American Sports Licensing, Inc. v. Above.com Domain Privacy
Claim Number: FA1201001425916
Complainant is American Sports Licensing, Inc. (“Complainant”), represented by David A. Wheeler of Greenberg Traurig, LLP, Illinois, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dkssportinggoods.com>, registered with ABOVE.COM PTY LTD.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 20, 2012; the National Arbitration Forum received payment on January 23, 2012.
On January 23, 2012, Above.Com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <dkssportinggoods.com> domain name is registered with Above.Com Pty Ltd. and that Respondent is the current registrant of the name. Above.Com Pty Ltd. has verified that Respondent is bound by the Above.Com Pty Ltd. 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 January 25, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 14, 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@dkssportinggoods.com. Also on January 25, 2012, 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 February 16, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant operates sporting goods stores under its DICKS SPORTING GOODS mark.
Complainant also owns a trademark registration, on file with the United States Patent and Trademark Office ("USPTO"), for the mark DICKSSPORTING-GOODS.COM (Reg. No. 2,621,711, registered September 17, 2002).
Respondent registered the <dkssportinggoods.com> domain name on August 28, 2011.
The domain name resolves to a website using Complainant's mark and logo, which invites Internet users to enter their email addresses and mobile telephone numbers in order to receive a $500 DICK'S SPORTING GOODS gift card.
Respondent’s <dkssportinggoods.com> domain name is confusingly similar to Complainant’s DICKSSPORTINGGOODS.COM mark.
Respondent is not commonly known by the disputed domain name.
Respondent’s use of Complainant’s DICKSSPORTINGGOODS.COM service mark is unauthorized.
Respondent does not have any rights to or legitimate interests in the domain name <dkssportinggoods.com>.
Respondent registered and uses the <dkssportinggoods.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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."
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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has rights in its DICKSSPORTINGGOODS.COM service mark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See, for example, Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that a complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of Policy ¶ 4(a)(i) for demonstrating rights in a mark). This is true without regard to whether complainant has acquired rights in its mark in the jurisdiction where Respondent resides or does business. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a UDRP respondent operates; it being sufficient that a complainant can demonstrate rights in a mark in some jurisdiction).
The disputed <dkssportinggoods.com> domain name is confusingly similar to Complainant’s DICKSSPORTINGGOODS.COM service mark under Policy ¶ 4(a)(i). The domain name merely omits the letters "i" and "c" from Complainant's mark, which omissions do not alter the essential character or purport of the mark. See Am. Online, Inc. v. David, FA 104980 (Nat. Arb. Forum Apr. 10, 2002):
The misspelling of a famous mark does not diminish the confusingly similar nature between the marks and the disputed domain names.
See also Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to a complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have rights to or legitimate interests in the disputed domain name. Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie case in support of this allegation, whereupon the burden shifts to Respondent to prove that it has such rights or legitimate interests. See, for example, TotalFinaElf E&P USA, Inc. v. Farnes, FA 117028 (Nat. Arb. Forum Sept. 16, 2002):
In order to bring a claim under the Policy, Complainant must first establish a prima facie case. Complainant’s [initial burden] is to provide proof of valid, subsisting rights in a mark that is similar or identical to the domain name in question.
Complainant has presented evidence sufficient to make out a prima facie case under this head of the Policy, thereby shifting the burden to Respondent. Respondent has not responded to the Complaint filed in this proceeding. We are therefore free to presume that Respondent does not have rights to or legitimate interests in the contested domain name. See Wild West Domains, Inc. v. Jung, D2004-0243 (WIPO May 18, 2004):
It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest in the Domain Name . . . .
Nonetheless, we will examine the evidence of record, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent is not commonly known by the disputed domain name, and that Respondent’s use of Complainant’s DICKSSPORTINGGOODS.COM service mark is unauthorized. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as "Above.com Domain Privacy, which does not resemble the disputed domain name. On this record, we conclude that Respondent is not commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in the domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by the <cigaraficionada.com> domain name, and so had no rights to or legitimate interests in that domain name under Policy ¶ 4(c)(ii), based on the WHOIS information and other evidence in the record).
We also observe that Complainant asserts, without objection from Respondent, that Respondent's domain name resolves to a website using Complainant’s mark and logo, which displays an offer for a $500 gift card to Complainant's stores in exchange for user’s entering their email addresses and mobile phone numbers. This use of the domain name 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 Victoria’s Secret Stores Brand Mgmt., Inc. v. egyGossip.com, FA 1288062 (Nat. Arb. Forum Nov. 20, 2009) (holding that the use of a domain name confusingly similar to the mark of another to offer a gift cards in exchange for Internet users’ personal information is not a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Homer TLC, Inc. v. Wang, FA 1336037 (Nat. Arb. Forum Aug. 23, 2010) (finding that the “[r]espondent is not using the disputed domain name 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)” when the disputed domain name resolved to a website that purported to offer Internet users a gift card to the complainant’s stores).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the disputed domain name to redirect Internet users to a website that purports to offer a gift card to Complainant's stores in exchange for personal information. In the circumstances here presented, we may comfortably presume that Respondent intends to profit from this scheme. This behavior stands as evidence that Respondent registered and is using a domain name which is confusingly similar to Complainant’s mark in bad faith under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where a domain name was connected with a complain-ant’s well-known marks, thus creating a likelihood of confusion for a respondent’s commercial gain); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. Privacy Protect, FA 1404667 (Nat. Arb. Forum Sept. 30, 2011) (finding bad faith registration and use under Policy ¶ 4(b)(iv) when a domain name resolved to a website offering gift cards in exchange for providing personal information).
For this reason, the Panel finds that Complainant has met its obligation of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <dkssportinggoods.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 1, 2012
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