national arbitration forum

 

DECISION

 

Academy, Ltd., d/b/a Academy Sports & Outdoors v. Mayni Efrem / ME New Enterprise

Claim Number: FA1208001456276

 

PARTIES

Complainant is Academy, Ltd., d/b/a Academy Sports & Outdoors (“Complainant”), represented by Wendy C. Larson, Texas, USA.  Respondent is Mayni Efrem / ME New Enterprise (“Respondent”), India.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <academy.co>, registered with Enom, Inc.

 

PANEL

The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

PROCEDURAL HISTORY

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, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <academy.co> domain name is/registered with Enom, Inc. and that Respondent is the current registrant of the name.  Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 3, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 23, 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@academy.co.  Also on August 3, 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 Houston Putnam Lowry, Chartered Arbitrator, 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

A. Complainant

Academy Ltd., d/b/a Academy Sports & Outdoors (referred to herein as “Complainant” or “Academy”), 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 apparel, footwear, sporting goods, 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.

 

Academy has used the mark ACADEMY since at least 1950.  Academy has also used the mark ACADEMY SPORTS + OUTDOORS (and/or ACADEMY SPORTS & OUTDOORS) since at least 1995.  Academy uses these marks extensively on exterior signage at its stores, on its website located at www.academy.com, and in advertising, catalogs, and promotional materials (see excerpts from Academy’s website attached hereto as Exhibit A).  In addition, Academy has long used “Academy Sports + Outdoors” or “Academy Sports & Outdoors” as its registered trade names

 

            ii.          Academy’s E-commerce Services

As noted above, Academy’s primary website is located at www.academy.com, and Academy owns the trademark ACADEMY.COM.  Academy’s products may be ordered online by consumers and shipped nationally.  Academy does a significant volume of its business online.

 

In addition to its common law trademark rights resulting from its long use of the ACADEMY marks, Academy also owns the following U.S. registrations (among others):

 

·                    ACADEMY.COM: U.S. Reg. No. 2,834,786

·                    ACADEMY: U.S. Reg. No. 1,911,968

·                    ACADEMY SPORTS + OUTDOORS: U.S. Reg. No. 3,338,039

·                    ACADEMY OUTDOORS: U.S. Reg. No. 3,305,400

 

U.S. Registration Nos. 1,911,968 and 2,834,786 are now incontestable pursuant to 15 U.S.C. § 1065.

 

            a.         The domain name academy.co is identical or confusingly similar to Complainant’s well-known ACADEMY marks.  The domain name incorporates exactly or virtually exactly Academy’s well-known ACADEMY.COM and ACADEMY marks and tacks on the ccTLD “.co.”

 

b.         Respondent has no rights or legitimate interests in the domain name academy.co.

            (i)         Respondent has not used, nor made any demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.  Rather, the name is used in connection with a monetized parking page, which had displayed link titles that appear to relate to the services of Academy (e.g., “Academy Sports,” “Academy Store,” “Sporting Goods Store,” and “Online Sports Apparel”) yet divert traffic to third-party websites not affiliated with Academy.  Academy’s attorneys sent a cease-and-desist letter to Respondent on April 18, 2012, but Respondent never responded.  Instead, Respondent has continued using the domain name in connection with a monetized parking page.  Although the links on the site do not currently display Academy’s marks, the site is still a pay-per-click site, and the current link titles are wholly unrelated to any other plausible interpretation of the word “academy.”  

 

            (ii)        Respondent is not commonly known by the domain name academy.co.

 

            (iii)       Respondent’s selection of this domain name with the “.co” country code is evidence of typosquatting, which supports a finding that Respondent has no rights or legitimate interests in the domain name.^[1]

 

            (iv)       Respondent is not making a legitimate noncommercial or fair use of the domain name.^[2]

 

c.         Respondent registered and is using the domain name academy.co in bad faith.

            (i)         Respondent presumably is paid a fee or commission when Internet users visit the website www.academy.co, click on the various links there, and are diverted to third-party websites.  Thus, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Academy’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.

 

            (ii)        Respondent’s selection of the country code for Colombia (“.co”) for the domain name at issue is evidence of typosquatting on Complainant’s “.com” domain name and targeting of Complainant’s registered mark ACADEMY.COM.^[3]  That Respondent’s website included link titles displaying Complainant’s marks further confirms Respondent’s intentional targeting of misdirected traffic intending to arrive at www.academy.com.

 

(iii)       Respondent has refused to comply with Academy’s demands despite being given notice of Academy’s trademark rights.

 

            (iv)       Respondent has engaged in a pattern of bad faith registration and use of others’ trademarks in domain names.  This pattern is evidenced by at least 2 NAF UDRP cases and 1 WIPO case brought successfully against Respondent.  Copies of the NAF and WIPO indices listing the cases brought against Respondent.

 

            (v)        Not only is the domain name itself highly likely to cause confusion, but Respondent displayed link titles on its website that were clear references to Academy.

 

(vi)       Respondent’s bad faith is also evidenced by the fact that Respondent owns no trademark or other intellectual property rights in the domain name; the domain name does not consist of the legal name of or a name commonly used to identify Respondent; Respondent has not used the domain name in connection with the bona fide offering of any goods or services; Respondent has made no bona fide noncommercial or fair use of Complainant’s marks in a site accessible under the domain name; and Respondent’s domain name incorporates the highly distinctive ACADEMY mark.  See 15 U.S.C. § 1125(d)(1)(B)(i).

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

 

FINDINGS

(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.

 

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 Complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:

 

(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 to own trademark registrations with the United States Patent & Trademark Office (“USPTO”) for the following marks:

 

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 resides or operates in India.  In Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007), the panel found 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.  As Complainant holds USPTO trademark registrations for its marks, the Panel concludes Complainant owns rights in the marks pursuant to Policy ¶4(a)(i).  See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶4(a)(i).”).

 

Complainant claims Respondent’s <academy.co> domain name is identical to Complainant’s ACADEMY and ACADEMY.COM marks.  The Panel will use the ACADEMY mark for its Policy ¶4(a)(i) analysis because this the first mark registered by Complainant and only differs from the <academy.co> domain name due to the addition of the country-code top-level domain (“ccTLD”) “.co” in the disputed domain name.  In Audigier Brand Mgmt. Grp., LLC v. bai wentao, FA 1286108 (Nat. Arb. Forum Nov. 16, 2009), the panel held that even after the “addition of a ccTLD the disputed domain name is still identical to Complainant’s mark.”  Complainant’s registration for the Academy mark was granted on August 15, 1995.  Therefore, this Panel concludes Respondent’s <academy.co> domain name is identical to Complainant’s ACADEMY mark under Policy ¶4(a)(i).  

 

The Panel finds Policy ¶4(a)(i) satisfied.

 

Rights or Legitimate Interests

Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii).  Then the burden shifts to Respondent to show it has 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 Respondent is not commonly known by the <academy.co> domain name.  The WHOIS information lists “Mayni Efrem / ME New Enterprise” as the registrant of the disputed domain name.  Respondent did not respond to this case and did not present any evidence it is commonly known by the <academy.co> domain name.  In Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), the panel determined 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.  In light of Complainant’s uncontroverted claims, this Panel holds Respondent is not commonly known by the <academy.co> domain name for the purposes of Policy ¶4(c)(ii).

 

According to Complainant, Respondent uses the <academy.co> domain name to host a monetized parking page that displays hyperlinks.  Complainant claims these hyperlinks resolve to Complainant’s competitors and Respondent commercially benefits from the website by receiving pay-per-click fees (which can be done directly or indirectly).  In Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007), the panel held that the operation of a pay-per-click website at a confusingly similar domain name was not 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).  Respondent has not claimed otherwise.  Consequently, the Panel finds 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 <academy.co> domain name.

 

The Panel finds Policy ¶4(a)(ii) satisfied.

 

Registration and Use in Bad Faith

Complainant claims Respondent has been a respondent in previous UDRP proceedings in which the panels ordered the transfer of the domain names to the respective complainants.  The cases cited by Complainant do not list Mayni Efrem / ME New Enterprise as the respondent, but instead list “Whois Agent and Whois Privacy Protection Services Inc.” as the respondent.  Complainant claims Respondent was involved in two cases with the National Arbitration Forum and in one case with the World Intellectual Property Office.  By doing research outside of the record, the Panel confirmed these facts.  However, the fact Respondent has been a party to multiple UDRP proceedings is not material.  Complainant does not claim Respondent prevents Complainant from reflecting its mark in a domain name (and cannot because it isn’t true).  No negative inferences will be drawn against Respondent for unsuccessfully trying to vindicate its rights in previous cases.

 

Complainant claims Respondent’s registration and use of the <academy.co> domain name creates a high likelihood of confusion and Respondent benefits through the receipt of click-through fees.  Complainant contends Respondent uses the disputed domain name to host a website that features competing hyperlinks.  Complainant claims Respondent commercially benefits from these hyperlinks by receiving click-through fees.  In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), the panel concluded that the “[r]espondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which [the respondent] presumably receives referral fees.  Such use for [the respondent’s] own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”  Based upon this uncontroverted evidence, the Panel holds Respondent registered and uses the <academy.co> domain name in bad faith according to Policy ¶4(b)(iv).

 

The Panel finds Policy ¶4(a)(iii) satisfied.

 

DECISION

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

 

Accordingly, it is Ordered the <academy.co> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Houston Putnam Lowry, Chartered Arbitrator, Panelist

Dated: Monday, August 27, 2012