American Sports Licensing, Inc. v. abdol ali
Claim Number: FA1309001521231
Complainant is American Sports Licensing, Inc. (“Complainant”), represented by Brian M. Davis of VLP Law Group LLP, North Carolina, USA. Respondent is abdol ali (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dicksfootballstore.com>, registered with Register NV d/b/a Register.eu.
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 September 25, 2013; the National Arbitration Forum received payment on September 25, 2013.
On October 3, 2013, Register NV d/b/a Register.eu confirmed by e-mail to the National Arbitration Forum that the <dicksfootballstore.com> domain name is registered with Register NV d/b/a Register.eu and that Respondent is the current registrant of the name. Register NV d/b/a Register.eu has verified that Respondent is bound by the Register NV d/b/a Register.eu 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 October 3, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 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@dicksfootballstore.com. Also on October 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 formal response from Respondent within the meaning of the Policy and the Rules, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 30, 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 made the following contentions.
i. Respondent has no apparent preexisting rights in “Dicks Football Store” as a trademark, service mark, or trade name, nor is Respondent a licensee or authorized distributor for Complainant.
ii. Respondent is using the disputed domain name to intentionally misdirect and confuse consumers as to its affiliation with Complainant.
i. Respondent adopted, registered, and is using the subject domain name to misdirect users to Respondent’s website to mislead them into believing that they are purchasing products from Complainant.
ii. Respondent did not register or begin using the subject domain name until no earlier than August 23, 2013—long after Complainant’s DICK’S mark had acquired its fame.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. However, on October 15, 2013, the Forum received correspondence from Respondent stating: “I would to inform you that I have no idea what this complaint is all about. I do not own the domain name <dicksfootballstore.com>. Can you please stop sending letters to me (received on 9th October 2013). I have no charged you for this letter, however any further correspondence will be charged at £100 per letter and failure to pay may result in legal action taken against your organisation.”
1. Complainant is a United States company that utilizes the DICK’S mark in connection with the retail and online retail sale of sporting goods and equipment and related goods and services.
2. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the DICK’S mark (e.g., Reg. No. 2,559,355, registered April 9, 2002).
3. Respondent registered the <dicksfootballstore.com> domain name on August 23, 2013.
4. Respondent is using the disputed domain name intentionally to misdirect and confuse consumers as to its affiliation with Complainant by using Complainant’s mark and by copying onto its website content from Complainant’s website.
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 formal response within the meaning of the Policy and the Rules, 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 first question that arises is whether Complainant has rights in a trademark or service mark. Complainant contends that it has utilized the DICK’S mark in connection with the retail and online retail sale of sporting goods and equipment, outdoor goods and equipment, games, fitness equipment, apparel and footwear, including football equipment, footwear and clothing. Complainant argues that it is the owner of trademark registrations with the USPTO for the DICK’S mark (e.g., Reg. No. 2,559,355, registered April 9, 2002). See Exhibit 1. The Panel notes that Respondent appears to reside and operate in Great Britain. However, the Panel finds that Policy ¶ 4(a)(i) does not require Complainant to register its mark in the country in which Respondent resides and operates, so long as it establishes rights in the mark in some jurisdiction. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Therefore, the Panel finds that Complainant has proven its rights in the DICK’S mark under Policy ¶ 4(a)(i) through its registration with the USPTO. 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).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s DICK’S mark. Complainant claims that Respondent’s <dicksfootballstore.com> domain name is strikingly similar to Complainant’s DICK’S mark as it merely combines Complainant’s mark with generic terms associated with Complainant’s services. The Panel notes that Respondent adds the generic phrase “footballstore” to Complainant’s DICK’S mark in the disputed domain name. The Panel holds that Respondent’s inclusion of a generic term or phrase does not negate a finding of confusing similarity under Policy ¶ 4(a)(i). See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark). The Panel observes that Respondent removes the apostrophe in Complainant’s DICK’S mark for its disputed domain name. The Panel finds that Respondent’s removal of punctuation does not distinguish the domain name from Complainant’s mark under Policy ¶ 4(a)(i). See LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that the omission of an apostrophe did not significantly distinguish the domain name from the mark). Lastly, the Panel notes that Respondent adds the generic top-level domain (“gTLD”) “.com” to disputed domain name, and the Panel determines that Respondent’s inclusion of a gTLD is inconsequential to a Policy ¶ 4(a)(i) analysis. See 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” was irrelevant). Accordingly, the Panel finds that Respondent’s <dicksfootballstore.com> domain name is confusingly similar to Complainant’s DICK’S mark pursuant to Policy ¶ 4(a)(i).
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 DICK’S trademark and to use it in its domain name, adding the expression “footballstore”, thus giving the false impression that it is an official domain name of Complainant and that it will lead to an official website of Complainant’s business;
(b) Respondent has then used the domain name Respondent intentionally to misdirect and confuse consumers as to its affiliation with Complainant;
(c) Respondent has engaged in these activities without the consent or approval
of Complainant;
(d) Complainant contends that Respondent has no apparent preexisting rights in “Dicks Football Store” as a trademark, service mark, or trade name, nor is Respondent a licensee or authorized distributor for Complainant. The Panel observes that the WHOIS record for the <dicksfootballstore.com> domain name lists “abdol ali” as the registrant of the domain name. See Exhibit 4. The Panel determines, based on the WHOIS record and lack of evidence showing that Respondent is known by the domain name, that Respondent is not commonly known by the <dicksfootballstore.com> domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record);
(e) Complainant contends that Respondent is using the <dicksfootballstore.com> domain name to misdirect users to Respondent’s website and to mislead them into believing that they are purchasing products from Complainant. The Panel may observe that Respondent’s disputed domain name leads to a website including a “Browse Categories” tab, under which are links for “AFC Teams,” “NFC Teams,” “NCAA Football,” and others. See Exhibit 5. As the Panel holds that Respondent is leading Internet users to its own website to mislead them into believing they are purchasing Complainant’s products, the Panel concludes that Respondent has not used the <dicksfootballstore.com> domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site);
(f) Complainant asserts that Respondent is using the <dicksfootballstore.com> domain name intentionally to misdirect and confuse consumers as to its affiliation with Complainant. Complainant alleges that most of the content on Respondent’s website is copied directly from Complainant’s website. See Exhibits 3, 5. The Panel notes that Respondent’s website imitates the style and content viewable through Complainant’s own website. In Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) the panel held that “[b]ecause respondent in this case is also attempting to pass itself off as complainant, presumably for financial gain, the [p]anel finds respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).” As the Panel finds that Respondent is attempting to pass itself off as Complainant, the Panel holds that Respondent is not using the <dicksfootballstore.com> domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
All of these matters go to make out the prima facie case against Respondent. Respondent has not filed a formal Response, but has sent to the Forum a communication that is set out above. The Panel does not accept that that communication rebuts the prima facie case or otherwise weakens Complainant’s case and accordingly 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 contends that Respondent adopted, registered, and is using the <dicksfootballstore.com> domain name to misdirect users to Respondent’s website to mislead them into believing that they are purchasing products from Complainant. Complainant alleges that most of the content on Respondent’s website is copied directly from Complainant’s website. See Exhibits 3 and 5. Prior panels have held that a respondent’s competing use of a domain name disrupts a complainant’s legitimate business. See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website). Thus, the Panel finds that Respondent has registered and is using the <dicksfootballstore.com> domain name in bad faith under Policy ¶ 4(b)(iii).
Secondly, Complainant claims that Respondent’s <dicksfootballstore.com> domain name misdirects Internet users from Complainant’s website to Respondent’s website, trying to mislead users into believing that they are purchasing products from Complainant. The Panel observes that Respondent’s disputed domain name resolves to a commercial website that includes links to “AFC Teams,” “NFC Teams,” “NCAA Football,” and others. See Exhibit 5. In Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000), the panel found bad faith where respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that complainant is the source of, or is sponsoring, the services offered at the site. Accordingly, the Panel holds that Respondent’s use of the <dicksfootballstore.com> domain name under which it purports to offer competing services demonstrates bad faith use and registration under Policy ¶ 4(b)(iv).
Thirdly, Complainant alleges that Respondent uses the <dicksfootballstore.com> domain name to misdirect and confuse consumers as to its affiliation with Complainant. Complainant alleges that the content on Respondent’s website is copied directly from Complainant’s website. See Exhibits 3, 5. The Panel notes that Respondent’s website uses the same color found on Complainant’s website and Complainant’s DICK’S mark in the same font type used by Complainant. Id. Prior panels have held that a respondent’s use of a domain name to attempt to pass itself off as a complainant evidences bad faith use and registration. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”). Therefore, the Panel concludes that Respondent’s use of the <dicksfootballstore.com> domain name to attempt to pass itself off as Complainant shows bad faith under Policy 4(a)(iii).
Fourthly, Complainant asserts that Respondent did not register or begin using the <dicksfootballstore.com> domain name until August 23, 2013—long after Complainant’s DICK’S mark had acquired its fame. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Fifthly, 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 DICK’S mark and in view of the conduct that Respondent 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 <dicksfootballstore.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 31, 2013
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