American Sports Licensing, Inc. v. Bbotts Domains / Brandon Botts
Claim Number: FA1301001478428
Complainant is American Sports Licensing, Inc. (“Complainant”), represented by David A. Wheeler of Greenberg Traurig, LLP, Illinois, USA. Respondent is Bbotts Domains / Brandon Botts (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dicksportinggoods.net>, registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on January 3, 2013; the National Arbitration Forum received payment on January 3, 2013.
On January 4, 2013, PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM con-firmed by e-mail addressed to the National Arbitration Forum that the domain name <dicksportinggoods.net> is registered with PDR LTD. D/B/A PUBLICDO-MAINREGISTRY.COM and that Respondent is the current registrant of the domain name. PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the PDR LTD. D/B/A PUBLICDOMAINREGIS-TRY.COM 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 4, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 24, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all en-tities and persons listed on Respondent’s registration as technical, administra-tive, and billing contacts, and to postmaster@dicksportinggoods.net. Also on January 4, 2013, 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 January 29, 2013, pursuant to Complainant's request to have the dispute de-cided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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
Complainant is a sporting goods retailer offering brand name sporting goods equipment, apparel and footwear both online and in a retail store environment.
Complainant owns and operates 447 Dick’s Sporting Goods stores in 42 states of the United States.
Complainant holds a family of DICK’S SPORTING GOODS service marks, on file with the United States Patent and Trademark Office (“USPTO”), including the following: DICK’S CLOTHING & SPORTING GOODS mark (Reg. No. 1,557,325, registered Sep. 19, 1989), DICK’S SPORTING GOODS & design mark (Reg. No. 3,239,877, registered May 8, 2007), and DICKSSPORTINGGOODS.COM mark (Reg. No. 2,621,711, registered Sep. 17, 2002).
Respondent registered the contested <dicksportinggoods.net> domain name on November 28, 2012.
Respondent’s <dicksportinggoods.net> domain name is confusingly similar to Complainant’s DICKS SPORTING GOODS marks.
Respondent has not been commonly known by the disputed domain name.
Respondent has no trademark or other intellectual property rights in the contest-ed domain name.
Respondent’s use of the Dicks Sporting Goods mark is unauthorized.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent’s domain name is linked to a domain name sales site.
Respondent knew of Complainant and its DICKS SPORTING GOODS marks when it registered the disputed domain name.
Respondent registered and is using the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
(4)
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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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 the DICK’S SPORTING GOODS service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007):
As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).
Turning to the central question arising under Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <dicksportinggoods.net> domain name is confusingly similar to Complainant’s DICK’S SPORTINGGOODS mark. The domain name contains the entire mark, with the omission of an apostrophe and of the “s” between “dick” and “sporting,” plus the addition of the generic top level domain “.net.” These alterations of the mark, made in creating the domain name, do not save the domain name from the realm of confusing similarity under the standards of the Policy. See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from a complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made a disputed domain name derived from it confusingly similar to it).
Similarly, the omission from Respondent’s domain name of the apostrophe in Complainant’s mark is of no consequence to our analysis because:
The apostrophe is not a valid character for domain name registration….
See McDonald's Corporation v. Lei Wang, D2012-0624 (WIPO May 25, 2012).
Finally see Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002):
[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny,
that Respondent has not been commonly known by the disputed domain name, that Respondent has no trademark or other intellectual property rights in the contested domain name, and that Respondent’s use of the Dick’s Sporting Goods mark is unauthorized. Moreover, the pertinent WHOIS information identifies the registrant of the disputed domain name only as “Bbotts Domains / Brandon Botts,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed do-main name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not common-ly known by the <coppertown.com> domain name, and so had no rights to it or legitimate interests in it as contemplated in Policy ¶ 4(c)(ii), where there was no evidence in the record suggesting that that respondent was commonly known by the disputed domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent’s domain name is linked to a domain name sales site. In the circumstances here presented, this employment of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use under Policy ¶ 4(c)(iii). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003):
Respondent's use of a domain name confusingly similar to Com-plainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncom-mercial or fair use under Policy ¶ 4(c)(iii).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are convinced from the evidence that Respondent’s conduct in resolving the contested <dicksportinggoods.net> domain name, which is confusingly similar to Complainant’s Dick’s Sporting Goods mark, to a domain name sales site from which Respondent expects to profit demonstrates that the domain name was registered and is being used by Respondent in bad faith as described in Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where a domain name was obviously connected with a UDRP complainant’s marks, thus creating a likelihood of confusion among Internet users for a respondent’s commercial gain).
We are likewise convinced from the evidence that Respondent knew of Com-plainant and its Dick’s Sporting Goods mark when it registered the disputed domain name. This too is evidence of bad faith in the registration of the domain name. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith registration of a domain name where a respondent was "well-aware of the complainant's YAHOO! mark” at the time of registration).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <dicksportinggoods.net> domain name be TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 12, 2013
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