American Sports Licensing, Inc. v. PPA Media Services / Ryan G Foo
Claim Number: FA1201001426024
Complainant is American Sports Licensing, Inc. (“Complainant”), represented by David A. Wheeler of Greenberg Traurig, LLP, Illinois, USA. Respondent is PPA Media Services / Ryan G Foo (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dicksportgoods.com>, registered with Internet.bs 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.
Sandra J. Franklin 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 26, 2012, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <dicksportgoods.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs 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 February 2, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 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@dicksportgoods.com. Also on February 2, 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 28, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <dicksportgoods.com> domain name is confusingly similar to Complainant’s DICKSSPORTINGGOODS.COM mark.
2. Respondent does not have any rights or legitimate interests in the <dicksportgoods.com> domain name.
3. Respondent registered and used the <dicksportgoods.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, American Sports Licensing, Inc., is the owner of the DICKSSPORTINGGOODS.COM mark, which it uses in connection with offering retail sporting goods. 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, PPA Media Services / Ryan G Foo, registered the <dicksportgoods.com> domain name on April 13, 2004. The disputed domain name resolves to a website which displays links to goods and services that compete with those that Complainant offers.
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.
The Panel finds that Complainant has rights in the DICKSSPORTINGGOODS.COM mark pursuant to Policy ¶ 4(a)(i) through its trademark registration. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); 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).
Respondent’s <dicksportgoods.com> domain name is confusingly similar to Complainant’s mark. Respondent’s only changes to the DICKSSPORTINGGOODS.COM mark are the deletion of the letters “s” and “ing,” insufficient to distinguish the domain name from Complainant’s mark. See 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); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (concluding that the <classicmetalroofing.com> domain name was confusingly similar to the complainant’s CLASSIC METAL ROOFS mark because changing the final term of the mark from “roofs” to “roofing” was a minor alteration and did not sufficiently distinguish the domain name from the mark). The Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant argues that Respondent has neither rights nor legitimate interests in the disputed domain name. Once a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to provide evidence to the contrary. See Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech. Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”). The Panel finds that Complainant has made a prima facie case in support of its assertions. Respondent thus bears the burden of disproving the claims Complainant has made against it. Respondent, however, has failed to submit a Response to the Complaint. The Panel will make all reasonable inferences from the available information. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”).
Complainant contends that Respondent is not commonly known by the disputed domain name. Complainant argues that Respondent has no trademark applications or registrations that reflect the disputed domain name and that Respondent is not authorized by Complainant to use the DICKSSPORTINGGOODS.COM mark. The WHOIS record for the disputed domain name lists “PPA Media Services / Ryan G Foo” as the domain name registrant, which bears no relationship to the DICKSSPORTINGGOODS.COM mark. The panels in Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), and Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), held that the WHOIS record and other relevant information available illustrate to the panel whether the respondent is commonly known by the disputed domain name. Thus, the Panel finds that Respondent is not commonly known by the <dicksportgoods.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant asserts that Respondent is not making a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The disputed domain name resolves to a website which displays links under headings such as “Cricket Equipments” and “Sporting Goods” that compete with Complainant in the retail sporting goods industry. The Panel finds that Respondent’s use of the disputed domain name to display competing links does not give Respondent rights or legitimate interests in the disputed domain name because it is not a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent registered and is using the disputed domain name in order to cause confusion as to the source of the disputed domain name and to take commercial advantage of Internet users’ mistakes as a result of the confusion. The disputed domain name resolves to a website which displays links to sporting goods under headings such as “Sportswear” and “Sports Shoes” that compete with those that Complainant provides. Complainant further notes that the resolving website displays Complainant’s mark and similar content in order to confuse Internet users. The Panel infers that Respondent receives compensation for the display of links and the Internet users who click through them. Therefore, the Panel finds that Respondent registered and is using the disputed domain name in order to take commercial advantage of Internet users’ mistakes as to the source, sponsorship, or affiliation of the disputed domain name pursuant to Policy ¶ 4(b)(iv). 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 Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the DICKSSPORTINGGOODS.COM mark. Complainant argues that Respondent’s use of Complainant’s logo and its display of similar content on the disputed domain name’s resolving website indicates that Respondent had actual knowledge of Complainant's mark and rights. The Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dicksportgoods.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: March 6, 2012
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