Academy, Ltd., d/b/a Academy Sports + Outdoors v. Kaittipum Thupmongkol
Claim Number: FA1309001518293
Complainant is Academy, Ltd., d/b/a Academy Sports + Outdoors (“Complainant”), represented by Tyson D. Smith of Pirkey Barber PLLC, Texas, USA. Respondent is Kaittipum Thupmongkol (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <acadamysportsoutdoorscom.com>, registered with DOMAIN.COM, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 6, 2013; the National Arbitration Forum received payment on September 6, 2013.
On September 6, 2013, DOMAIN.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <acadamysportsoutdoorscom.com> domain name is registered with DOMAIN.COM, LLC and that Respondent is the current registrant of the name. DOMAIN.COM, LLC has verified that Respondent is bound by the DOMAIN.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 September 9, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 30, 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@acadamysportsoutdoorscom.com. Also on September 9, 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 October 2, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 makes the following assertions:
1. Respondent’s <acadamysportsoutdoorscom.com> domain name is confusingly similar to Complainant’s ACADEMY SPORTS + OUTDOORS mark.
2. Respondent does not have any rights or legitimate interests in the <acadamysportsoutdoorscom.com> domain name.
3. Respondent registered and uses the <acadamysportsoutdoorscom.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is the owner of the ACADEMY SPORTS + OUTDOORS mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,338,039 registered November 20, 2007).
Respondent registered the <acadamysportsoutdoorscom.com> domain name on May 22, 2013. The disputed domain name resolves to a WordPress blog template containing only the headings “Acadamy sports out doors” and “health.”
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.”).
The Panel finds that Complainant’s registration of the ACADEMY SPORTS + OUTDOORS mark with the USPTO is sufficient to establish Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”). The Panel also notes that it has previously been determined that a complainant is not required to register its mark in the respondent’s country of residence in order to establish rights in the mark under the Policy. See, e.g., Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s <acadamysportsoutdoorscom.com> domain name is confusingly similar to its ACADEMY SPORTS + OUTDOORS mark, since it merely misspells “ACADEMY,” eliminates the “+” sign and spaces, and adds the generic terms “com” and”.com.” It is well established that the addition of a gTLD and the elimination of spacing are irrelevant for the purpose of a confusing similarity analysis. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Furthermore, a domain name that consists of a common misspelling of a complainant’s mark is confusingly similar to the mark. See Royal Bank of Scotland Grp. plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (“The Panel finds that merely by misspelling Complainants’ mark, Respondent has not sufficiently differentiated the <privelage.com> domain name from the PRIVILEGE mark under Policy ¶ 4(a)(i).”). The elimination of a symbol representing the word “and” also does not sufficiently distinguish the domain name from a complainant’s mark. See McKinsey Holdings, Inc. v. Indidom, D2000-1616 (WIPO Jan. 31, 2001) (finding that the removal of the ampersand from “McKinsey & Company” does not affect the user’s understanding of the domain name, and therefore the domain name <mckinseycompany.com> is identical and/or confusingly similar to the mark “McKinsey & Company”). Finally, the addition of a generic term such as “com” to a complainant’s mark does not sufficiently distinguish the domain name from the mark under the Policy. See Borders Props., Inc. v. Hewitt, FA 114618 (Nat. Arb. Forum July 23, 2002) (“The added ‘com’ does not defeat a confusing similarity claim because it takes advantage of a common typographical error. It is a basic mistake to type ‘com’ twice without typing the period after the targeted search term . . . [t]herefore, Respondent’s domain name is confusingly similar to Complainant’s mark.”). Accordingly, the Panel finds that the <acadamysportsoutdoorscom.com> domain name is confusingly similar to Complainant’s ACADEMY SPORTS + OUTDOORS mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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.”).
Complainant asserts that Respondent is not commonly known as <acadamysportsoutdoorscom.com> and that Complainant has not authorized Respondent to use its ACADEMY SPORTS + OUTDOORS mark in a domain name. The WHOIS information identifies “Kaittipum Thupmongkol” as the registrant of the disputed domain name, which does not show that Respondent is known as as <acadamysportsoutdoorscom.com>. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel held that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark. Here, as in Braun Corp., supra, Complainant asserts that it has not authorized Respondent to use its mark in a domain name. Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant alleges that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or 4(c)(iii) because Respondent has failed to make an active use of the domain name. Specifically, Complainant alleges that the <acadamysportsoutdoorscom.com> domain name resolves to a website that appears to be a WordPress blog template with no additional content except for the headings “Acadamy sports out doors” and “health,” which have been prominently displayed across the top of the site. Previous panels have held that a respondent’s use of a disputed domain name is not protected under Policy ¶¶ 4(c)(i) or 4(c)(iii) where the domain name does not resolve to website that displays substantive content. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s failure to associate content with its disputed domain name evinces a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).”). Thus, the Panel finds that Respondent’s use of the disputed domain name is not protected as a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or 4(c)(iii), respectively.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent has demonstrated bad faith registration and use of the <acadamysportsoutdoorscom.com> domain name under Policy ¶ 4(a)(iii) by failing to make an active use of the disputed domain name. In Hewlett-Packard Co. v. Martineau, FA 95359 (Nat. Arb. Forum Aug. 30, 2000), the panel held that a respondent’s inactive holding of the disputed domain name supported a finding of bad faith under Policy ¶ 4(a)(iii), stating: “Respondent’s failure to submit an assertion of good faith intent to use the domain name, in addition to the passive holding of the domain name, reveal that Respondent registered and uses the domain name in bad faith.” Accordingly, the Panel finds that Respondent’s use of the <acadamysportsoutdoorscom.com> domain name constitutes an inactive holding, which demonstrates Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(a)(iii).
Respondent has engaged in typosquatting, further evidence of Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). Previous panels have found that a respondent engages in typosquatting where the domain name takes advantage of a common typographical error or a common misspelling. See Borders Properties, Inc. v. Hewitt¸ FA 114618 (Nat. Arb. Forum July 23, 2002) (Finding that the respondent had engaged in typosquatting where the domain name took advantage of a common typographical error and stating “it is a basic mistake to type ‘com’ twice without typing the period after the targeted search term, in this case BORDERS.”); see also Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003), a previous panel found that the respondent registered and used the disputed domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location’” through its practice of typosquatting. Thus, the Panel finds that Respondent has registered and used the disputed name in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <acadamysportsoutdoorscom.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 9, 2013
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