Academy, Ltd., d/b/a Academy Sports + Outdoors v. Pham Dinh Nhut
Claim Number: FA1404001552721
Complainant is Academy, Ltd., d/b/a Academy Sports + Outdoors (“Complainant”), represented by Tyson D. Smith of Pirkey Barber PLLC, Texas, USA. Respondent is Pham Dinh Nhut (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <magellanoutdoors.com>, registered with April Sea Information Technology Corporation.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 4, 2014; the National Arbitration Forum received payment on April 4, 2014. The Complaint was served in English and Vietnamese.
On April 7, 2014, April Sea Information Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <magellanoutdoors.com> domain name is registered with April Sea Information Technology Corporation and that Respondent is the current registrant of the name. April Sea Information Technology Corporation has verified that Respondent is bound by the April Sea Information Technology Corporation 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 April 14, 2014, the Forum served the Vietnamese language Complaint and all Annexes, including a Vietnamese language Written Notice of the Complaint, setting a deadline of May 5, 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@magellanoutdoors.com. Also on April 14, 2014, the Vietnamese 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 May 6, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
Academy Ltd., d/b/a Academy Sports + Outdoors (referred to herein as “Complainant” or “Academy”), is one of the largest sporting goods retailers in the United States, operating over 170 stores in thirteen states. For many years, Academy has used the marks MAGELLAN OUTDOORS, MAGELLAN SPORTSWEAR, MAGELLAN FOOTWEAR, and MAGELLAN (referred to collectively herein as the “MAGELLAN Marks”), in connection with its business. Academy has used the mark MAGELLAN OUTDOORS for over 15 years, and has used the MAGELLAN Marks continuously since that time in connection with a wide variety of outdoor products, including fishing, hiking, hunting, camping, and outdoor apparel, footwear, gear, accessories, and other products. Academy had annual sales of over $100 million in 2013 for products sold under the mark MAGELLAN OUTDOORS, and uses the mark MAGELLAN OUTDOORS, as well as other MAGELLAN Marks, extensively in advertising, catalogs, and promotional materials, as well as on its website located at www.academy.com. Further, Academy’s products sold under the MAGELLAN Marks may be ordered online by consumers and shipped nationally. Academy does a significant volume of its business online.
In addition to its common law trademark rights resulting from its long and extensive use of the MAGELLAN Marks, Academy also owns the following U.S. trademark applications and registrations:
· MAGELLAN OUTDOORS: U.S. Ser. Nos. 86/115,094 and 86/115,058
· MAGELLAN SPORTSWEAR: U.S. Reg. Nos. 2,595,293 and 2,759,213
· MAGELLAN FOOTWEAR: U.S. Reg. No. 2,426,317
The registrations listed above are incontestable under 15 U.S.C. §1065.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds:
a. The domain name magellanoutdoors.com is identical or confusingly similar to Complainant’s well-known MAGELLAN Marks. The domain name incorporates Academy’s well-known mark MAGELLAN OUTDOORS in its entirety. The presence of a generic top-level domain (“.com”) is irrelevant in a UDRP 4(a)(i) analysis.[1]
b. Respondent has no rights or legitimate interests in the domain name magellanoutdoors.com.
(i) Respondent has not used, nor made any demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Respondent uses the disputed domain name for a monetized parking page displaying various links featuring the mark MAGELLAN OUTDOORS and other links consumers are likely to associate with Academy or its products sold under the MAGELLAN Marks (e.g. “Magellan Outdoors,” “Magellan Outdoor Shirts,” “Magellan Clothing,” and “Magellan Outdoor Camping”), yet in reality divert traffic to third-party websites not affiliated with Academy.[2]
(ii) Respondent is not commonly known by the domain name magellanoutdoors.com. In addition, Complainant has not licensed or otherwise permitted Respondent to use its MAGELLAN Marks.
(iii) Respondent is not making a legitimate noncommercial or fair use of the domain name.
c. Respondent registered and is using the domain name magellanoutdoors.com in bad faith.
(i) Respondent presumably is paid a fee or commission when Internet users visit the website at magellanoutdoors.com, click on the various links likely to be associated with Academy or its MAGELLAN products, and are diverted to third-party websites. Thus, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Academy’s mark MAGELLAN OUTDOORS and other MAGELLAN Marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and/or the links displayed on Respondent’s website.
(ii) Not only is the domain name itself highly likely to cause confusion, but Respondent displays link titles on its website that are clear references to Academy’s MAGELLAN Marks and the products sold under those marks.
(iii) Respondent has engaged in a pattern of bad faith registration and use of others’ trademarks in domain names. This pattern is evidenced by the at least one other NAF UDRP case decided against Respondent.
(iv) Respondent’s bad faith is also evidenced by the fact that Respondent owns no trademark or other intellectual property rights in the domain name; the domain name does not consist of the legal name of or a name commonly used to identify Respondent; Respondent has not used the domain name in connection with the bona fide offering of any goods or services; Respondent has made no bona fide noncommercial or fair use of Complainant’s marks in a site accessible under the domain name; and Respondent’s domain name incorporates the highly distinctive mark MAGELLAN OUTDOORS. See 15 U.S.C. §1125(d)(1)(B)(i).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 uses the MAGELLAN family of marks in connection with the sale of hunting, camping, fishing, and other outdoor goods. Complainant registered the similar MAGELLAN FOOTWEAR mark with the United States Patent & Trademark Office (“USPTO”) (Reg. No. 2,426,317, registered Feb. 6, 2001), which evidences Complainant’s rights in the MAGELLAN FOOTWEAR mark under Policy ¶4(a)(i). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶4(a)(i)] rights even when Respondent lives or operates in a different country.”). Complainant has also registered the MAGELLAN SPORTSWEAR mark with the USPTO.
Complainant uses the MAGELLAN OUTDOORS mark in commerce in connection with a line of products sold both in stores and on the Internet. Complainant has had over $100 million in 2013 for goods sold under the MAGELLAN OUTDOORS marks. Complainant has used the MAGELLAN OUTDOORS mark for over fifteen years. Complainant has sought trademark registration for this MAGELLAN OUTDOORS mark with the USPTO (Ser. No. 86,115,094, filed Nov. 11, 2013). Complainant has failed to use the “magic words” in its complaint which indicate this mark has acquired a secondary meaning. See AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”). Therefore, this Panel declines to find Complainant has common law rights in the MAGELLAN OUTDOORS mark due to lack of evidence.
Respondent’s <magellanoutdoors.com> domain name incorporates the entire MAGELLAN portion of Complainant’s marks and adds on a gTLD. A gTLD is disregarded under Policy ¶4(a)(i) confusingly similar test because it is required by domain name syntax. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant’s RED HAT mark because the mere addition of gTLD and elimination of spacing was insufficient to differentiate the disputed domain name from the mark).
Respondent also add the descriptive word “outdoors” to Complainant’s MAGELLAN mark in the disputed domain name. Even adding the descriptive word, Respondent’s disputed domain name is still confusingly similar to Complainant’s marks.
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent is not, nor has it ever been, commonly known as the <magellanoutdoors.com> domain name. The WHOIS information lists “Pham Dinh Nhut” and “Vietnam Domain Privacy Services” as the registrant of record for the domain name (the Vietnam Domain Privacy Services was dropped in favor of Pham Dinh Nhut once this proceeding started). In Jordan Cook p/k/a Reignwolf v. Ryan Crase, Ryan Crase Creative Media, FA 1520515 (Nat. Arb. Forum Oct. 28, 2013) the panel determined there was no basis on the record for finding the respondent was known by the disputed domain name. There is no basis for concluding Respondent has ever been commonly known by this <magellanoutdoors.com> domain name under Policy ¶4(c)(ii).
Complainant claims Respondent makes no bona fide offering of goods through the <magellanoutdoors.com> domain name. The disputed domain name’s website contains an array of hyperlink advertisements that include the term “Magellan.” The panel in Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) found that a list of targeted advertisements was not a bona fide offering within the meaning of the Policy. Respondent’s use of the domain name solely for hosting advertisements is not a Policy ¶4(c)(i) bona fide offering of goods or services, or a Policy ¶4(c)(iii) legitimate noncommercial or fair use.
It appears Respondent used a privacy service to register the disputed domain names. This means the bare title owner claims no ownership over the disputed domain name (other than acting as a nominee). The real, or beneficial, owner does not publicly associate itself with the disputed domain name. This means the beneficial owner cannot have acquired any rights in a commercial context.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent has engaged in a pattern of bad faith use and registration of other trademarks in domain names. There has been at least one prior UDRP proceeding decided against Respondent. This Panel is not convinced. Of course there will be other cases against a WHOIS privacy nominee (especially if they have any commercial success). However, the named owner is not the real party in interest. Furthermore, Policy 4(b)(ii) requires Respondent to prevent Complainant from reflecting its mark in a domain name to prove bad faith in this context. Complainant has not claimed that nor proven it.
Every Respondent is entitled a fair determination under a UDRP proceeding. The fact Respondent may have appeared in other cases and lost should not prejudice the Panel.
Complainant cites to 15 U.S.C. §1125(d)(1)(B)(i) in support of its claim. This Panel is not quite so parochial it is willing to find the United States has the prescriptive power to legislate law in Vietnam. This is a UDRP Proceeding. It is governed by the UDRP Policy and not United States law (even though the Panel will accept general principals of law recognized by civilized nations without referring to the law of a single country). The internet is no longer a DARPA project controlled solely by the United States military, see, for example, ccTLDs.
Complainant claims Respondent’s use of the <magellanoutdoors.com> domain name illustrates an attempt to profit off of the likelihood Internet users will be confused into believing this website is somehow associated with Complainant and the MAGELLAN marks. Confused Internet users visiting this website serves only to increase Respondent’s own personal advertising revenue by their use of “click through links.” The disputed domain name resolves to a website featuring advertisements including the trademarked term MAGELLAN. Respondent’s attempt to profit through hyperlinks referencing Complainant’s trademarks is evidence of Policy ¶4(b)(iv) bad faith. 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). This is adequate proof of bad faith registration and use of the disputed domain name.
Finally, Respondent registered the disputed domain name using a WHOIS privacy service. This Panel has repeatedly held such conduct in a commercial context raises the rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut this presumption. This factor alone justifies a finding of bad faith registration and use of the dispute domain name.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <magellanoutdoors.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Friday, May 9, 2014
[1] See Trip Network Inc. v. Alviera, FA914943 (NAF Mar. 27, 2007) (concluding that the addition of a gTLD is irrelevant to a Policy ¶4(a)(i) analysis).
[2] See Baylor University v. Transure Enterprise Ltd c/o Host Master, FA1220900 (NAF Oct. 7, 2008) (finding that using domain names for web pages that display monetized links to unrelated third parties does not constitute 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)).
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