Academy, Ltd., d/b/a Academy Sports & Outdoors v. Above.com Domain Privacy
Claim Number: FA1208001456232
Complainant is Academy, Ltd., d/b/a Academy Sports & Outdoors (“Complainant”), represented by Paul Madrid, Texas, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <academnysports.com>, registered with Above.com Pty Ltd.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 1, 2012; the National Arbitration Forum received payment on August 1, 2012.
On August 2, 2012, Above.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <academnysports.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.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 August 2, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 22, 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@academnysports.com. Also on August 2, 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 August 27, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant Academy Ltd., d/b/a Academy Sports & Outdoors is one of the largest sporting goods retailers in the United States, operating over 110 stores in at least eleven states. For many years, Academy has used the marks ACADEMY, ACADEMY.COM, ACADEMY SPORTS + OUTDOORS, and various other marks that include the word ACADEMY (referred to collectively herein as the “ACADEMY marks”), in connection with its business. Academy’s retail stores operated under the ACADEMY marks provide a variety of services and sell a wide range of goods, including sporting goods, apparel, footwear, bicycles, sport bags, backpacks, backyard and patio furniture and accessories, boating and marine products, camping products, fishing products, hunting products, hiking products, exercise equipment and many others.
Complainant holds trademark registrations for its family of marks with the United States Patent and Trademark Office (“USPTO”). The registrations include: ACADEMY (Reg. No. 1,911,968 registered August 15, 1995); ACADEMY.COM (Reg. No. 2,834,786 registered April 20, 2004); ACADEMY SPORTS + OUTDOORS & Design (Reg. No. 3,338,039 registered November 20, 2007); and ACADEMY OUTDOORS (Reg. No. 3,305,400 registered October 9, 2007).
Respondent’s <academnysports.com> domain name is confusingly similar to Complainant’s ACADEMY mark.
The disputed domain name incorporates the ACADEMY mark and merely includes the letter “n” and the descriptive term “sports.” The addition of the generic top-level domain (“gTLD”) “.com” is irrelevant.
Respondent is not commonly known by the <academnysports.com> domain name.
Complainant did not license or otherwise permit Respondent to use Complainant’s marks in a domain name.
Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <academnysports.com> domain name.
Respondent uses the disputed domain name to resolve to a website containing hyperlinks that resolve to the websites of Complainant’s competitors.
The <academnysports.com> domain name takes advantage of a typographical error, which is evidence that Respondent lacks rights and legitimate interests in the domain name.
Respondent registered and uses the <academnysports.com> domain name as a part of a pattern of bad faith registration and use. Respondent has been a respondent in 172 UDRP cases in which the panels ordered Respondent to transfer the disputed domain names to the respective complainants.
Respondent attempts to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s ACADEMY and related marks.
Respondent commercially benefits by receiving a fee or commission each time an Internet user clicks on one of the hyperlinks.
Respondent’s typosquatting evidences bad faith registration and use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights in various marks, including the word mark ACADEMY, by virtue of their registration with the USPTO, and otherwise.
Respondent is not authorized to use any of Complainant’s trademarks.
Respondent uses the at‑issue domain name to reference a monetized parking page. The page displays hyperlinks to the websites of Complainant’s competitors.
There are numerous UDRP disputes wherein “Above.com” is listed as the respondent and where the at‑issue domain name was transferred to the 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."
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.”).
The at‑issue domain name is confusingly similar to a trademark in which Complainant has rights.
Although Respondent resides or operates in Australia, Complainant’s USPTO trademark registrations nevertheless sufficiently establish Complainant has rights in a mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s <academnysports.com> domain name is confusingly similar to Complainant’s ACADEMY mark. The at‑issue domain name incorporates the ACADEMY mark and merely interjects the letter “n” and adds the descriptive term “sports.” These alterations of Complainant’s mark, along with the “.com” top level domain name suffix, fail to distinguish Respondent’s domain name from Complainant’s trademark for the purposes of Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Respondent lacks either rights or legitimate interests in respect of the at‑issue domain name. Respondent is not authorized to use Complainant’s trademark(s) in any capacity and as discussed below there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii) Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of the at‑issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
The WHOIS information lists “Above.com Domain Privacy” as the registrant of the disputed domain name and there is no evidence of record that tends to show that Respondent is commonly known by the at‑issue domain name. Therefore, the Panel finds that Respondent is not commonly known by the <academnysports.com> domain name for the purpose of Policy ¶ 4(c)(ii). 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).
Respondent uses the <academnysports.com> domain name in connection with a monetized parking page which displays hyperlinks to the websites of Complainant’s competitors. Using the domain name in this manner demonstrates that Respondent is not making a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <academnysports.com> domain name. See H-D Mich. Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
In light of the uncontroverted evidence, Complainant satisfies its burden and conclusively demonstrates Respondent’s lack of rights, and lack of interests, in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
Respondent registered and uses the at-issue domain name in bad faith.
The Panel has considered that there have been numerous UDRP disputes where “Above.com Domain Privacy” was listed as the respondent and where the at‑issue domain name was transferred to the complainant. It is not apparent that Respondent was the real-party-in-interest in such disputes, and it seems that Respondent may have there been acting as a privacy service for its client registrants rather than as a principal registrant. Above.com is a domain registrar that has offered its customers privacy services (Above.com Domain Privacy) in conjunction with domain registration. See http://above.com (August 29, 2012). There is no evidence which suggests that Respondent was aware of the activity of its client(s) in registering the contested domain names. Therefore, the Panel cannot conclude, without speculating, that the principal registrant in the instant case was also the principal registrant in the other UDRP proceedings involving Respondent. However, the Panel should not have to get behind the WHOIS registration record in making its determination. The fact that the WHOIS record for the at‑issue domain name lists Above.com Domain Privacy as its registrant makes Respondent the registrant of record and the respondent for the purposes of the Policy and this proceeding. The fact that Respondent has had numerous domain names transferred to complaining mark holders is thus nevertheless evidence of bad faith registration and use under to Policy ¶4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”).
Furthermore, it is reasonable to assume that Respondent receives a fee or commission when Internet users visit the <academnysports.com> website, click on the hyperlinks, and are diverted to Complainant’s competitors. Additionally, Respondent’s registration and use of the similar at‑issue domain name confuses Internet users as to Complainant’s affiliation with, and/or sponsorship of, the at‑issue domain name. Using the domain name in this manner constitutes bad faith registration and use under Policy ¶ 4(b)(iv) since thereby Respondent attempts to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion between Complainant’s mark(s) and the at‑issue domain name. See BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are in the music and entertainment business. The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site. There is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.”)
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <academnysports.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 29, 2012
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