Academy, Ltd., d/b/a Academy Sports + Outdoors v. Ferruh Genc
Claim Number: FA1307001512139
Complainant is Academy, Ltd., d/b/a Academy Sports + Outdoors (“Complainant”), represented by Wendy C. Larson of Pirkey Barber PLLC, Texas, USA. Respondent is Ferruh Genc (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sportsoutdoorsacademy.com>, registered with IHS Telekom, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 30, 2013; the National Arbitration Forum received payment on July 30, 2013. The Complaint was submitted in both English and Turkish.
On August 6, 2013, IHS Telekom, Inc. confirmed by e-mail to the National Arbitration Forum that the <sportsoutdoorsacademy.com> domain name is registered with IHS Telekom, Inc. and that Respondent is the current registrant of the name. IHS Telekom, Inc. has verified that Respondent is bound by the IHS Telekom, 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 August 12, 2013, the Forum served the Turkish language Complaint and all Annexes, including a Turkish language Written Notice of the Complaint, setting a deadline of September 3, 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@sportsoutdoorsacademy.com. Also on August 12, 2013, the Turkish language 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 September 9, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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 makes the following allegations:
i. Complainant owns the ACADEMY mark through its trademark registration with the United States Patent and Trademark Office ("USPTO") (Reg. No. 1,911,968 registered August 15, 1995).
ii. Complainant also owns, through its trademark registrations with the USPTO, the ACADEMY OUTDOORS mark (Reg. No. 3,305,400, registered October 9, 2007), the ACADEMY SPORTS + OUTDOORS mark (Reg. No. 3,338,039, registered November 20, 2007), and the ACADEMY.COM mark (Reg. No. 2,834,786 registered April 20, 2004).
iii. Complainant is one of the largest sporting goods retailers in the United States, with operations in thirteen states. Complainant uses the ACADEMY SPORTS + OUTDOORS mark in connection with sporting goods and outdoor products.
iv. Complainant uses the domain name <academyoutdoor.com> to redirect users to its primary website at <academy.com>.
i. Policy ¶ 4(a)(i)
1. The <sportsoutdoorsacademy.com> domain name is identical or confusingly similar to the ACADEMY mark. The domain name is a reference to Complainant, incorporating the ACADEMY mark in its entirety and merely including the words “sports” and “outdoors,” terms highly likely to be associated with Complainant and its business. The presence of a generic top-level domain (“gTLD”) is irrelevant.
ii. Policy ¶ 4(a)(ii)
1. Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the domain name. Further, Complainant has not licensed or otherwise permitted Respondent to use the ACADEMY mark.
2. Respondent has not used the domain name in connection with a bona fide offering of goods or services, or made a legitimate noncommercial or fair use of the domain name. Initially, Respondent’s website redirected consumers to the website of Kar Spor, a Turkish company which sells goods similar to Complainant’s goods. After Complainant contacted Respondent regarding the domain name, Respondent disabled the domain so that it ceased directing users to the Kar Spor website and resolved instead to an error page stating “Internet Explorer cannot display the webpage.” See Complainant’s Exhibit E for a screenshot of the site as it currently displays.
iii. Policy ¶ 4(a)(iii)
1. Respondent uses the domain name to redirect consumers to a website offering similar goods as those offered by the Complainant, which constitutes disruption of Complainant’s business and is therefore evidence of Respondent’s bad faith.
2. Respondent uses the domain name to redirect consumers to a website offering similar goods as those offered by the Complainant. The resulting confusion as to the source, or affiliation of the goods offered is evidence of Respondent’s bad faith.
3. Respondent’s current inactive holding of the domain name is further evidence of registration and use in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1.Complainant is a United States company that is one of the largest sporting goods retailers in the United States.
2. Complainant owns the ACADEMY mark through its trademark registration with the United States Patent and Trademark Office ("USPTO") (Reg. No. 1,911,968 registered August 15, 1995).
3. Complainant also owns, through its trademark registrations with the USPTO, the ACADEMY OUTDOORS mark (Reg. No. 3,305,400, registered October 9, 2007) the ACADEMY SPORTS + OUTDOORS mark (Reg. No. 3,338,039, registered November 20, 2007), and the ACADEMY.COM mark (Reg. No. 2,834,786 registered April 20, 2004).
4. Respondent registered the <sportsoutdoorsacademy.com> domain name on February 25, 2013.
5. Initially, Respondent used the disputed domain name to redirect internet users to the website of Kar Spor, a Turkish company which sells goods similar to Complainant’s goods. More recently, the domain ceased directing users to the Kar Spor website and resolved instead to an error page stating “Internet Explorer cannot display the webpage.”
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.”).
Language of the Proceedings
The Panel notes that the Registration Agreement is written in Turkish, thereby making the language of the proceedings Turkish. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Turkish language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ACADEMY mark Complainant argues that the <sportsoutdoorsacademy.com> domain name is identical or confusingly similar to the ACADEMY mark. Complainant asserts that the domain name is a reference to Complainant, incorporating the ACADEMY mark in its entirety and merely including the words “sports” and “outdoors,” terms highly likely to be associated with Complainant and its business. Previous panels have determined that the addition of generic or descriptive terms is insufficient to differentiate a domain name from a mark incorporated therein, especially where the term is closely related the complainant’s business. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”). Further, Complainant argues that the presense of a gTLD is irrevant to the Policy ¶ 4(a)(i) analysis. Past panels have consistently agreed that the affixation of a gTLD is irrelevant, as a toplevel domain is a requirement for all domain names. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). The Panel finds that the <sportsoutdoorsacademy.com> domain name is confusingly similar to the ACADEMY mark because the alterations made to the mark in the resulting domain name are insufficient to distinguish the domain name from the mark for purposes of Policy ¶ 4(a)(i) analysis.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a) (ii), and then the burden shifts to Respondent to show it does have 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s ACADEMY trademark and to use it in its domain name, adding only the two generic words “sports” and “outdoors”, thus enhancing the confusing similarity between the domain name and the trademark;
(b) Respondent has then used the disputed domain name to redirect internet users to the website of Kar Spor, a Turkish company which sells goods similar to Complainant’s goods and more recently to an error page stating “Internet Explorer cannot display the webpage.”;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name. Complainant contends that Respondent is not commonly known by the domain name. Complainant asserts the WHOIS record initially identified “Irfan Gurkan Celebi” as the registrant of the domain, but the record was later revised to identify “Ferruh Genc” as the registrant. Further, Complainant contends that it has not licensed or otherwise permitted Respondent to use the ACADEMY mark. The Panel notes that Respondent has failed to submit a Response to refute Complainant’s contentions. The Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the 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);
(e) Complainant argues that Respondent has not used the domain name in connection with a bona fide offering of goods or services, or made a legitimate noncommercial or fair use of the domain name. Complainant asserts that, initially, Respondent’s website redirected consumers to the website of Kar Spor, a Turkish company which sells goods similar to Complainant’s goods. After Complainant contacted Respondent regarding the domain name, Complainant asserts that Respondent disabled the domain so that it ceased directing users to the Kar Spor website and resolved instead to an error page stating “Internet Explorer cannot display the webpage.” See Complainant’s Exhibit E for a screenshot of the site as it currently displays. Previous panels have refused to find a bona fide offering of goods or services, or a legitimate noncommercial use, where the disputed domain name resolved to a website that offered goods in competition with the complainant’s products. See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name). As the domain name previously redirected users to a website offering similar products to Complainant, the Panel finds that Respondent’s use of the domain name does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use, pursuant to Policy ¶¶ 4(c)(i) and (iii), respectively.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent uses the domain name to redirect consumers to a website offering similar goods as those offered by Complainant, which constitutes disruption of Complainant’s business and is therefore evidence of Respondent’s bad faith. Again, Complainant asserts that, initially, Respondent’s website redirected consumers to the website of Kar Spor, a Turkish company which sells goods similar to Complainant’s goods. However, after Complainant contacted Respondent regarding the domain name, Complainant asserts that Respondent disabled the domain so that it ceased directing users to the Kar Spor website and resolved instead to an error page stating “Internet Explorer cannot display the webpage.” See Complainant’s Exhibit E for a screenshot of the site as it currently displays. The Panel concludes that, given all the circumstances, Complainant’s allegations are sufficient to support a finding of bad faith. As that is the case, the Panel finds evidence of Respondent’s bad faith pursuant to Policy ¶ 4(b)(iii) based on Respondent’s disruption of Complainant’s business. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Secondly, Complainant claims that Respondent uses the domain name to redirect consumers to a website offering similar goods as those offered by Complainant. Complainant asserts that the confusingly similar domain name originally redirected consumers to the Kar Spor website, which sold goods similar to those sold by Complainant under its marks. Complainant urges that the resulting confusion as to the source or affiliation of the goods offered is evidence of Respondent’s bad faith. Previous panels have found evidence of bad faith in comparable circumstances. In Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000), the panel found that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant. Accordingly, the Panel finds evidence of Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv), because the Respondent relied on the confusingly similar domain name to direct users to a website that sold goods similar to those offered by Complainant.
Thirdly, Complainant argues that Respondent’s current inactive holding of the domain name is further evidence of registration and use in bad faith. Complainant asserts that after it contacted Respondent regarding the domain name, Respondent disabled the domain so that it ceased directing users to the Kar Spor website and instead resolved to an error page stating “Internet Explorer cannot display the webpage.” See Exhibit E for a screenshot of the site as it currently displays. Previous panels have used the respondent’s non-use of a confusingly similar domain name to support a finding of bad faith. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”). The Panel finds that Respondent’s current non-use of the disputed domain name is evidence of bad faith pursuant to Policy ¶ 4(a)(iii).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the ACADEMY mark and in view of the conduct that Respondent has engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sportsoutdoorsacademy.com> domain name be TRANSFERRED from Respondent to Complaint.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 11, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page