Academy, Ltd., d/b/a Academy Sports + Outdoors v. PPA Media Services / Ryan G Foo
Claim Number: FA1304001496032
Complainant is Academy, Ltd., d/b/a Academy Sports + Outdoors (“Complain-ant”), represented by Tyson D. Smith of Pirkey Barber PLLC, Texas, USA. Respondent is PPA Media Services / Ryan G Foo (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <academysportswear.com>, registered with INTERNET.BS CORP.
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 April 23, 2013; the National Arbitration Forum received payment on April 23, 2013.
On April 25, 2013, INTERNET.BS CORP. confirmed by e-mail to the National Arbitration Forum that the <academysportswear.com> domain name is registered with INTERNET.BS CORP. and that Respondent is the current registrant of the name. INTERNET.BS CORP. has verified that Respondent is bound by the INTERNET.BS CORP. 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 April 26, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 16, 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@academysportswear.com. Also on April 26, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respond-ent via post and fax, to all entities and persons listed on Respondent’s registra-tion 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 May 23, 2013, pursuant to Complainant's request to have the dispute decided 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 one of the largest sporting goods retailers in the United States, operating about 150 stores in at least thirteen states.
Complainant is the owner of the ACADEMY service mark, on file with the United States Trademark and Patent Office (“USPTO”) as Reg. No. 1,911,968, regis-tered August 15, 1995.
Respondent registered the <academysportswear.com> domain name on Sep-tember 9, 2009.
The disputed <academysportswear.com>domain name is confusingly similar to Complainant’s ACADEMY mark.
Respondent has not been commonly known by the domain name.
Complainant has not given Respondent permission to use Complainant’s ACADEMY mark.
Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services.
Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
The disputed domain name resolves to a parked web page with links that con-sumers are likely to associate with Complainant and its products, but which in fact resolve to third-party websites unaffiliated with Complainant.
Respondent receives a fee or commission when Internet users click on the links carried on Respondent’s <academysportswear.com> website that are likely to be associated with Complainant’s marks.
Respondent does not have any rights to or legitimate interests in the contested domain name.
Respondent has engaged in a pattern of bad faith registration and use of domain names by using the trademarks of others in domain names.
Respondent has registered and is using the contested 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.
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-elled 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 ACADEMY service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that a UDRP complainant had established rights to the MILLER TIME mark through its federal trademark registration).
This is true without regard to whether Complainant’s rights in its mark arise from registration in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Chile). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a UDRP complainant’s rights in a mark trace to the country in which a respondent operates, it being sufficient that a complainant can demonstrate rights in its mark in some jurisdiction).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that the disputed <academysportswear.com> domain name is confusingly similar to Complainant’s ACADEMY service mark. The domain name contains the ACADEMY mark in its entirety, with the addition only of the term “sportswear,” which is descriptive of Complainant’s business, and the gen-eric Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not distinguish the domain name from the mark under the standards of the Policy. See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”).
See also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007):
The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.
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 out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the domain name, and that Complainant has not given Respondent permission to use Complainant’s service mark ACADEMY. Moreover, the pertinent WHOIS record identifies the registrant of the domain name only as “PPA Media Services Ryan G Foo,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have demon-strated that it has rights to or legitimate interests in it within the contemplation of Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), finding that, under Policy ¶ 4(c)(ii), the WHOIS record is often determ-inative of whether a UDRP respondent is known by a domain name.
We next observe that Complainant asserts, without objection from Respondent, that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <academysportswear.com> domain name, and that Respondent’s use of the domain name is carried on for profit, in that the domain name resolves to a parked page with links to third-party web-sites which appear to be associated with Complainant and its ACADEMY mark but are actually diversions to sites unaffiliated with Complainant. This employ-ment of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a noncommercial or fair use under Policy ¶ 4(c)(iii). See, for example, Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003):
Diverting customers, who are looking for products relating to the … mark [of another], to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial 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 persuaded from the evidence that Respondent has shown a pattern of bad faith registration and use of domain names, in that the record reflects that Respondent has had at least twelve WIPO and thirty-four NAF UDRP cases brought against him, resulting in the transfer to complaining trademark or service mark holders of domain names which were identical or confusingly similar to to the marks of those holders. See, for example, Homer TLC, Inc. v. PPA Media Services / Ryan G Foo, FA 1491786 (Nat. Arb. Forum May 17, 2013), and AutoZone Parts, Inc. v. PPA Media Services / Ryan G Foo, FA 1492382 (Nat. Arb. Forum May 15, 2013). This is evidence sufficient for purposes of this pro-ceeding that Respondent registered and uses the <academysportswear.com> domain name in bad faith. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith regis-tration and use of a domain name pursuant to Policy ¶ 4(b)(ii) where a respond-ent had been subject to numerous UDRP proceedings in which panels ordered the transfer of domain names containing the trademarks of UDRP complainants).
We are also convinced from the evidence that Respondent uses the ACADEMY mark in the <academysportswear.com> domain name to attract, for commercial gain, Internet users who are looking for Complainant’s website. This demon-strates bad faith in the registration and use of the domain name under Policy ¶ (b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under registration and use Policy ¶ 4(b)(iv) where a respondent’s do-main name, which was confusingly similar to the mark of a UDRP complainant, resolved to a website featuring links to third-party sites offering services similar to those of that complainant).
The Panel thus 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 <academysportswear.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 5, 2013
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