The Sports Authority Michigan, Inc. v.
Domain Active Pty. Ltd.
Claim Number: FA0303000151540
Complainant is
The Sports Authority Michigan, Inc., Ft. Lauderdale, FL, USA (“Complainant”)
represented by Robert S. Gurwin of Rader Fishman & Grauer
PLLC. Respondent is Domain Active Pty. Ltd., Clayfield, Australia (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <sport-authoritey.com>, <sport-authorities.com>,
<sportauthorities.com>, <sports-authoritey.com>, <sports-authoritie.com>,
<sports-authorities.com>, <sportsauthoritie.com>, <the-sports-authorities.com>
and <thesportsauthorities.com> registered with Fabulous.com Pty
Ltd.
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.
John
J. Upchurch as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on March 25, 2003; the Forum received a hard copy of the
Complaint on March 27, 2003.
On
March 26, 2003, Fabulous.com Pty Ltd. confirmed by e-mail to the Forum that the
domain names <sport-authoritey.com>, <sport-authorities.com>,
<sportauthorities.com>, <sports-authoritey.com>, <sports-authoritie.com>,
<sports-authorities.com>, <sportsauthoritie.com>, <the-sports-authorities.com>
and <thesportsauthorities.com> are registered with Fabulous.com
Pty Ltd. and that Respondent is the current registrant of the names. Fabulous.com
Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution
Policy (the "Policy").
On
March 28, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 17, 2003 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@sport-authoritey.com, postmaster@sport-authorities.com,
postmaster@sportauthorities.com, postmaster@sports-authoritey.com, postmaster@sports-authoritie.com,
postmaster@sports-authorities.com, postmaster@sportsauthoritie.com, postmaster@the-sports-authorities.com
and postmaster@thesportsauthorities.com> by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
April 30, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s previously listed domain
names are confusingly similar to
Complainant’s SPORTS AUTHORITY mark.
2. Respondent does not have any rights or
legitimate interests in the previously listed domain names.
3. Respondent registered and used the
previously listed domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
holds several trademark registrations with the United States Patent and
Trademark Office (“USPTO”) for the SPORTS AUTHORITY mark (Reg. No. 1,529,035
registered on March 7, 1989) related to retail store services featuring
sporting equipment and clothing. Complainant operates a full-service,
e-commerce website at <thesportsauthority.com>.
Respondent
registered the disputed domain names variously on July 22, 2002, July 23, 2002
and September 6, 2002. Each of the disputed domain names resolves to a website
that offers hyperlinks to commercial websites selling sporting goods in
competition with Complainant.
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."
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.
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.
Complainant has
established that it has rights in the SPORTS AUTHORITY mark through
registration with the USPTO and continuous use in commerce since 1987.
Respondent’s
disputed domain names are confusingly similar to Complainant’s mark because
each incorporates Complainant’s entire SPORTS AUTHORITY mark and inserts a
typographical error such as the omission of the letter “s” from the word
“sports,” the inclusion of a hyphen, the pluralization or the addition of the
letter “e” to the word “authority.” These insignificant typographical errors do
not distinguish the disputed domain names from Complainant’s mark because the
mark remains the dominant feature of each of the domain names. See Victoria’s Secret v. Zuccarini, FA
95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and
adding letters to words, a Respondent does not create a distinct mark but
nevertheless renders the domain name confusingly similar to Complainant’s
marks); see also Compaq Info. Techs. Group, L.P. v. Seocho , FA 103879 (Nat. Arb. Forum Feb. 25, 2002)
(finding that the domain name <compq.com> is confusingly similar
to Complainant’s COMPAQ mark because the omission of the letter “a” in the
domain name does not significantly change the overall impression of the mark).
The Panel finds that Complainant has established Policy ¶ 4(a)(i).
Respondent has
not provided the Panel with a Response in this proceeding. Thus, the Panel is
permitted to accept any reasonable inference or allegation in the Complaint as
true. See 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”); see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw
adverse inferences from Respondent’s failure to reply to the Complaint).
Furthermore,
because Respondent has refused to respond to the Complaint, the Panel may
presume that Respondent lacks all rights to or legitimate interests in the
disputed domain names for the purposes of Policy ¶ 4(a)(ii). See Am. Online, Inc. v. AOL Int'l,
D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests
where Respondent fails to respond); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as
an admission that they have no legitimate interest in the domain names).
Respondent is
using the disputed domain names to divert Internet traffic to its websites,
which offer links to other websites that sell sporting goods in competition
with Complainant. The use of a domain name confusingly similar to a registered
mark to divert Internet users is not a bona fide offering of goods or services
under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy
¶ 4(c)(iii). See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114
(D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting
the domain names was to cause confusion with Complainant's website and marks,
its use of the names was not in connection with the offering of goods or
services or any other fair use); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb.
Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain
name to confuse and divert Internet traffic is not a legitimate use of the
domain name).
Respondent has
neglected to submit any proof to the Panel and there is no evidence in the
record that suggests Respondent is commonly known by any of the disputed domain
names. Therefore, Respondent has failed to show that it has any rights to or
legitimate interests in the disputed domain names with regard to Policy ¶
4(c)(ii). See Broadcom Corp. v.
Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no
rights or legitimate interests because Respondent is not commonly known by the
disputed domain name or using the domain name in connection with a legitimate
or fair use); see also Hartford
Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29,
2000) (finding that Respondent has no rights or legitimate interests in domain
names because it is not commonly known by Complainant’s marks and Respondent
has not used the domain names in connection with a bona fide offering of goods
and services or for a legitimate noncommercial or fair use).
Accordingly, the
Panel finds that Complainant has established Policy ¶ 4(a)(ii).
Respondent has
registered nine various misspellings of Complainant’s trademark. These
registrations demonstrate a pattern of preventing Complainant from reflecting
its mark in a corresponding domain name, which is evidence of bad faith
registration and use with regard to Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247
(Nat. Arb. Forum Sept. 8, 2000) (finding that registration of more than one
domain name that infringes on another’s registered mark(s) supports the
inference that the Respondent knew of the Complainant’s marks upon registering
the domain names; and the registration of multiple domain names that infringe
on the Complainant’s trademark(s) is evidence of a pattern of conduct); see
also Gamesville.com, Inc. v.
Zuccarini, FA 95294 (Nat. Arb. Forum Aug. 30, 2000) (finding that
Respondent engaged in a pattern of conduct of registering domain names to
prevent the owner of the trademark from reflecting the mark in a corresponding
domain name, which is evidence of registration and use in bad faith).
The Panel may
infer that Respondent is profiting from the disputed domain names because the
websites those domain names resolve to provide links to commercial websites
that sell sporting goods in competition with Complainant. The intentional
attempt to attract Internet users for commercial gain by creating a likelihood
of confusion with Complainant’s mark is evidence of bad faith registration and
use under Policy ¶ 4(b)(iv). See
TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001)
(finding bad faith where Respondent used the domain name, for commercial gain,
to intentionally attract users to a direct competitor of Complainant); see
also Busy Body, Inc. v. Fitness
Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where
Respondent attempted to attract customers to its website,
<efitnesswholesale.com>, and created confusion by offering similar products
for sale as Complainant).
The Panel finds
that Policy ¶ 4(a)(iii) has been established.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <sport-authoritey.com>, <sport-authorities.com>,
<sportauthorities.com>, <sports-authoritey.com>, <sports-authoritie.com>,
<sports-authorities.com>, <sportsauthoritie.com>, <the-sports-authorities.com>
and <thesportsauthorities.com> domain names be TRANSFERRED
from Respondent to Complainant.
John J. Upchurch , Panelist
Dated:
May 6, 2003
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home
Page