American Sports Licensing, Inc. v. Vazha Mamniashvili
Claim Number: FA1209001461787
Complainant is American Sports Licensing, Inc. (“Complainant”), represented by David A. Wheeler of Greenberg Traurig, LLP, Illinois, USA. Respondent is Vazha Mamniashvili (“Respondent”), Georgia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dickssportinggoodcoupons.org>, registered with GoDaddy.com, LLC (R91-LROR).
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 September 7, 2012; the National Arbitration Forum received payment on September 10, 2012.
On September 13, 2012, GoDaddy.com, LLC (R91-LROR) confirmed by e-mail to the National Arbitration Forum that the <dickssportinggoodcoupons.org> 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 17, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 9, 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.org. Also on September 17, 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 16, 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
i. DICK’S CLOTHING & SPORTING GOODS (Reg. No. 1,557,325 registered Sept. 19, 1989);
ii. DICK’S SPORTING GOODS and Design (Reg. No. 3,239,877 registered May 8, 2007); and
iii. DICKSSPORTINGGOODS.COM (Reg. No. 2,621,711 registered Sept. 17, 2002).
i. Respondent has no trademark or service mark registrations encompassing the disputed domain name, and is not commonly known by the disputed domain name.
ii. Respondent uses the disputed domain name “in conjunction with pay-per-click advertising pages which promote unauthorized marketing of Complainant’s coupons.
i. Respondent uses the disputed domain name to misdirect Internet users seeking Complainant’s goods and services to a website featuring click-through links for which Respondent is paid.
ii. Respondent has actual knowledge of Complainant’s 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.”
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, American Sports Licensing, Inc., owns the following trademark registrations with the United States Patent and Trademark Office ("USPTO"):
DICK’S CLOTHING & SPORTING GOODS (Reg. No. 1,557,325 registered Sept. 19, 1989);
DICK’S SPORTING GOODS and Design (Reg. No. 3,239,877 registered May 8, 2007); and
DICKSSPORTINGGOODS.COM (Reg. No. 2,621,711 registered Sept. 17, 2002).
The Marks are used in connection with the business operations of Dick’s Sporting Goods, LLC, and the Dick’s Sporting Goods brand of sports equipment and clothing retail sales.
Respondent, Vazha Mamniashvili, registered the <dickssportinggoodcoupons.org> domain name on June 16, 2012. Respondent uses the disputed domain name “in conjunction with pay-per-click advertising pages which promote unauthorized marketing of Complainant’s coupons.
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 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.
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 rights in its DICK’S SPORTING GOODS family of marks. The Panel finds that Complainant’s trademark registrations are sufficient for it to establish rights in the marks above under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). Further, the Panel finds that Complainant’s rights in the marks above is not dependent on it owning trademarks in the country of Respondent. See 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 and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant asserts that Respondent’s <dickssportinggoodcoupons.org> domain name is confusingly similar to Complainant’s DICKSSPORTINGGOODS.COM mark. The disputed domain name adds the generic term “coupons” and removes the letter “s” from Complainant’s mark. The Panel finds that Respondent’s disputed domain name is in fact confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Keystone Publ’g., Inc. v. UtahBrides.com, D2004-0725 (WIPO Nov. 17, 2004) (finding that the <utahwedding.com> domain name was confusingly similar to the complainant’s UTAHWEDDINGS.COM mark because the domain name simply lacked the letter “s”); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have 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).
Complainant contends that Respondent does not have any trademark or service mark registrations for the disputed domain name, and is not commonly known by the disputed domain name. The WHOIS information for the disputed domain name identifies “Vazha Mamniashvili” as the registrant of the domain name. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Further, Respondent uses the disputed domain name “in conjunction with pay-per-click advertising pages which promote unauthorized marketing of Complainant’s coupons.” The Panel finds that such use 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 Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Respondent uses the disputed domain name to misdirect Internet users seeking Complainant’s goods and services to a website featuring click-through links for which Respondent is paid. Therefore, the Panel finds that Respondent has registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Further, Complainant argues that Respondent has actual knowledge of Complainant’s 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.” The Panel finds that Respondent had actual knowledge of Complainant’s rights in the DICKSSPORTINGGOODS.COM mark prior to registering the disputed domain name and such knowledge is evidence of bad faith registration and use under 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).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dickssportinggoodcoupons.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 30, 2012
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