvious connection between like logos and the corresponding presumed sale of sporting goods, which creates a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation and/or endorsement of the Respondent’s websites. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between Complainant’s mark and the content advertised on Respondent’s website was obvious, Respondent “must have known about the Complainant’s mark when it registered the subject domain name”).
Complainant’s Exhibit E is a printout of a website to which the disputed domain resolves, which directs Internet users to a pay-per-click advertising page which promotes competitive goods and services. Thus, the Respondent is using the domain name at issue to display links to competing websites for commercial gain. The Panel finds that such use disrupts Complainant’s business and is evidence of bad faith registration and use 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).
In light of the above cited evidence, the Panel rules that Respondent has registered and has used the domain name of <dickssporting.com> in bad faith, in accordance with 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 <dickssporting.com> domain name be TRANSFERRED from Respondent to Complainant.
Carol Stoner, Esq. Panelist
Dated: December 13, 2011
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