American Sports Licensing, Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT
Claim Number: FA1201001425948
Complainant is American Sports Licensing, Inc. (“Complainant”), represented by David A. Wheeler of Greenberg Traurig, LLP, Illinois, USA. Respondent is Privacy Ltd. Disclosed Agent for YOLAPT (“Respondent”), Isle of Man.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dikssportinggoods.com>, registered with Fabulous.com Pty Ltd.
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 January 20, 2012; the National Arbitration Forum received payment on January 23, 2012.
On January 23, 2012, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <dikssportinggoods.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.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 27, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 16, 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@dikssportinggoods.com. Also on January 27, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 23, 2012, 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" 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 <dikssportinggoods.com> domain name is confusingly similar to Complainant’s DICKSSPORTINGGOODS.COM mark.
2. Respondent does not have any rights or legitimate interests in the <dikssportinggoods.com> domain name.
3. Respondent registered and used the <dikssportinggoods.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, American Sports Licensing, Inc., uses the DICKSSPORTINGGOODS.COM mark in connection with its operation of retail stores selling sport equipment and clothing. Complainant has registered the DICKSSPORTINGGOODS.COM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,621,711 registered September 17, 2002).
Respondent, Privacy Ltd. Disclosed Agent for YOLAPT, registered the <dikssportinggoods.com> domain name on April 13, 2004. Respondent uses the disputed domain name in connection with advertising pages offering prizes and awards via pop-up advertisements.
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 argues that it is the owner of the DICKSSPORTINGGOODS.COM mark because it has registered the mark with the USPTO (Reg. No. 2,621,711 registered September 17, 2002). Panels have long established that a USPTO trademark registration supports a complainant’s claim of rights in the mark, even when Respondent lives elsewhere. See Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“The Panel finds that Complainant has established trademark rights in the CLEAR BLUE marks through introduction of the certificates for its U.S. registration for those trademarks. The U.S. Trademark Act is clear that the certificate of registration on the Principal Register, as here, is prima facie evidence of the validity of the registered mark and the registrant's exclusive right to use the mark in commerce in on or in connection with the goods specified in the registration.”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). The Panel thus concludes, based on this precedent and Complainant’s trademark registrations, that Complainant has proven its rights in the DICKSSPORTINGGOODS.COM mark for the purposes of Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <dikssportinggoods.com> domain name is confusingly similar to Complainant’s DICKSSPORTINGGOODS.COM mark as the only difference is the omission of the letter “c.” The Panel determines that an attempt to differentiate a disputed domain name from a mark by omitting a single letter is unsuccessful and does not prevent a finding of confusing similarity according to Policy ¶ 4(a)(i). See Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”); see also Myspace, Inc. v. Kang, FA 672160 (Nat. Arb. Forum June 19, 2006) (finding that the <myspce.com> domain name was confusingly similar to the complainant’s MYSPACE mark and the slight difference in spelling did not reduce the confusing similarity). The Panel concludes that Respondent’s <dikssportinggoods.com> domain name is confusingly similar to Complainant’s DICKSSPORTINGGOODS.COM mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
In accord with the procedural burdens laid out in Policy ¶ 4(a)(ii), Complainant presented a prima facie case arguing against Respondent’s rights and legitimate interests that is sufficient to shift the burden of proving rights and legitimate interests to Respondent. See 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”). However, Respondent declined to respond. Therefore, the Panel may assume that Complainant’s allegations are true and hold that Respondent lacks rights and legitimate interests. See 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). The Panel elects to consider the full record, however, in light of the Policy ¶ 4(c) factors in order to make an independent determination on Respondent’s rights and legitimate interests.
Complainant contends that Respondent has no trademark or other intellectual property rights for the disputed domain name and is not commonly known by the disputed domain name. Complainant asserts that Respondent has no trademark applications or registrations that incorporate Complainant’s mark. Complainant also alleges that it has not authorized Respondent’s use of the DICKSSPORTINGGOODS.COM mark. The WHOIS information for the <dikssportinggoods.com> domain name identifies the registrant as “Privacy Ltd. Disclosed Agent for YOLAPT,” which shows no apparent connection to the disputed domain name. The Panel concludes that Respondent is neither commonly known by the <dikssportinggoods.com> domain name nor possesses rights and legitimate interests under Policy ¶ 4(c)(ii). See 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); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Complainant describes Respondent’s use of the <dikssportinggoods.com> domain name as being “in conjunction with pay-per-click advertising pages, which promote other types of goods and services that are similar to and competitive with Complainant’s.” According to the screenshots provided by Complainant, however, it appears that the disputed domain name resolves to a website promoting prizes or promotional offers with pop-up advertisements. In either case, however, the Panel finds that Respondent is attempting to use Complainant’s mark in the disputed domain name to profit, likely as a result of click-through fees from the alleged pay-per-click links or the pop-up advertisements. The Panel concludes that conducting this type of activity under a confusingly similar disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii). See Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (holding that the respondent’s use of the <hpcanada.com> domain name to post links to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name); see also Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (holding that the respondent’s use of “confusingly similar derivatives of Complainant’s WELLS FARGO mark to divert Internet users to websites featuring pop-up advertisements” was not a bona fide offering of goods or services).
Complainant argues that Respondent registered a simple misspelling of Complainant’s DICKSSPORTINGGOODS.COM mark in order to take advantage of Internet users’ typographical errors when searching for Complainant. The Panel finds this type of domain name registration constitutes typosquatting and shows a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent’s <dikssportinggoods.com> domain name resolves to a pay-per-click advertising page that promotes other types of goods and services in competition with Complainant. The screenshots provided by Complainant, however, reveal no evidence of any competitive activity at the disputed domain name. The Panel thus declines to make a bad faith finding under Policy ¶ 4(b)(iii).
Complainant asserts that Respondent’s disputed domain name uses Complainant’s mark to attract and misdirect consumers seeking information about Complainant to Respondent’s resolving website. While Complainant alleges that the resolving website displays pay-per-click, the screenshots submitted seem to show offers for prizes and promotions and pop-up advertisements. Complainant argues that Respondent intends to capitalize on the similarity between the mark and the disputed domain name in order to create a likelihood of confusion and profit from click-through or affiliate fees generated by pay-per-click links (or pop-up advertisements). The Panel finds that Respondent’s activities at the disputed domain name therefore demonstrate bad faith registration and use under Policy ¶ 4(b)(iv). See ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where the respondent linked the domain name to another domain name, <iwin.com>, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).
The Panel has previously determined that Respondent’s registration of the disputed domain name constitutes typosquatting. The Panel therefore concludes that Respondent’s typosquatting of the disputed domain name is further evidence of bad faith under Policy ¶ 4(a)(iii). See Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’. . . through Respondent’s persistent practice of ‘typosquatting’”); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
The Panel finds Complainant has satisfied 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 <dikssportinggoods.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 7, 2012
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