national arbitration forum

 

DECISION

 

Academy, Ltd., d/b/a Academy Sports & Outdoors v. Jack Gortoza

Claim Number: FA1302001483189

 

PARTIES

Complainant is Academy, Ltd., d/b/a Academy Sports & Outdoors (“Complainant”), represented by Tyson D. Smith, Texas, USA.  Respondent is Jack Gortoza (“Respondent”), Rwanda.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <academysportsandoutdoors.com>, registered with DYNADOT, LLC.

 

PANEL

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.

 

Tyrus R. Atkinson, Jr., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 1, 2013; the National Arbitration Forum received payment on February 1, 2013.

 

On February 5, 2013, DYNADOT, LLC confirmed by e-mail to the National Arbitration Forum that the <academysportsandoutdoors.com> domain name is registered with DYNADOT, LLC and that Respondent is the current registrant of the name.  DYNADOT, LLC has verified that Respondent is bound by the DYNADOT, 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 February 6, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 26, 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@academysportsandoutdoors.com.  Also on February 6, 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 March 11, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

  1. Complainant alleges

1.    Complainant has used the ACADEMY mark since 1950 in connection with its sporting goods retail business.

2.    Complainant owns registrations with the United States Patent and Trademark Office (USPTO) for the following marks:

ACADEMY (Reg. No. 1,911,968 registered Aug. 15, 1995)

ACADEMY.COM (Reg. No. 2,834,786 registered Apr. 20, 2004)

ACADEMY SPORTS+ OUTDOORS (Reg. No. 3,338,039 registered Nov. 20, 2007)

ACADEMY OUTDOORS (Reg. No. 3,305,400 registered Oct. 9, 2007)

3.    Respondent’s <academysportsandoutdoors.com> disputed domain name is confusingly similar to Complainant’s registered marks.

4.    Respondent has no rights or legitimate interests in the <academysportsandoutdoors.com> domain name.

5.    Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.

6.    Respondent offered to sell Complainant the disputed domain name for $1,800.

7.    Respondent’s disputed domain name resolves to an <amazon.com> website featuring products offered by Complainant.

8.    Respondent is not commonly known by the <academysportsandoutdoors.com> domain name.

9.    Complainant has not licensed or permitted Respondent to use its marks.

10. Respondent has registered and is using the disputed domain name in bad faith.

11. Respondent is attempting 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.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1. Complainant has rights in its ACADEMY and ACEDEMY+OUTDOORS marks.

2.  Respondent’s <academysportsandoutdoors.com> domain name is confusingly similar to Complainant’s marks.

3.  Respondent has no rights to or legitimate interests in the domain name.

4.  Respondent registered and used the domain name in bad faith.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

 

Complainant claims that it owns rights in the line of “ACADEMY” marks with the USPTO including,

ACADEMY (Reg. No. 1,911,968 registered Aug. 15, 1995)

ACADEMY.COM (Reg. No. 2,834,786 registered Apr. 20, 2004)

ACADEMY SPORTS+ OUTDOORS (Reg. No. 3,338,039 registered Nov. 20, 2007)

ACADEMY OUTDOORS (Reg. No. 3,305,400 registered Oct. 9, 2007)

Previous panels have found that evidence of a registered mark with a national trademark authority is evidence of rights in a mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). The Panel notes that the Policy does not require a mark be registered in the country in which a respondent resides or operates, only that a complainant can demonstrate rights in some jurisdiction. See 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). The Panel therefore finds the Comlainant has rights in the ACADEMY marks under Policy ¶ 4(a)(i).

 

Complainant claims that the <academysportsandoutdoors.com> domain name is confusingly similar to its registered ACADEMY mark under Policy 4(a)(i). The Panel notes that respondent adds the terms “sports” “and” “outdoors” to Complainant’s ACADEMY mark. The Panel also notes that Respondent has added the generic top-level domain (“gTLD”) “.com.” Previous panels have found that these variations are insufficient to distinguish a disputed domain name from a given mark. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business). The Panel thus finds that Respondent’s  <academysportsandoutdoors.com> domain name is confusingly similar to Complainant’s ACADEMY mark under Policy 4(a)(i).

 

Rights or Legitimate Interests

 

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 argues that Respondent has no rights or legitimate interests in the <academysportsandoutdoors.com> domain name because it is not commonly known by the domain name. Complainant also claims that it has not licensed or permitted Respondent to use its ACADEMY mark in any way. The Panel notes that the registrant in the WHOIS information for the disputed domain name is listed as “Jack Gortoza.” Panels have previously found that a respondent is not commonly known by a disputed domain name when there is no indication on the record that respondent was commonly known by the domain name, and a complainant had not authorized or allowed the respondent to use the confusingly similar disputed domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as 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 thus finds that Respondent is not commonly known by the <academysportsandoutdoors.com> domain name pursuant to Policy ¶ 4(c)(ii).

 

Complainant contends that Respondent has no rights or legitimate interest in the <academysportsandoutdoors.com> domain name because it is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant claims that Respondent’s domain name resolves to a website redirecting Internet users to an <amazon.com> page where many of the same products that Complainant sells are featured. Complainant also claims that Respondent is associating the products with Complainant’s ACADEMY marks. The Panel notess that the resolving website features images of sports and outdoor equipment and accessories. The Panel further notes that the resolving website features links such as “Outdoor Recreation,” “Hunting & Fishing,” “Gear Up For the Big Game,” “Snow Sports,’ “Leisure Sports & Games,” “Exercise & Fitness,” and “Athletic Outdoor Clothing” from which Internet users can purchase products through the <amazon.com> site. Previous panels have found that intending to compete with a complainant’s business is not a bona fide offering of goods or services. 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). The Panel therefore finds that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <academysportsandoutdoors.com> domain name pursuant to Policy 4(c)(i) and 4(c)(iii).

 

Complainant claims that Respondent has offered to sell the <academysportsandoutdoors.com> domain name to Complainant for $1,800. Previous panels have found that a willingness to sell a disputed domain name demonstrates a lack of rights and legitimate interests. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)). The Panel thus finds that Respondent has neither rights nor legitimate interests in the <academysportsandoutdoors.com> domain name under Policy ¶ 4(a)(ii) given that Respondent offered to sell the domain name to Complainant for the price of $1,800.

 

Registration and Use in Bad Faith

 

Complainant claims that Respondent has offered to sell the <academysportsandoutdoors.com> domain name to Complainant for $1,800. Previous panels have found that it is bad faith to offer to sell a disputed domain name for an amount beyond out-of-pocket costs. See World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs). The Panel thus finds that Respondent registered and used the <academysportsandoutdoors.com> domain name in bad faith under Policy ¶ 4(b)(i) when it offered to sell it to Complainant for the price of $1,800.

 

Complainant argues that Respondent is using the <academysportsandoutdoors.com> disputed domain name to intentionally attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s ACADEMY mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.  The Panel  notes that the resolving website redirects Internet users to an <amazon.com> website featuring products that Complainant also sells. Previous panels have found that an attempt to compete with a complainants business by offering similar services or products is bad faith use and registration under Policy ¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant). Therefore, the Panel finds that Respondent registered and uses the <academysportsandoutdoors.com> domain name in a bad faith attempt to take commercial advantage of Internet users’ mistakes pursuant to Policy ¶ 4(b)(iv).

 

Complainant alleges that Respondent must have had constructive and/or actual notice of Complainant's rights in the ACADEMY mark prior to registration of the domain name. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); 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).

 

DECISION

Having  established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <academysportsandoutdoors.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  March 20, 2013

 

 

 

 

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