The Sports Authority Michigan Inc. v. Batu 5
Claim Number: FA0307000176541
Complainant is The Sports Authority Michigan Inc., Ft. Lauderdale, FL, (“Complainant”) represented by Robert S. Gurwin, of Rader Fishman & Grauer PLLC. Respondent is Batu 5, Kuala Lumpur, Malaysia (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thesports-authority.com>, registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com.
The undersigned certifies that he or acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on July 30, 2003; the Forum received a hard copy of the Complaint on July 31, 2003.
On August 07, 2003, Iholdings.Com, Inc. d/b/a Dotregistrar.Com confirmed by e-mail to the Forum that the domain name <thesports-authority.com> is registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com and that Respondent is the current registrant of the name. Iholdings.Com, Inc. d/b/a Dotregistrar.Com has verified that Respondent is bound by the Iholdings.Com, Inc. d/b/a Dotregistrar.Com 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 August 7, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 27, 2003 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 email@example.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On September 11, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 <thesports-authority.com> domain name is confusingly similar to Complainant’s SPORTS AUTHORITY mark.
2. Respondent does not have any rights or legitimate interests in the <thesports-authority.com> domain name.
3. Respondent registered and used the <thesports-authority.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Since 1989, Complainant has held a registered trademark with the United States Patent and Trademark Office for SPORTS AUTHORITY (Reg. No. 1,527,526) and THE SPORTS AUTHORITY (Reg. No. 1,529,035), both in relation to retail store services featuring sporting equipment and clothing.
With sales of $1.4 billion in fiscal year 2001, Complainant is the largest national full-line sporting goods retailer in the United States. Complainant operates 201 retail stores in the United States, and an e-commerce website located at its preferred domain name, <thesportsauthority.com>, also accessible at <sportsauthority.com>. Complainant has held the www.sportsauthority.com domain name since July 1995, and its preferred domain name was registered in September 1997.
Respondent registered the disputed domain name on January 31, 2003. Respondent is using the disputed domain name as part of a scheme to attract shoppers looking for Complainant’s website. The disputed domain name automatically redirects shoppers from Respondent’s active website to Complainant’s website. In accordance with Complainant’s affiliate program, if a shopper, after being redirected, makes a purchase from Complainant’s website, Respondent is paid a commission by 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.
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 established that is has rights in the SPORTS AUTHORITY mark through registration with the United States Patent and Trademark Office. Furthermore, the only distinction between Complainant’s mark and the disputed domain name is the addition of a hyphen. The addition of a hyphen to Complainant’s mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis. See Nintendo Of Am. Inc. v. This Domain Is For Sale, D2000-1197 (WIPO Nov. 1, 2000) (finding <game-boy.com> identical and confusingly similar Complainant’s GAME BOY mark, even though the domain name is a combination of two descriptive words divided by a hyphen); see also Easyjet Airline Co. Ltd. v. Harding, D2000-0398 (WIPO June 22, 2000) (finding it obvious that the domain name <easy-jet.net> was virtually identical to Complainant's EASYJET mark and therefore that they are confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has failed to come forward with a Response. Therefore, the Panel is permitted to make reasonable inferences in favor of Complainant and accept Complainant’s allegations as true. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence); 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”).
Furthermore, based on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interest in the domain name because Respondent never submitted a Response nor provided the Panel with evidence to suggest otherwise).
As previously noted, Respondent has registered the disputed domain name in Complainant’s affiliate program, with the intention of profiting off the domain name at Complainant’s expense, thereby evidencing a lack of rights and legitimate interests in the domain name under Policy ¶¶ 4(c)(i) and (iii). See Sports Auth. Mich., Inc. v. Jablome, FA 124861 (Nat. Arb. Forum Nov. 4, 2002) (by signing up for Complainant’s affiliate program upon registering the domain name, a misspelling of Complainant’s mark, Respondent intended to profit off the domain name at Complainant’s expense, thereby evidencing a lack of rights and legitimate interests in the domain name under Policy ¶¶ 4(c)(i) and (iii)); see also Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding Respondent had no rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) where it used the domain name <deluxeform.com> to redirect users to Complainant’s <deluxeforms.com> domain name and to receive a commission from Complainant through its affiliate program).
Respondent has not come forward with any proof and there is no evidence on record to establish that Respondent is commonly known by the disputed domain name or SPORTS AUTHORITY. Therefore, Respondent has failed to establish that it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
In light of the worldwide fame of the Complainant’s mark, and the reputation of <sportsauthority.com> as the leading sporting goods retail site on the Internet, it is inconceivable that Respondent could have registered the disputed domain name without actual knowledge of Complainant’s rights. Under the ICANN Policy, registration of a domain name which one knows to be identical or confusingly similar to another’s trademark is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").
Further evidence of Respondent’s bad faith registration and use is Respondent’s registration of the disputed domain name in Complainant’s affiliate program. See Sports Auth. Mich., Inc. v. Internet Hosting, FA 124516 (Nat. Arb. Forum Nov. 4, 2002) (finding that redirecting Internet users attempting to reach a complainant’s website in order to gain a profit off of a complainant is one example of bad faith use and registration under the Policy); see also Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding Respondent registered and used the <deluxeform.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) by redirecting its users to Complainant’s <deluxeforms.com> domain name, thus receiving a commission from Complainant through its affiliate program).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thesports-authority.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch , Panelist
Dated: September 23, 2003
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