Academy, Ltd., d/b/a Academy Sports + Outdoors v. ICS INC.
Claim Number: FA1303001488553
Complainant is Academy, Ltd., d/b/a Academy Sports + Outdoors (“Complainant”), represented by Tyson D. Smith, Texas, USA. Respondent is ICS INC. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aacademysports.com>, registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 5, 2013; the National Arbitration Forum received payment on March 5, 2013.
On March 6, 2013, PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <aacademysports.com> domain name is registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name. PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the PDR LTD. D/B/A PUBLICDOMAINREGISTRY.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 March 8, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 28, 2013 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@aacademysports.com. Also on March 8, 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 April 5, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Academy Ltd., d/b/a Academy Sports + Outdoors is one of the largest sporting goods retailers in the United States, operating about 150 stores in at least thirteen states. For many years, Academy has used the marks ACADEMY, ACADEMY.COM, ACADEMY SPORTS + OUTDOORS, and various other marks that include the word ACADEMY. Academy has used the mark ACADEMY since at least 1950. Academy has also used the mark ACADEMY SPORTS + OUTDOORS (and/or ACADEMY SPORTS & OUTDOORS) since at least 1995. Academy owns the following U.S. registrations (among others): ACADEMY, ACADEMY.COM and ACADEMY SPORTS + OUTDOORS, OUTDOORS.
Respondent has not used, nor made any demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.
Complainant’s attorneys sent Respondent a cease-and-desist letter on November 14, 2012, but Respondent has ignored Academy’s demands and continues to use the domain name in violation of Academy’s rights. Moreover, Respondent uses the domain name in connection with a monetized parking page displaying links with titles that consumers are highly likely to associate with Academy and/or its products and services (e.g., “Academy Sporting Goods”), yet in reality divert traffic to third-party websites not affiliated with Complainant, including to websites of Complainant’s competitors.
Respondent is not making a legitimate noncommercial or fair use of the domain name. Instead, Respondent’s website hosted at the domain name displays links to websites advertising or offering goods and services that compete with Complainant.
The fact that the domain name <aacademysports.com> is a variation of Complainant’s primary logo and/or a typographical error of Complainant’s ACADEMY marks and its domain name <aacademysports.com> is additional evidence that Respondent lacks rights to and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Respondent presumably receives a fee or commission when Internet users visit the website hosted at <aacademysports.com>, click on the links likely to be associated with Academy, and are diverted to third-party websites. Thus, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Academy’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and/or the links displayed on Respondent’s website.
Respondent has engaged in a pattern of bad-faith registration and use of others’ trademarks as domain names. This pattern is evidenced by the at least 345 WIPO and 64 NAF UDRP cases brought against Respondent in which Respondent was found to have registered domain names incorporating others’ well known marks (or typographical variations thereof) in bad faith.
Not only is the domain name <aacademysports.com> highly likely to cause confusion, but the website hosted at <aacademysports.com> also displays unauthorized links on its website that are obvious references to Complainant or its business.
Respondent’s typosquatting is also evidence of its bad-faith registration and use of <aacademysports.com>.
Respondent’s bad faith is also evidenced by the fact that Respondent owns no trademark or other intellectual property rights in the domain name; the domain name does not consist of the legal name of or a name commonly used to identify Respondent; Respondent has not used the domain name in connection with the bona fide offering of any goods or services; Respondent has made no bona fide noncommercial or fair use of Complainant’s marks in a site accessible under the domain name; and Respondent’s domain name incorporates the highly distinctive ACADEMY marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds USPTO trademark registrations for the ACADEMY mark and related marks.
Complainant acquired rights in its ACADEMY mark prior to Respondent’s registration of the at-issue domain name.
Respondent is not authorized to use Complainant’s trademark in any capacity.
Respondent uses the at-issue domain name to address a monetized parking page displaying links with titles that consumers are highly likely to associate with Academy and/or its products and services. Some of the links reference Complainant’s competition.
Respondent has engaged in a pattern of bad-faith registration and use of others’ trademarks as domain names.
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.”).
Respondent’s at-issue domain name is confusingly similar to a mark in which Complainant has rights.
Although Respondent resides or operates in outside the United States, Complainant’s USPTO trademark registrations nevertheless establish that Complainant has rights in a mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); 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 <aacademysports.com> domain name is confusingly similar to Complainant’s ACADEMY mark. The at‑issue domain name incorporates the ACADEMY mark and merely prefixes the letter “a,” attaches the related term “sports,” and appends the top level domain name “.com” thereto. These alterations to Complainant’s trademark fail to distinguish Respondent’s domain name from the mark for the purposes of Policy ¶ 4(a)(i). See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business);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).
Respondent has no rights or legitimate interests in respect of the at‑issue domain name. Respondent is not authorized to use Complainant’s trademark(s) in any capacity and as discussed below there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii) Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of the at‑issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
The WHOIS information lists “ICS, INC.” as the registrant of the disputed domain name and there is no evidence of record that tends to show that Respondent is commonly known by the at‑issue domain name. Therefore, the Panel finds that Respondent is not commonly known by the <aacademysports.com> domain name for the purpose of Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent uses the <aacademysports.com> domain name in connection with a monetized parking page which displays hyperlinks to the websites of Complainant’s competitors. Using the domain name in this manner demonstrates that Respondent is not making a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <aacademysports.com> domain name. SeeH-D Mich. Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also 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)).
In light of the uncontroverted evidence, Complainant satisfies its burden and conclusively demonstrates Respondent’s lack of rights, and lack of interests, in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
Respondent registered and uses the at-issue domain name in bad faith.
The Panel concludes that Respondent receives a fee or commission when Internet users visit the confusingly similar <aacademnsports.com> addressed website and click on the hyperlinks, thereon. Additionally, Respondent’s registration and use of the at‑issue domain name confuses Internet users as to Complainant’s affiliation with, and/or sponsorship of, Respondent’s website. Using the domain name in this manner constitutes bad faith registration and use under Policy ¶ 4(b)(iv) since thereby Respondent attempts to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion between Complainant’s mark(s) and the at‑issue domain name. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Furthermore, the overt misspelling of Complainant’s trademark in the at-issue domain name shows that Respondent is a typosquatter. This behavior, in and of itself, demonstrates Respondent’s bad faith. See Nat'l Ass'n of Prof'l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) ("Typosquatting ... is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith."); see also Canadian Tire Corp. v. domain adm'r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the 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'").
Finally, Respondent had actual knowledge of Complainant’s rights in the ACADEMY mark when it registered the <aacademysports.com> domain name. Respondent’s prior knowledge of the ACADEMY mark is inferred from the similarities between the at-issue domain name and Complainant’s trademark. Registering and using an at-issue domain name with knowledge of a complainant’s rights in such domain name, indicates bad faith registration and use pursuant to Policy ¶4(a)(iii). See Radio & Records, Inc. v. Nat’l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aacademysports.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: April 8, 2013
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