Academy, Ltd., d/b/a Academy Sports + Outdoors v. AASLIN.COM
Claim Number: FA1306001505175
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 AASLIN.COM (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <academysportscouponsite.com>, registered with GODADDY.COM, LLC.
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 June 17, 2013; the National Arbitration Forum received payment on June 17, 2013.
On June 17, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <academysportscouponsite.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current reg-istrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC 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 June 18, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 8, 2013 by which Re-spondent 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@academysportscouponsite.com. Also on June 18, 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 July 16, 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 over 150 stores in thirteen states.
Complainant holds a registration, on file with the United States Patent and Trade-mark Office (“USPTO”) for the ACADEMY service mark (Reg. No. 1,911,968, registered August 15, 1995).
Respondent registered the contested <academysportscouponsite.com> domain name on November 17, 2011.
That domain name is confusingly similar to Complainant’s ACADEMY mark.
Respondent has not been commonly known by the domain name.
Respondent is not licensed or otherwise permitted to use Complainant’s ACADEMY mark.
The website resolving from the disputed domain name displays ACADEMY mark and purports to provide coupons for Complainant’s products and services.
Respondent also provides hyperlink advertisements on the domain name’s resolving website.
Respondent has no rights to or legitimate interests in the domain name.
Respondent seeks to sell off the domain name for $1,000.
Respondent, for commercial gain, has attempted to attract Internet users to its resolving website by creating a likelihood of confusion among Internet users with regard to the possible affiliation of the disputed domain name with Complainant’s ACADEMY mark.
Respondent registered and is using the 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-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 ACADEMY service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark author-ity, the USPTO. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006):
Complainant has established rights in the … mark through registration of the mark with the USPTO.
This is true without regard to whether Complainant’s rights in its ACADEMY mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here India). See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (find-ing that it does not matter for purposes of Policy ¶ 4(a)(i) whether a UDRP com-plainant’s mark is registered in a country other than that of a respondent’s place of business).
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <academysportscouponsite.com> domain name is confusingly similar to Complainant’s ACADEMY service mark. The domain name incorporates the entire mark, merely adding the generic words “sports,” “coupon,” and “site,” which relate to aspects of Complainant’s business, and the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save the domain name from the realm of confusing similarity under the standards of the Policy. See Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding the domain name <bodyshopdigital.com> confusingly similar to a UDRP complainant’s THE BODY SHOP trademark).
See also Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” to the mark of another in creating a domain name was irrelevant to a Policy ¶ 4(a)(i) analysis because every domain name requires a gTLD).
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 re-spondent 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 contested domain name, and that Complainant has not licensed or otherwise permitted Respondent to use Complainant’s ACADEMY mark. Moreover, the WHOIS record for the disputed <academysportscouponsite.com> domain name identifies the registrant of the domain name only as “AASLIN.COM,” which does not resemble the domain name. On this record, we conclude that Respondent has not been known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the contemplation of Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Esh-back, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights to or legitimate interests in the <emitmortgage.com> domain name where that respondent was not authorized to register domain names fea-turing a UDRP complainant’s mark and failed to submit evidence that it was commonly known by the domain name there in issue).
We next observe that Complainant asserts, without objection from Respondent, that Respondent’s website resolving from the <academysportscouponsite.com> domain name displays the ACADEMY mark and purports to provide coupons for Complainant’s products and services, and that the resolving website also pro-vides hyperlink advertisements to other websites. This employment of the do-main name is neither a bona fide offering of goods under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of this domain name under Policy ¶ 4(c)(iii). See Sears Brands, LLC v. Radu Butnaru, FA 1428032 (Nat. Arb. Forum Mar. 20, 2012) (finding neither a Policy ¶ 4(c)(i) bona fide offering, nor Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of a domain name, which was confusingly similar to the mark of a UDRP complainant, where a respondent employed the domain name to make unauthorized offers of coupons and discounts for that complainant’s goods).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent, for commercial gain, attempts to attract Internet users to the website resolving from the disputed <academysportscouponsite.com> domain name, which is confusingly similar to Complainant’s ACADEMY service mark, by creating a likelihood of confusion among Internet users with regard to the possibility of Complainant’s affiliation with that website. This demonstrates bad faith registration and use of the domain name under Policy ¶ 4(b)(iv). See, for example, Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006):
Respondent is using the disputed domain name to operate a web-site which features links to competing and non-competing commer-cial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
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 <academysportscouponsite.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 18, 2013
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