Academy, Ltd., d/b/a Academy Sports & Outdoors v.
Claim Number: FA0610000823129
Complainant is Academy, Ltd., d/b/a Academy Sports & Outdoors (“Complainant”), represented by William
G. Barber, of Pirkey Barber LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <academysports-outdoors.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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 18, 2006; the National Arbitration Forum received a hard copy of the Complaint on October 19, 2006.
On October 18, 2006, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <academysports-outdoors.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. 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 October 23, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 13, 2006 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@academysports-outdoors.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 16, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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." 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 <academysports-outdoors.com> domain name is confusingly similar to Complainant’s ACADEMY mark.
2. Respondent does not have any rights or legitimate interests in the <academysports-outdoors.com> domain name.
3. Respondent registered and used the <academysports-outdoors.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Academy, Ltd., d/b/a Academy Sports & Outdoors, is a sporting goods retailer that operates over ninety stores in approximately ten states. Complainant has been continuously using the ACADEMY mark in connection with the sale of sporting goods for over fifty years. Since 1995, Complainant has also used the ACADEMY SPORTS+OUTDOORS and ACADEMY SPORTS & OUTDOORS marks on its store signs, in advertising materials, and on its website located at the <academy.com> domain name.
Complainant holds trademark registrations with the United States Patent and Trademark Office for the ACADEMY (Reg. No. 1,911,968 issued August 15, 1995) and ACADEMY.COM (Reg. No. 2,834,786 issued April 20, 2004) marks.
Respondent’s <academysports-outdoors.com> domain name, which it registered on March 16, 2006, resolves to a commercial web directory featuring links to websites selling sporting goods in direct 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. 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.”).
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 registered the ACADEMY mark with the USPTO. The Panel finds this valid trademark
registration to sufficiently demonstrate Complainant’s rights in the mark for
purposes of Policy ¶ 4(a)(i). See Thermo Electron Corp
et al. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (holding
that the complainants established rights in marks because the marks were
registered with a trademark authority); see also
Respondent’s <academysports-outdoors.com>
domain name wholly incorporates Complainant’s ACADEMY mark and adds two terms
that describe Complainant’s business. In
Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001), where the
respondent registered domain names containing the complainant’s CHANEL mark
combined with descriptive terms, the panel stated, “CHANEL, the salient feature
of the Domain Names, is identical to a mark in which Complainant has shown
prior rights. The addition of the
generic term, “perfumes” is not a distinguishing feature, and in this case
seems to increase the likelihood of confusion because it is an apt term for
Complainant’s business.” Because Complainant’s
main business is the sale of sporting goods, the addition of the terms “sports”
and “outdoors,” along with a hyphen, are not distinguishing differences. Therefore, the Panel holds that the <academysports-outdoors.com>
domain name is confusingly similar to Complainant’s ACADEMY mark pursuant to
Policy ¶ 4(a)(i).
See Eastman Chemical Co. v. Patel, FA 524752
(Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that
the addition of a term descriptive of Complainant’s business, the addition of a
hyphen, and the addition of the gTLD “.com” are insufficient to distinguish
Respondent’s domain name from Complainant’s mark.”).
The Panel concludes that Complainant has sufficiently satisfied Policy ¶ 4(a)(i).
Complainant asserts that Respondent has no rights or
legitimate interests in the <academysports-outdoors.com>
domain name. Complainant must
first make a prima facie case in support of its allegations, and then
the burden shifts to Respondent to show it does have rights or legitimate
interests pursuant to Policy ¶ 4(a)(ii). See Hanna-Barbera Productions, 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 Policy ¶ 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 Document Tech., Inc. v. Int’l Elec. Commc’ns
Inc., D2000-0270 (WIPO Jun. 6, 2000) (“Although Paragraph 4(a) of the
Policy requires that the Complainant prove the presence of this element (along
with the other two), once a Complainant makes out a prima facie showing,
the burden of production on this factor shifts to the Respondent to rebut the
showing by providing concrete evidence that it has rights to or legitimate
interests in the Domain Name.”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <academysports-outdoors.com> domain name. See Am. Online, Inc. v. AOL Int'l,
D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests
where the respondent fails to respond); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June
20, 2000) (“By not submitting a response, Respondent has failed to invoke any
circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any
rights or legitimate interests in the domain name”).
However, the Panel will now
examine the record to determine if Respondent has rights or legitimate
interests under Policy ¶ 4(c).
Respondent has registered the domain name under the name “I. Lik Itt,” and there is no other evidence in
the record suggesting that Respondent is commonly known by the <academysports-outdoors.com> domain
name. Thus, Respondent has not
established rights or legitimate interests in the contested domain name
pursuant to 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); see also Wells Fargo
& Co. v. Onlyne Corp. Services11, Inc.,
FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information
for the disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
In addition, Respondent’s <academysports-outdoors.com> domain name, which includes Complainant’s ACADEMY mark, resolves to a search engine website containing links to Complainant’s competitors in the sporting goods industry. In TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002), the panel concluded that respondent’s registration and use of confusingly similar domain names to divert Internet users to its own website did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial fair use under Policy ¶ 4(c)(iii), and that hosting links to the complainant’s direct competitors only reinforced that conclusion. In this case, Respondent is also diverting Internet users to its own website featuring links to Complainant’s direct competitors and is likely earning pay-per-click fees. Thus, Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial use under Policy ¶ 4(c)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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)).
The Panel concludes that Complainant has sufficiently satisfied Policy ¶ 4(a)(ii).
Respondent’s use of the <academysports-outdoors.com> domain name to operate a
commercial web directory with links to Complainant’s competitors provides
evidence that Respondent has registered and used the disputed domain name in
bad faith pursuant to Policy ¶ 4(b)(iv).
In Drs. Foster
& Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21,
2000), the panel held that the respondent’s diversion of Internet users who
were seeking the complainant’s website to its own website for commercial gain
created “a likelihood of confusion with the Complainant’s mark as to the
source, sponsorship, endorsement, or affiliation of its website” and,
therefore, provided evidence of bad faith registration and use in violation of
Policy ¶ 4(b)(iv).
In this case, Respondent is also redirecting
Internet users seeking Complainant’s products and services to its own website
for commercial gain, because Respondent likely receives referral fees
for each consumer it diverts to other websites.
Hence, Respondent is taking advantage of the confusing similarity
between the disputed domain name and Complainant’s ACADEMY mark, and profiting
from the goodwill associated with the mark, which violates Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs.,
D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the 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 the
complainant is the source of or is sponsoring the services offered at the site).
Moreover, Respondent has
registered and used the domain name for the primary purpose of disrupting
Complainant’s business, because the contested domain name resolves to a website
with links to competing sporting goods retailers. As a result, the Panel finds that Respondent
has registered and is using the contested domain name in bad faith under Policy
¶ 4(b)(iii). See
EBAY, Inc. v. MEOdesigns,
D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and
used the domain name <eebay.com> in bad faith where the respondent has
used the domain name to promote competing auction sites); see also Puckett, Individually v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted
business from the complainant to a competitor’s website in violation of Policy
¶ 4(b)(iii)).
The Panel concludes that Complainant has sufficiently 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 <academysports-outdoors.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: November 30, 2006
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