Academy, Ltd., d/b/a Academy Sports + Outdoors v. Above.com Domain Privacy
Claim Number: FA1312001534165
Complainant is Academy, Ltd., d/b/a Academy Sports + Outdoors (“Complainant”), represented by Tyson D. Smith of Pirkey Barber PLLC, Texas, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sportsacademey.com>, registered with ABOVE.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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 11, 2013; the National Arbitration Forum received payment on December 11, 2013.
On December 12, 2013, ABOVE.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <sportsacademey.com> domain name is registered with ABOVE.COM PTY LTD. and that Respondent is the current registrant of the name. ABOVE.COM PTY LTD. has verified that Respondent is bound by the ABOVE.COM PTY LTD. 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 December 13, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 2, 2014 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@sportsacademey.com. Also on December 13, 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 January 7, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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.
1. Policy ¶ 4(a)(i)
a. Complainant is one of the largest sporting goods retailers in the United States, operating about 170 stores throughout thirteen states.
b. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the following marks:
i. ACADEMY (e.g., Reg. No. 1,911,968 registered August 15, 1995);
ii. ACADEMY.COM (Reg. No. 2,834,786 registered April 20, 2004);
iii. ACADEMY SPORTS + OUTDOORS (Reg. No. 3,338,039 registered November 20, 2007); and
iv. ACADEMY OUTDOORS (Reg. No. 3,305,400 registered October 9, 2007).
c. Respondent’s <sportsacademey.com> domain name is confusingly similar to Complainant’s ACADEMY mark.
i. The disputed domain name is an obvious reference to Complainant, merely combining a deliberate misspelling of Complainant’s well-known ACADEMY mark with the word “sports,” a term highly likely to be associated with Complainant.
ii. The presence of a generic top-level domain (“gTLD”) is irrelevant in a UDRP analysis.
2. Policy ¶ 4(a)(ii)
a. Respondent is not commonly known by the <sportsacademey.com> domain name.
b. Complainant has not licensed or otherwise permitted Respondent to use Complainant’s marks.
c. Respondent uses the disputed domain name in connection with a monetized parking page displaying various third-party links that consumers are likely to associate with Complainant and/or its products and services (e.g., “The Academy Sports Store,” “Academy Sporting Goods,” “Academy Sporting Goods Stores,” and “Academy Sports and Outdoors”).
d. The fact that the <sportsacademey.com> domain name is a typographical error of Complainant’s ACADEMY mark is additional evidence that Respondent lacks rights to and legitimate interests in the disputed domain name.
3. Policy ¶ 4(a)(iii)
a. Respondent has engaged in a pattern of bad faith registration and use of others’ trademarks in domain names.
b. Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and/or the links displayed on Respondent’s website. Respondent is presumably paid a fee or commission when Internet users visit Respondent’s website, click on the various links that appear likely to be associated with Complainant, and are diverted to third-party websites.
c. Respondent’s typosquatting activity is further evidence of bad faith registration and use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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.”).
Complainant claims to be one of the largest sporting goods retailers in the United States, operating about 170 stores throughout thirteen states. Complainant presents evidence of its registration of several marks with the USPTO, including ACADEMY (e.g., Reg. No. 1,911,968 registered August 15, 1995), ACADEMY.COM (Reg. No. 2,834,786 registered April 20, 2004), ACADEMY SPORTS + OUTDOORS (Reg. No. 3,338,039 registered November 20, 2007), and ACADEMY OUTDOORS (Reg. No. 3,305,400 registered October 9, 2007). The Panel finds that Complainant’s USPTO registrations confer rights in the respective marks under Policy ¶ 4(a)(i), regardless of the fact that Respondent appears to reside outside of the United States. 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).”); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant next claims that Respondent’s <sportsacademey.com> domain name is confusingly similar to Complainant’s ACADEMY mark. Complainant states that the disputed domain name is an obvious reference to Complainant, merely combining a deliberate misspelling of Complainant’s well-known ACADEMY mark with the word “sports,” a term highly likely to be associated with Complainant. Previous panels have found that the addition of a term referencing a complainant’s business does not alleviate a domain name’s confusing similarity to the complainant’s mark. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). Complainant also urges that the presence of the gTLD “.com” is irrelevant in a UDRP analysis. See Metro-Goldwyn-Mayer Studios Inc. v. Antigua Domains, FA 1073020 (Nat. Arb. Forum Oct. 17, 2007) (“[T]he inclusion of the generic top-level domain ‘.com’ is inconsequential to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names.”). In light of the foregoing, the Panel holds that Respondent’s <sportsacademey.com> domain name is confusingly similar to Complainant’s ACADEMY mark within the meaning of Policy ¶ 4(a)(i).
Complainant has proven this element.
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.”).
Complainant contends that Respondent is not commonly known by the <sportsacademey.com> domain name. Complainant adds that it has not licensed or otherwise permitted Respondent to use its marks. In Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), the panel held that the respondent was not commonly known by the <lilpunk.com> domain name where there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name. The Panel notes that the relevant WHOIS record identifies Respondent as “Above.com Domain Privacy,” which the Panel construes as providing no evidence that Respondent is in fact commonly known by the disputed domain name. In view of the foregoing, the Panel concludes that Respondent is not commonly known by the <sportsacademey.com> domain name for the purposes of Policy ¶ 4(c)(ii).
Complainant next contends that Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services. According to Complainant, Respondent uses the disputed domain name in connection with a monetized parking page displaying various third-party links that consumers are likely to associate with Complainant and/or its products and services (e.g., “The Academy Sports Store,” “Academy Sporting Goods,” “Academy Sporting Goods Stores,” and “Academy Sports and Outdoors”). The Panel agrees that such use constitutes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use, the Panel holds that Respondent’s use of the <sportsacademey.com> domain name satisfies neither Policy ¶4(c)(i) nor Policy ¶4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
Complainant further contends that the fact that the <sportsacademey.com> domain name is a typographical error of Complainant’s ACADEMY mark is additional evidence that Respondent lacks rights to and legitimate interests in the disputed domain name. The Panel notes that previous panels have typically found typosquatting in situations where a disputed domain name contains only a misspelled version of the complainant’s mark or the where the prefix “www” or the suffix “com” is added to the mark, not in situations where the domain also includes a generic or descriptive term. Accordingly, the Panel declines to find that Respondent lacks rights or legitimate interests in the <sportsacademey.com> domain name because of typosquatting.
Complainant has proven this element.
Complainant complains that Respondent has engaged in a pattern of bad faith registration and use of others’ trademarks in domain names. See, e.g., Vanguard Trademark Holdings USA LLC v. Above.com Domain Privacy, FA 1333300 (Nat. Arb. Forum Aug. 4, 2010); Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010); U.S. Smokeless Tobacco Mfg. Co. v. Above.com Domain Privacy, FA 1336145 (Nat. Arb. Forum Aug. 30, 2010). The Panel notes that the name “Above.com Domain Privacy” appears to relate to a registrar’s privacy protection service, and likely does not represent a single underlying entity. The Panel determines that the immediate Respondent was also a party to the UDRP decisions. The Panel finds that Respondent registered and uses the <sportsacademey.com> domain name as a part of a pattern of bad faith pursuant to Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
Complainant alleges that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and/or the links displayed on Respondent’s website. Complainant presumes that Respondent is paid a fee or commission when Internet users visit Respondent’s website, click on the various links that appear likely to be associated with Complainant, and are diverted to third-party websites. The Panel agrees that Respondent registered the <sportsacademey.com> domain name in an attempt to generate a commercial gain by creating a likelihood of confusion with Complainant and its marks and the Panel finds that Respondent registered and uses the <sportsacademey.com> domain name in bad faith according to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Complainant further alleges that the fact that the <sportsacademey.com> domain name is a typographical error of Complainant’s ACADEMY mark is additional evidence that Respondent registered the domain name in bad faith. The Panel notes that previous panels have typically found typosquatting in situations where a disputed domain name contains only a misspelled version of the complainant’s mark or the where the prefix “www” or the suffix “com” is added to the mark, not in situations where the domain also includes a generic or descriptive term. Accordingly, the Panel decline to finds that Respondent registered the <sportsacademey.com> domain name in bad faith on account of typosquatting.
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sportsacademey.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: January 8, 2014
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