American Sports Licensing, Inc. v. Kanter Associates SA
Claim Number: FA1201001425931
Complainant is American Sports Licensing, Inc. (“Complainant”), represented by David A. Wheeler of Greenberg Traurig, LLP, Illinois, USA. Respondent is Kanter Associates SA (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dickssportgoods.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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 20, 2012; the National Arbitration Forum received payment on January 23, 2012.
On January 23, 2012, FABULOUS.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <dickssportgoods.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 27, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 16, 2012 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@dickssportgoods.com. Also on January 27, 2012, 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 February 22, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 makes the following assertions:
1. Respondent’s <dickssportgoods.com> domain name is confusingly similar to Complainant’s DICKSSPORTINGGOODS.COM mark.
2. Respondent does not have any rights or legitimate interests in the <dickssportgoods.com> domain name.
3. Respondent registered and used the <dickssportgoods.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, American Sports Licensing, Inc., is the owner of the DICKSSPORTINGGOODS.COM mark, registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,621,711 registered September 17, 2002). Complainant’s company is a full-line sporting goods retailer offering brand name sporting goods equipment, apparel, and footwear in an online and retail store environment. The online store operates from the Complainant’s <dickssportinggoods.com> website.
Respondent, Kanter Associates SA, registered the <dickssportgoods.com> domain name on January 17, 2004. The disputed domain name resolves to a website displaying pay-per-click links, including links offering products competing with Complainant’s business as well as links to Complainant’s business.
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 owns registered trademarks with the USPTO for its DICKSSPORTINGGOODS.COM mark (e.g., Reg. No. 2,621,711 registered September 17, 2002). The Panel finds that Complainant has established rights in the DICKSSPORTINGGOODS.COM mark pursuant to Policy ¶4(a)(i) through its trademark registration with the USPTO, even though Respondent is not located in the U.S. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant argues that Respondent’s <dickssportgoods.com> domain name is confusingly similar to Complainant’s DICKSSPORTINGGOODS.COM mark because the disputed domain name incorporates Complainant’s mark and the only distinction is the missing letters “ing,” changing “sporting” to “sport.” The Panel finds that the removal of letters does not adequately distinguish the disputed domain name from Complainant’s mark. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”). The Panel therefore concludes that Respondent’s <dickssportgoods.com> domain name is confusingly similar to Complainant’s DICKSSPORTINGGOODS.COM mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been established.
Policy ¶ 4(a)(ii) states that Complainant bears the burden of presenting a prima facie case against Respondent before Complainant can shift the burden of proving rights and legitimate interests in the disputed domain name to Respondent. Here, the Panel determines that Complainant has adequately satisfied this obligation. Respondent has offered nothing in response, however, and has failed to contest Complainant’s allegations in any way or offer any counter evidence. The Panel may assume that Respondent does not have rights or legitimate interest in the disputed domain name as a result of Respondent’s failure to respond to the Complaint. The Panel will nevertheless consider the evidence presented against the Policy ¶ 4(c) factors to make an independent determination regarding Respondent’s right and legitimate interests in the disputed domain name. See Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph ¶4(a)(ii) of the Policy.”); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).
Complainant argues that Respondent is not commonly known by the <dickssportgoods.com> domain name. According to the WHOIS information for Respondent, there is no connection between Respondent and the <dickssportgoods.com> domain name or Complainant’s DICKSSPORTINGGOODS.COM mark. Complainant has not authorized Respondent to use the DICKSSPORTINGGOODS.COM mark in any way. The Panel finds no evidence that Respondent is commonly known by the <dickssportgoods.com> domain name. The Panel thus holds that Respondent is not commonly known by the <dickssportgoods.com> domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant argues that Respondent is using the domain name to redirect Internet users to a website featuring numerous advertisements which link to a variety of businesses, some unrelated to Complainant and others competing with Complainant, as well as content referencing Complainant. The Panel presumes the displayed links are pay-per-click links. The Panel finds that Respondent’s use of the disputed domain name to feature pay-per-click links for competing products or unrelated third parties does not constitute 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). See ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
The Panel concludes that Complainant has proven Policy ¶ 4(a)(ii).
Respondent’s disputed domain name resolves to a website containing links to third-party websites, some of which compete with Complainant. This activity clearly disrupts Complainant’s business, as Internet users seeking Complainant’s products will be diverted to sites featuring competing products. The Panel finds that this disruption of Complainant’s business and diversion of internet users to Complainant’s competitors shows bad faith registration and use under Policy ¶4(b)(iii). See Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s.)
Complainant also argues that Respondent had shown bad faith registration and use according to Policy ¶4(b)(iv). Respondent has done this by creating a likelihood of confusion with Complainant’s mark, thereby misleadingly diverting Internet traffic to the resolving website for commercial gain. Respondent’s resolving website features links connecting Internet users to other sites competing with Complainant as well as to Complainant’s website. The Panel agrees with Complainant and finds that Respondent acts in bad faith under Policy ¶4(b)(iv) when attracting consumers and financially profiting by creating a likelihood of confusion with Complainant’s mark. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).
Complainant asserts that its trademark registrations for the DICKSSPORTINGGOODS.COM mark existed well before the registration of the disputed domain name. Complainant argues that Respondent has constructive knowledge of complainant’s rights in the mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant’s mark, Respondent had actual knowledge of the mark and Complainant’s rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds the elements of Policy ¶4(a)(iii) have been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dickssportgoods.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: February 23, 2012
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