American Sports Licensing, Inc. v. George Dzaganishvili
Claim Number: FA1208001460816
Complainant is American Sports Licensing, Inc. (“Complainant”), represented by David A. Wheeler of Greenberg Traurig, LLP, Illinois, USA Respondent is George Dzaganishvili (“Respondent”), Georgia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dickssportinggoodcoupons.net>, registered with Godaddy.com, LLC (R91-Lror).
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 30, 2012; the National Arbitration Forum received payment on August 31, 2012.
On September 4, 2012, Godaddy.com, LLC (R91-Lror) confirmed by e-mail to the National Arbitration Forum that the <dickssportinggoodcoupons.net> domain name is registered with Godaddy.com, LLC (R91-Lror) and that Respondent is the current registrant of the name. Godaddy.com, LLC (R91-Lror) has verified that Respondent is bound by the Godaddy.com, LLC (R91-Lror) 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 September 10, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 1, 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@dickssportinggoodcoupons.net. Also on September 10, 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 October 8, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
a. Complainant American Sports Licensing, Inc. and Its Marks
American Sports Licensing, Inc. is the registered owner of several Dick’s Sporting Goods Marks. Dick’s Sporting Goods is an authentic full-line sporting goods retailer offering a broad assortment of brand name sporting goods equipment, apparel and footwear in a specialty online and retail store environment.
In 1948, eighteen-year-old Dick Stack (Stack Holding Company, Inc.) opened a modest bait and tackle shop in Binghamton, New York with a $300 investment from his grandmother. By 1958, at the urging of his loyal customers, he expanded his product line to include much of what consumers find at Dick’s Sporting Goods today. Dick’s family continues to offer the finest quality products at competitive prices, backed by the best service anywhere. The Dick’s Sporting Goods brand is positioned to present a real passion for sports. And under the brand, Dicks Sporting Goods is excited to bring enthusiasm and experience to the sporting goods online retail community. As of May 17, 2011, Dick's Sporting Goods operated 447 stores in 42 states, 81 Golf Galaxy stores in 30 states and e-commerce and catalog operations for both Dick's Sporting Goods and Golf Galaxy.
The facts of this case establish that each of the three elements set forth in Rule 4(a) of the UDRP Policy are satisfied, namely:
b. The Offending Domain is Confusingly Similar to the Mark in Which the Complainant has Rights
The Dick’s Sporting Goods Marks are used extensively in connection with Dick’s Sporting Goods’ Internet-based marketing services and sales channel, namely <dickssportinggoods.com>. The Offending Domain incorporates Complainant’s Mark and is confusingly similar to the DICKSSPORTINGGOODS.COM Mark, as the only distinction is the additional generic term “coupons.” See The Sports Authority Michigan, Inc. v. Domain Active Pty. Ltd., FA 0151540 (Nat. Arb. Forum, May 6, 2003) (finding generic terms, inter alia, insignificant to “distinguish the disputed domain name from the complainant’s mark because the mark remains the dominant feature of each of the domain names.”) Further, the addition of a generic top-level domain is irrelevant for the purposes of a Policy ¶4(a)(i) analysis. Kabushiki Kaisha Hitachi Seisakusho d/b/a Hitachi Ltd. v. Penguin Computers LLC c/o, Rose Jayaseelan, FA 1282147 (Nat. Arb. Forum Sept. 8, 2009) (finding that the addition of a top-level domain is irrelevant when establishing whether the offending domain name is identical or confusingly similar to the HITACHI mark, because top-level domains are a required element of every domain name.) See Nike, Inc. v. shopkorea, FA 496892 (Nat. Arb. Forum Aug. 2, 2005) citing Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2000) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name). Under United States law, the points of comparison for a word mark are appearance, sound, and meaning or connotation. See In re Microsoft Corporation, 68 U.S.P.Q.2d 1195 (Trademark Tr. & App. Bd. Sept. 11, 2003). Other relevant foreign jurisdictions engage in a similar analysis regarding the confusing similarity of marks. See, e.g., Lloyd Schuhfabrik Meyer & Co. GmbH v. Klijsen Handel BV, 1999 E.C.J 587, 1999 2 CMLR 1343 (focusing trademark infringement analysis on the similarity between the marks’ appearance, sound and meaning).
c. Respondent has No Rights or Legitimate Interests in the Offending Domain
The Respondent has no trademark or other intellectual property rights to the Offending Domain. Respondent is not commonly known as the Offending Domain name. Respondent has no trademark applications or registrations known to Complainant that incorporate the element Dick’s Sporting Goods. Finally, Respondent’s use of the Dick’s Sporting Goods Mark is unauthorized. See Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (finding no rights or legitimate interests where the respondent merely redirected the <wwwmedline.com> domain name to the complainant’s own website at <medline.com>); see also Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that the respondent’s <wwwdinersclub.com> domain name, a typosquatted version of the complainant’s DINERS CLUB mark, was evidence in and of itself that the respondent lacks rights or legitimate interests in the disputed domain name vis á vis the complainant).
Respondent has never operated any bona fide or legitimate business in conjunction with the Offending Domain, and is not making a protected non-commercial or fair use of the Offending Domain. See Citigroup Inc. v. Horoshiy, Inc. a/k/a Horoshiy, FA 290633 (Aug. 11, 2004) (“Respondent’s use of domain names that are confusingly similar to Complainant’s CITIBANK marks to redirect Internet users interested in Complainant’s products to a commercial website that offers a search engine and products and services that compare with those offered by Complainant is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶4(c)(iii)”).
Respondent uses the Offending Domain in conjunction with pay-per-click advertising pages, which promote unauthorized marketing of Complainant’s coupons. Such competing use is not a bona fide offering of goods or services or a legitimate non-commercial or fair use. See Yahoo! Inc., et al. v. Chan, FA 162050 (Nat. Arb. Forum July 16, 2003) (directing Internet users to a competitor’s website and bombarding them with advertisements is not legitimate, noncommercial, or fair use).
d. The Offending Domain was Registered and Used in Bad Faith
The UDRP Policy sets forth non-exhausted list of examples of the circumstances that evidence bad faith registration and use of a domain name. Examples of bad faith are found in Paragraphs 4(b)((i)-(iv) of the Policy, which provide:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out- of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your web site or location.
Respondent has registered the Offending Domain in bad faith and Respondent is using it in bad faith.
(1) The Offending Domain was Registered in Bad Faith
Respondent posted content on its website that includes the Dick’s Sporting Goods Marks, and has directed its website toward consumers for commercial gain. Further, Respondent has at least constructive notice or knowledge of the Marks because of Complainant’s registration of the Marks with the United States Patent and Trademark Office (“USPTO.”). See Victoria’s Cyber Secret Ltd. v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D. Fla. 2001) (noting that “a Principal Register registration of a trademark or service mark is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072); Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the U.S.P.T.O., a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”). Even if Respondent were able to claim lack of knowledge, bad faith can exist when a search of the trademarks registry would reveal the registration rights of a Complainant. See, e.g., Kate Spade, LLC v. Darmstadter Designs, D2001-1384 (WIPO Jan. 3, 2002) (“Had Respondent done a trademark search at the time Respondent registered the domain name at issue, Respondent would have received notice of Complainant's pending application for registration. … It is fair to apply United States principles of constructive notice to this situation”).
Further, Respondent has actual knowledge of the Marks due to the obvious connection between the unauthorized use of the Mark and the content featured on Respondent’s website, namely, the unauthorized promotion of Dick’s Sporting Goods coupons. This creates a likelihood of confusion with the Complainant’s Marks as to the source, sponsorship, affiliation, and/or endorsement of the Respondent’s websites. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between Complainant’s mark and the content advertised on Respondent’s website was obvious, Respondent “must have known about the Complainant’s mark when it registered the subject domain name”). The mere fact that the Respondent has registered or acquired the Offending Domain, which incorporates the trademark of a well-known retail company, is alone sufficient to give rise to an inference of bad faith. See, e.g., Northwest Airlines, Inc., v Mario Koch, FA 95688 (Nat. Arb. Forum Oct. 27, 2000) ("The selection of a domain name which entirely incorporates the name of the world’s fourth largest airline could not have been done in good faith"). Further, “the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all circumstances of the case, it can be said that the Respondent is acting in bad faith.” See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003, (WIPO Feb. 4, 2000) (“[a] remedy can be obtained under the Uniform Policy only if those circumstances show that the Respondent’s passive holding amounts to acting in bad faith”).
Analogous activities by cyber-squatters operating in other industries were considered to rise to the level of “opportunistic bad faith.” See Singapore Airlines Limited v. P & P Servicios de Communicacion, D2000-0643 (WIPO Sept. 11, 2000) (holding that "the domain name singaporeairlines.com is so obviously connected with a well-known airline that its very registration and use by someone with no connection with the airline suggests opportunistic bad faith. Indeed, it is hard to imagine a more blatant exercise in ‘cyber-squatting’").
(2) The Offending Domain was Used in Bad Faith
As stated above, Respondent uses the Offending Domain to misdirect Internet users seeking information about Complainant’s goods and services to a website that offers click-through advertising programs. Through this commercial use of the Offending Domain, Respondent intentionally attempted to attract Complainant’s customers to the Respondent’s web site for financial gain by creating a likelihood of confusion with the Complainant’s Marks as to the source, sponsorship, affiliation, and/or endorsement of the Respondent’s website. See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding respondent acted in bad faith by attracting Internet users to a website that competes with complainant’s business); Computerized Sec. Sys., Inc. d/b/a SAFLOK v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that respondent’s use of the SAFLOCK.COM domain name to offer goods competing with complainant’s illustrates respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy 4(b)(iv))
Respondent’s conduct is squarely within the boundaries of bad faith set forth in Paragraph (iv) of the UDRP Policy. See Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding that a respondent registered and used a domain name in bad faith where that 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 Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that a respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form). The above activities constitute bad faith and unfair attempts to capitalize on the fame and reputation for superior quality associated with the Marks in order to generate profits at the expense of Complainant.
e. Conclusion
The record establishes that: (1) Complainant has legitimate trademark rights to the Offending Domain; (2) the Offending Domain is confusingly similar to Complainant’s marks; (3) Respondent has no legitimate interests in the Offending Domain; (4) the Offending Domain was registered in bad faith; and (5) the Offending Domain has been used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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."
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(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.
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.”).
Complainant has registered several Dick’s Sporting Goods trademarks with the United States Patent & trademark Office (“USPTO”), including the following:
Mark Reg. No. Registration Date
DICK’S CLOTHING & SPORTING GOODS 1,557,325 Sept. 19, 1989;
DICK’S SPORTING GOODS 3,239,877 May 8, 2007; &
DICKSSPORTINGGOODS.COM 2,621,711 Sept. 17, 2002.
These USPTO trademark registrations adequately demonstrate Complainant has rights in the mark under Policy ¶4(a)(i), regardless of Respondent’s location. See 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).”); see also 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).
Complainant claims Respondent’s <dickssportinggoodcoupon.net> domain name is confusingly similar to the DICKSSPORTINGGOODS.COM mark as the only distinction is the additional term “coupon.” The Panel notes the disputed domain name also differs from the mark in the removal of the final letter “s” and the exchange of the generic top-level domain (“gTLD”) “.com” for “.net.” Prior panels have held adding a generic term to a complainant’s mark does not remove the disputed domain name from the realm of confusing similarity. See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark). Panels have also determined that removing a single letter and adding a gTLD, such as “.net” are irrelevant changes. See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); 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). This Panel finds Respondent’s <dickssportinggoodcoupon.net> domain name is confusingly similar to Complainant’s DICKSSPORTINGGOODS.COM mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends Respondent has no trademark or other intellectual property rights to the disputed domain name. Complainant argues Respondent is not commonly known by the disputed domain name and has no trademark applications or registrations that incorporate Complainant’s mark. Complainant claims Respondent’s use of Complainant’s mark is unauthorized. The revealed WHOIS information identifies the registrant of the <dickssportinggoodcoupon.net> domain name as “George Dzaganishvili,” which indicates no relationship between Respondent’s name and the disputed domain name. As a result, the Panel concludes Respondent is not commonly known by the disputed domain name pursuant to Policy ¶4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Complainant claims Respondent has never operated any bona fide or legitimate business in conjunction with the disputed domain name and is not making a protected non-commercial or fair use of the disputed domain name. Respondent apparently uses the disputed domain name for pay-per-click advertising pages. While this Panel might well conclude the marketing of bona fide coupons could create rights, the evidence here suggests Respondent is not doing that. It appears Respondent is phishing for personal data with the illusory promise of getting a coupon. Such a use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Furthermore, Respondent was registered the disputed domain name using a privacy service (which was lifted once a UDRP proceeding was brought). As this Panel has said previously, a Respondent cannot obtain rights to a mark in a commercial context by using a domain name while registered with a privacy service. There is no reason to conceal the identity of a domain name owner in a commercial setting.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claim Respondent uses the disputed domain name to misdirect Internet users seeking Complainant to a website offering click-through advertising programs. Complainant contends this use of the disputed domain name demonstrates Respondent intentionally attempts to attract Complainant’s customers to Respondent’s website for financial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website, which is evidence of bad faith under Policy ¶4(b)(iv). The Panel concurs and finds accordingly. 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).
Complainant argues Respondent’s bad faith registration and use can be shown through Respondent’s constructive and actual knowledge of Complainant’s mark prior to registering the disputed domain name. Complainant notes its trademark registrations provide Respondent with at least constructive notice of Complainant’s rights in the mark. Prior UDRP panels have held constructive notice to be insufficient as a basis of finding bad faith under Policy ¶4(a)(iii) and this Panel agrees. See Meredith Corp. v. CityHome, Inc., D2000-0223 (WIPO May 18, 2000) (finding that the respondent’s constructive notice of the complainant’s registered mark was insufficient to support a finding of bad faith registration). However, Complainant goes on to claim the resolving website content clearly shows Respondent actually knew of Complainant’s business and marks because they are clearly copied and displayed. The Panel concurs and finds Respondent had actual knowledge of Complainant’s rights in the DICKS SPORTING GOODS mark prior to registering the disputed domain name Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
Finally, registering a domain name with a privacy service in a commercial setting raises the rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut this presumption. This alone constitutes sufficient evidence of bad faith registration and use.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered the <dickssportinggoodcoupons.net> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, October 22, 2012
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