Academy, Ltd., d/b/a Academy Sports & Outdoors v. NA / Ma Ying Jo
Claim Number: FA1112001419818
Complainant is Academy, Ltd., d/b/a Academy Sports & Outdoors (“Complainant”), represented by Wendy C. Larson of Pirkey Barber LLP, Texas. USA. Respondent is NA / Ma Ying Jo (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <academysportscards.com>, registered with RegisterMatrix.com Corp.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 13, 2011; the National Arbitration Forum received payment on December 15, 2011.
On December 19, 2011, RegisterMatrix.com Corp. confirmed by e-mail to the National Arbitration Forum that the <academysportscards.com> domain name is registered with RegisterMatrix.com Corp. and that Respondent is the current registrant of the name. RegisterMatrix.com Corp. has verified that Respondent is bound by the RegisterMatrix.com Corp. 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 December 21, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 10, 2012 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@academysportscards.com. Also on December 21, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 19, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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" 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 Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <academysportscards.com> domain name is confusingly similar to Complainant’s ACADEMY mark.
2. Respondent does not have any rights or legitimate interests in the <academysportscards.com> domain name.
3. Respondent registered and used the <academysportscards.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 providing goods such as apparel, footwear, sporting goods, bicycles, backpacks, backyard furniture, boating and marine products, camping products, fishing and hunting products, hiking supplies, exercise equipment and other similar supplies. Complainant owns trademark registrations for the ACADEMY mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,911,968 registered August 15, 1995).
Respondent, NA / Ma Ying Jo, registered the <academysportscards.com> domain name on September 12, 2011. The disputed domain name resolves to a website with pay-per-click links to third-party websites, some of which compete with Complainant’s 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 owns trademark registrations with the USPTO for the ACADEMY (Reg. No. 1,911,968 registered August 15, 1995) and related marks. Previous panels have found that complainants have rights in a mark where it has been registered with a federal trademark authority. See 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); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”). Previous panels have also held that to establish rights in a mark, a complainant need not register the mark in the country in which Respondent resides or operates. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Based on these precedential decisions, the Panel here concludes that Complainant has adequately shown that it owns rights to the ACADEMY mark pursuant to Policy ¶4(a)(i).
Complainant argues that Respondent’s disputed domain name, <academysportscards.com>, is confusingly similar to Complainant’s ACADEMY mark pursuant to Policy ¶4(a)(i). Respondent’s disputed domain name contains the exact ACADEMY mark and adds the words “sports” and “cards”. These added words are also likely to be associated with Academy’s products. The Panel finds that adding generic words and a generic top-level domain (“gTLD”) into Complainant’s mark fails to distinguish the Respondent’s disputed domain name from the Complainant’s mark. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also Quixtar Inv., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety the complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Accordingly, the Panel holds that Respondent’s <academysportscards.com> domain name is confusingly similar to Complainant’s ACADEMY mark for the purposes of Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interest in the disputed domain name. Policy ¶4(a)(ii) mandates that Complainant bears the burden of presenting a prima facie case against Respondent before Complainant can shift the burden of proving rights and legitimate interests in the disputed domain name to Respondent. The Panel finds that Complainant has adequately established a prima facie case in these proceedings. Respondent has offered nothing in response, however, and has failed to contest Complainant’s allegations in any way or offer any counter evidence. Prior panels have also determined that the allegations within the Complaint may be considered true where a Respondent fails to submit a Response. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). The Panel will nevertheless consider the evidence presented against the Policy ¶ 4(c) factors to make an independent determination regarding Respondent’s rights and legitimate interests in the disputed domain name.
Complainant contends that Respondent is not commonly known by the disputed domain name. The Panel finds that the WHOIS information, which identifies “NA / Ma Ying Jo” as the registrant, for the disputed domain name does not reflect that Respondent is commonly known by the disputed domain name. Therefore, pursuant to Policy ¶ 4(c)(ii), the Panel finds Respondent is not commonly known by the disputed domain name. 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).
Respondent’s disputed domain name resolves to a website with pay-per-click links to third-party websites, some of which compete with Complainant’s business. The Panel finds that 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 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); see also Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (Panelist Tyrus R. Atkinson, Jr., dissenting) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute 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)).
Complainant also submits evidence to show that after it contacted Respondent about the domain name that Respondent offered to sell the domain name to it for $950. The Panel finds that this offer to sell the domain name to Complainant is further evidence that Respondent does not have rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”).
The Panel finds that Complainant has satisfied Policy ¶4(a)(ii).
Complainant argues that Respondent has shown bad faith in attempting to transfer the domain name to Complainant for valuable consideration in excess of Respondent’s costs directly related to the domain name, as well as Respondent’s attempt to sell the disputed domain name to the general public. The Panel finds Respondent’s efforts to sell to Complainant at an excess out-of-pocket price as well as attempting to sell disputed domain name to the general public constitutes bad faith registration and use under Policy ¶4(b)(i). See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); see also Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name).
Respondent’s disputed domain name resolves to a website containing links to third-party websites, some of which compete with Complainant. This activity clearly disrupts Complainant’s business, as Internet users seeking Complainant’s services will be diverted to sites featuring competing products. The Panel finds that this disruption of Complainant’s business and diversion of Internet users to Complainant’s competitors shows bad faith registration and use under Policy ¶4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); 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)(iii) 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).
Complainant argues that Respondent has shown bad faith registration and use according to Policy ¶ 4(b)(iv). Respondent has done this by intentionally attempting to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s mark. Respondent’s resolving website features links connecting users to other sites competing with Complainant. The Panel agrees with Complainant and finds that Respondent acts in bad faith when creating a likelihood of confusion with Complainant’s mark to attract consumers and financially profit. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also 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).”).
The Panel finds the elements of Policy ¶4(a)(iii) have been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <academysportscards.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: January 26, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page