national arbitration forum

 

DECISION

 

Academy, Ltd., d/b/a Academy Sports + Outdoors v. domain Administrator

Claim Number: FA1304001496511

PARTIES

Complainant is Academy, Ltd., d/b/a Academy Sports + Outdoors (“Complainant”), represented by Tyson D. Smith of Pirkey Barber PLLC, Texas, USA.  Respondent is domain Administrator (“Respondent”), New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <acadamysports.com>, registered with Moniker Online Services, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 25, 2013; the National Arbitration Forum received payment on April 25, 2013.

 

On May 2, 2013, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <acadamysports.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name.  Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. 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 May 3, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 23, 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@acadamysports.com.  Also on May 3, 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 May 31, 2013, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Academy Ltd., d/b/a Academy Sports + Outdoors (referred to herein as “Complainant” or “Academy”), is one of the largest sporting goods retailers in the United States, operating about 159 stores in 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 (referred to collectively herein as the “ACADEMY marks”), in connection with its business. Academy’s retail stores operated under the ACADEMY marks provide a variety of services and sell a wide range of sporting goods and outdoor products.

 

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 uses these marks extensively on exterior signage at its stores, in advertising, catalogs, and promotional materials, as well as on its website located at www.academy.com. Academy’s products may be ordered online by consumers and shipped nationally.  Academy does a significant volume of its business online.  Moreover, Academy’s domain name academysports.com (and many other similar domain names) redirects to Complainant’s www.academy.com website, and is used by Internet users directly navigating to Academy’s website. In addition, Academy has long used “Academy Sports & Outdoors” and/or “Academy Sports + Outdoors” as its registered trade name.

 

In addition to its common law trademark rights resulting from its long use of the ACADEMY marks, Academy also owns the following U.S. trademark registrations (among others):

 

·                    ACADEMY: U.S. Reg. No. 1,911,968

·                    ACADEMY.COM: U.S. Reg. No. 2,834,786

·                    ACADEMY SPORTS + OUTDOORS: U.S. Reg. No. 3,338,039

·                    ACADEMY OUTDOORS: U.S. Reg. No. 3,305,400

 

U.S. Registration Nos. 1,911,968 and 2,834,786 are incontestable under 15 U.S.C. § 1065.

                                                             

FACTUAL AND LEGAL GROUNDS

 

This Complaint is based on the following factual and legal grounds:

 

            a.         The domain name acadamysports.com is identical or confusingly similar to Complainant’s well-known ACADEMY marks.  The domain name is an obvious reference to Complainant, containing a deliberate misspelling of Academy’s well-known mark ACADEMY (and its domain name academysports.com) and merely tacking on the word “sports,” a term highly likely to be associated with Complainant.  The presence of a generic top-level domain (“.com”) is irrelevant in a UDRP 4(a)(i) analysis.^[1]

 

b.         Respondent has no rights or legitimate interests in the domain name acadamysports.com.

 

            (i)         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 March 7, 2013, 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 various links that consumers are likely to associate with Academy and/or its products and services, yet in reality divert traffic to third-party websites not affiliated with Academy.^[2]

 

            (ii)        Respondent is not commonly known by the domain name acadamysports.com.  In addition, Complainant has not licensed or otherwise permitted Respondent to use Complainant’s ACADEMY marks.

 

            (iii)       Respondent is not making a legitimate noncommercial or fair use of the domain name.  Instead, as detailed above in paragraph 5(b)(1), Respondent is using the domain name for a pay-per-click parking page displaying links with titles likely to be associated with Complainant or its products and services.^[3]

 

(iv)       The fact that the domain name acadamysports.com is a typographical error of Complainant’s ACADEMY marks and its domain name academysports.com is additional evidence that Respondent lacks rights to and legitimate interests in the disputed domain name under Policy ¶4(a)(ii).^[4]

 

c.         Respondent registered and is using the domain name acadamysports.com in bad faith.

 

            (i)         Respondent presumably is paid a fee or commission when Internet users visit the website at acadamysports.com, click on the various 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.^[5]

 

            (ii)        Respondent has ignored Academy’s demands and continued its infringing activity despite being given notice of Academy’s trademark rights.

                                                                                        

            (iii)       Not only is the domain name itself highly likely to cause confusion, but Respondent displays link titles on its website that are clear references to Academy.

 

            (iv)       Respondent’s typosquatting described in paragraph 5(b)(iv) above is also evidence of its bad-faith registration and use of acadamysports.com.^[6]

 

(v)        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 mark.  See 15 U.S.C. § 1125(d)(1)(B)(i).

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(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.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

Complainant Academy, Ltd., d/b/a Academy Sports + Outdoors claims it is one of the largest sporting goods retailers in the United States, operating about 159 stores in thirteen states. Complainant owns trademark registrations with the United States Patent & Trademark office (“USPTO”) for the ACADEMY mark (Reg. No. 1,911,968, registered August 15, 1995), for the ACADEMY.COM mark (Reg. No. 2,834,786, registered April 20, 2004), ACADEMY SPORTS + OUTDOORS (Reg. No. 3,338,039, registered November 20, 2007), and for the ACADEMY OUTDOORS (Reg. No. 3,305,400, registered October 9, 2007). Complainant’s registration of the ACADEMY, ACADEMY.COM, ACADEMY SPORTS + OUTDOORS, and ACADEMY OUTDOORS marks with the USPTO adequately demonstrates its rights in the marks under Policy ¶4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶4(a)(i) through registration of the mark with the USPTO).

 

Complainant claims Respondent’s domain name <acadamysports.com> is identical or confusingly similar to Complainant’s well-known ACADEMY marks, containing a deliberate misspelling of Complainant’s well-known mark ACADEMY, and merely tacking on the word “sports,” a term associated with Complainant. Respondent’s misspelling of Complainant’s ACADEMY mark by substituting one letter for another does not adequately distinguish the domain name from the mark under Policy ¶4(a)(i). See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”). Respondent’s addition of a descriptive term does not adequately distinguish the disputed domain name from Complainant’s mark under Policy ¶4(a)(i) (Complainant’s October 25, 2006 USPTO registration which includes that descriptive term was filed AFTER the disputed domain name was registered on June 9, 2006). See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). The generic top-level domain (“gTLD”) “.com” on the disputed domain name must be disregarded  for the purposes of a Policy ¶4(a)(i) analysis. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD  is “unable to create a distinction capable of overcoming a finding of confusing similarity”). Respondent’s <acadamysports.com> domain name is confusingly similar to Complainant’s ACADEMY mark pursuant to Policy ¶4(a)(i).

 

The Panel finds Policy ¶4(a)(i) satisfied.  

 

Rights or Legitimate Interests

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 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 claims Respondent is not commonly known by the domain name <acadamysports.com>. The WHOIS record for the disputed domain name lists “domain Administrator” as the registrant (once the privacy service revealed the true registrant). Complainant claims it has not licensed or otherwise permitted Respondent to use Complainant’s ACADEMY mark. In Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), the panel held that respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name. It seems evident Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii).

 

Complainant claims Respondent is using the domain name for a pay-per-click page displaying links with titled likely to be associated with Complainant or its products and services. Respondent’s domain name links to a website providing competing and unrelated hyperlinks titled “ACADEMY SPORTS+OUTDOORS,” “Discount Sports Equipment,” “CELEBRATE EARTH DAY 2013,” and others. Complainant claims Respondent’s domain name diverts traffic to third-party websites not affiliated with Complainant, which disrupts its business. Respondent’s use of the domain name to provide competing and unrelated links is not a Policy ¶4(c)(i) bona fide offering of goods and services or a Policy ¶4(c)(iii) legitimate noncommercial or fair use. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was 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 also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).

 

Furthermore, Respondent has apparently not made any use of the disputed domain name since June 2006.  Respondent is a privacy service, which means the legal owner of the disputed domain name has no interest in how it is run.  The undisclosed beneficial owner of the domain name controls the disputed domain name, but does not have its name publicly associated with the domain name.  In the commercial context, this gives rise to the rebuttable presumption Respondent has acquired no rights to the disputed domain name.  Respondent has done nothing to rebut this presumption.

 

The Panel finds Policy ¶4(a)(ii) satisfied.  

 

Registration and Use in Bad Faith

Complainant claims Respondent presumably is paid (directly or indirectly) a fee or commission when Internet users visit the website at <acadamysports.com>, click on the various links likely to be associated with Complainant, and are diverted to third-party websites. Respondent’s domain name links to a website providing competing and unrelated hyperlinks. Complainant claims Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and/or the links displayed on Respondent’s website. The Panel agrees and finds Respondent’s use of the domain name constitutes attracting consumers to Respondent’s website for its own commercial gain, proving bad faith use and registration pursuant to Policy ¶4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶4(b)(iv)).

 

Respondent registered the domain name with a privacy service.  In the commercial context, this gives rise to the rebuttable presumption Respondent registered and uses the disputed domain name in bad faith.  Respondent has done nothing to rebut this presumption.  Therefore, this element is found based upon this evidence alone.

 

Furthermore, Respondent has an obligation to provide accurate WHOIS information, whether or not it uses a privacy service.  The information provided by the privacy services shows Respondent didn’t do this.  The address is completely unusable, leading the Panel to conclude Respondent has lied about its identity.  This raises the rebuttable presumption of Respondent’s bad faith.  Once again, Respondent did nothing to rebut the presumption.

 

The Panel finds Policy ¶4(a)(iii) satisfied.  

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.

 

Accordingly, it is Ordered the <acadamysports.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Houston Putnam Lowry, Chartered Arbitrator, Panelist

Dated: Friday, May 31, 2013