The Sports
Authority Michigan, Inc. v. thesprotsauthority.com a/k/a Hanna El Hinn
Claim
Number: FA0302000145208
Complainant is
The Sports Authority Michigan, Inc., Ft. Lauderdale, FL, USA (“Complainant”)
represented by Robert S. Gurwin of Rader, Fishman & Grauer
PLLC. Respondent is thesprotsauthority.com a/k/a Hanna El Hinn,
Broummana, LEBANON (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <thesprotsauthority.com>, registered with Gandi.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on February 7, 2003; the Forum received a hard copy of the
Complaint on February 7, 2003.
On
February 21, 2003, Gandi confirmed by e-mail to the Forum that the domain name <thesprotsauthority.com>
is registered with Gandi and that Respondent is the current registrant of the
name. Gandi has verified that Respondent is bound by the Gandi registration
agreement and has thereby agreed to resolve domain-name disputes brought by third
parties in accordance with ICANN's Uniform Domain Name Dispute Resolution
Policy (the "Policy").
On
February 21, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of March 13, 2003, by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@thesprotsauthority.com
by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
March 20, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the 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. The domain name registered by Respondent,
<thesprotsauthority.com>, is confusingly similar to Complainant’s
THE SPORTS AUTHORITY mark.
2. Respondent has no rights or legitimate
interests in the <thesprotsauthority.com> domain name.
3. Respondent registered and used the <thesprotsauthority.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, The
Sports Authority Michigan, Inc., is the largest national full-line sporting
goods retailer in the United States. It operates 201 retail stores in the
United States, 35 in Japan, and 7 in Canada. It operates its business under the
THE SPORTS AUTHORITY mark, and has done so since its registration of the mark
on the Principal Register of the U.S. Patent and Trademark Office (“USPTO”) on
February 28, 1989 (U.S. Reg. No. 1,527,526). Under this mark, Complainant
promotes its own stores, and also advertises, promotes and sponsors a wide
variety of amateur and professional sports teams, events, and arenas.
Complainant totalled sales over $1.4 billion in 2001.
Complainant has
operated a web presence at the <sportsauthority.com> domain name since
July of 1995. Since registering its first domain name, Complainant has
proceeded to register over one hundred additional domain names for its
commercial use, including the <thesportsauthority.com> domain name.
Complainant’s <thesportsauthority.com> domain name was named the #2
overall shopping website on the Internet in 2000.
Respondent,
thesprotsauthority.com a/k/a Hanna El Hinn, registered the <thesprotsauthority.com>
domain name on October 1, 2001, but is not licensed or authorized to use
Complainant’s THE SPORTS AUTHORITY mark for any purpose. Respondent posts
nothing on its website other than a hyperlink to Complainant’s website,
imbedded in an unauthorized reproduction of Complainant’s logo. Along with
linking its website to Complainant’s website, Respondent has signed up for
Complainant’s affiliate program, and receives a commission from each sale
completed at Complainant’s website by any Internet users directed there from
the disputed domain name.
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
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
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 has
established in this proceeding that it has rights in the THE SPORTS AUTHORITY
mark through registration with the USPTO, as well as through widespread and
continuous use of the mark in commerce.
The domain name
registered by Respondent, <thesprotsauthority.com>, is confusingly similar to Complainant’s THE
SPORTS AUTHORITY mark. The only distinguishing feature is Respondent’s
transposition of the letters “o” and “r” in the word SPORTS in the disputed
domain name. Such a minor spelling change, duplicating a common typographical
error, does not create a distinctive domain name for purposes of Policy ¶ 4(a)(i). See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum
Apr. 26, 2002) (finding <googel.com> to be confusingly similar to
Complainant’s GOOGLE mark and noting that “[t]he transposition of two letters
does not create a distinct mark capable of overcoming a claim of confusing
similarity, as the result reflects a very probable typographical error”); see
also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000)
(finding that a domain name which differs by only one letter from a trademark
has a greater tendency to be confusingly similar to the trademark where the
trademark is highly distinctive).
Accordingly, the
Panel finds that the <thesprotsauthority.com> domain name is confusingly similar to
Complainant’s THE SPORTS AUTHORITY mark under Policy ¶ 4(a)(i).
Complainant has
the initial burden of demonstrating that Respondent has no rights or legitimate
interests in the disputed domain name. Complainant can meet this burden, thus
shifting it to Respondent, by showing that none of the three enumerated
protections for domain name registrants in Policy ¶ 4(c)(i)-(iii) apply to
Respondent. See Do The Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has
no rights or legitimate interests with respect to the domain, the burden shifts
to Respondent to provide credible evidence that substantiates its claim of
rights and legitimate interests in the domain name); see also G.D. Searle v.
Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where
Complainant has asserted that Respondent has no rights or legitimate interests
with respect to the domain name it is incumbent on Respondent to come forward
with concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”).
Respondent
uses the <thesprotsauthority.com>
domain name to
redirect Internet users to Complainant’s own website. As Respondent’s domain
name is a simple misspelling of Complainant’s trademark and website, it is
likely that every Internet user who accidentally routes through Respondent’s
website was actually intending to reach Complainant’s website. Respondent takes
advantage of this fact with its membership in Complainant’s affiliates program,
receiving a commission from Complainant each time an Internet user misspells
Complainant’s domain name. Such use is not a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial
or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Deluxe
Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002)
(finding Respondent had no rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii) where it used the
domain name <deluxeform.com> to redirect users to Complainant’s <deluxeforms.com>
domain name and to receive a commission from Complainant through its affiliate
program); see also Gorstew
Ltd. v. Carribean Tours & Cruises, FA 94927 (Nat. Arb. Forum July 28, 2000) (finding that
Respondent’s use of the disputed domain name to sell
the services of Complainant or to attract customers to Complainant,
presumably for which Respondents would be paid a fee, is classic trademark
infringement, even if the result of same is that some revenue flows to
Complainant, the owner of the marks).
Respondent is
able to demonstrate rights and legitimate interests in a domain name by showing
that it was “commonly known by” the domain name pursuant to Policy ¶ 4(c)(ii).
Here, Respondent’s WHOIS contact information lists its name as “thesprotsauthority.com.”
However, considering that Respondent’s domain name is a mere misspelling of
Complainant’s famous THE SPORTS AUTHORITY mark and considering the nature of
Respondent’s use of the domain name, the Panel is permitted to infer that
Respondent was not “commonly known by” the name prior to registration of the
domain name, as contemplated by Policy ¶ 4(c)(ii). See RMO, Inc. v.
Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶
4(c)(ii) "to require a showing that one has been commonly known by the
domain name prior to registration of the domain name to prevail"); see
also Nike, Inc. v. B. B. de Boer,
D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests
where one “would be hard pressed to find a person who may show a right or
legitimate interest” in a domain name containing Complainant's distinct and
famous NIKE trademark).
Accordingly, the
Panel finds that Respondent does not have rights or legitimate interests in the
<thesprotsauthority.com> domain
name under Policy ¶ 4(a)(ii).
Respondent
registered and used the <thesprotsauthority.com>
domain name in bad faith. Respondent intentionally registered a
confusingly similar variation of Complainant’s mark in order to snare Internet
users who accidentally transpose the letters “r” and “o” when attempting to
reach Complainant’s <thesportsauthority.com> domain name. This, along
with Respondent’s unauthorized use of Complainant’s design mark on its webpage,
fosters a likelihood of confusion as to the source of sponsorship of
Respondent’s website. In using this likelihood of confusion to earn a
commission from Complainant’s affilates program, Respondent registered and used
the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum
Apr. 10, 2002) (finding Respondent registered and used the
<deluxeform.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv)
by redirecting its users to Complainant’s <deluxeforms.com> domain name,
thus receiving a commission from Complainant through its affiliate program); see
also The Sports Auth.
Mich., Inc. v. Internet Hosting,
FA 124516 (Nat. Arb. Forum Nov. 4, 2002) (stating that, “Redirecting Internet
users attempting to reach a complainant’s website in order to gain a profit off
of a complainant is one example of bad faith use and registration under the
Policy”).
The Panel thus
finds that Respondent registered and used the <thesprotsauthority.com>
domain name in bad faith, and that
Policy ¶ 4(a)(iii) is satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <thesprotsauthority.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 3, 2003
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