The Sports Authority Michigan, Inc. v.
Tim Akre a/k/a Sports Authority Shop
Claim
Number: FA0303000147315
Complainant is
The Sports Authority Michigan, Inc., Ft. Lauderdale, FL (“Complainant”)
represented by Robert S. Gurwin, of Rader, Fishman & Grauer
PLLC. Respondent is Tim Akre a/k/a Sports Authority Shop,
Rockford, IL (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <sportsauthorityshop.com>, registered with
Enom, Inc.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on March 4, 2003; the Forum received a hard copy of the
Complaint on March 4, 2003.
On
March 4, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain name
<sportsauthorityshop.com> 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-name
disputes brought by third parties in accordance with ICANN's Uniform Domain
Name Dispute Resolution Policy (the "Policy").
On
March 5, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
March 25, 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 postmaster@sportsauthorityshop.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
March 31, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed the Honorable Charles K.
McCotter, Jr. (Ret.) 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 <sportsauthorityshop.com>
domain name is confusingly similar to Complainant’s SPORTS AUTHORITY mark.
2. Respondent does not have any rights or
legitimate interests in the <sportsauthorityshop.com> domain name.
3. Respondent registered and used the <sportsauthorityshop.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, The
Sports Authority Michigan, Inc., holds rights in the SPORTS AUTHORITY mark,
registered on the Principal Register of the U.S. Patent and Trademark Office
(“USPTO”) on February 28, 1989 (U.S. Reg. No. 1,527,526). Under this mark, Complainant has become the
largest national full-line sporting goods retailer in the U.S., with sales of
$1.4 billion during the 2001 fiscal year.
Today, Complainant operates 201 stores in the U.S. and an additional 35
stores in Japan, and employs over 12,000 people.
In addition to
operating hundreds of retail stores, Complainant maintains a significant
presence on the Internet. Complainant operates an e-commerce website at
<thesportsauthority.com>, also accessible from the
<sportsauthority.com> domain name. In 2000, its
<thesportsauthority.com> was named the #2 overall shopping website on the
Internet.
Respondent, Tim
Akre a/k/a Sports Authority Shop, registered the <sportsauthorityshop.com>
domain name on November 15, 2002, and is not licensed or authorized to use
Complainant’s SPORTS AUTHORITY mark for any purpose. Respondent has commenced
preparations to sell a variety of discounted golf clubs at the disputed domain
name.
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 rights in the SPORTS AUTHORITY mark through registration on the
Principal Register of the USPTO as well as through widespread and continuous
use of the mark in commerce.
Respondent’s <sportsauthorityshop.com>
domain name is confusingly similar
to Complainant’s SPORTS AUTHORITY mark.
Other than the inconsequential deletion of the space between the words
SPORTS and AUTHORITY, Respondent has registered a domain name which entirely
incorporates Complainant’s mark.
Respondent’s addition of the generic word “shop” does not distinguish
the domain name from the mark for the purposes of Policy ¶ 4(a)(i), especially
considering that Complainant operates an online “shop” at its
<sportsauthority.com> domain name. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding
confusing similarity where the domain name in dispute contains the identical
mark of the Complainant combined with a generic word or term); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where Respondent’s domain name combines Complainant’s mark with a
generic term that has an obvious relationship to Complainant’s business).
Accordingly, the
Panel finds that the <sportsauthorityshop.com> domain name is confusingly similar to
Complainant’s SPORTS AUTHORITY mark under Policy ¶ 4(a)(i).
Complainant
carries the initial burden of demonstrating that Respondent has no rights or
legitimate interests in the <sportsauthorityshop.com> domain name.
Complainant can meet its burden with a showing that Policy ¶¶
4(c)(i)-(iii) does not apply to Respondent. 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 with
respect to 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 G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb.
Forum Oct. 1, 2002) (holding where Complainant has asserted that Respondent has
no rights or legitimate interests with respect to the domain name, it is
incumbent on Respondent to come forward with concrete evidence rebutting this
assertion because this information is “uniquely within the knowledge and
control of the respondent”).
Complainant’s
uncontroverted allegations aver that Respondent intends to operate a commercial
website at the <sportsauthorityshop.com> domain name, selling discounted golf clubs. Any sales of sporting goods from the infringing domain name, done
in competition with Complainant’s own website, is not a bona fide offering of
goods or services as contemplated by Policy ¶ 4(c)(i), nor is this use of
Complainant’s mark a legitimate noncommercial or fair use of the domain name
pursuant to Policy ¶ 4(c)(iii). See Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21,
2000) (finding that the disputed domain names were confusingly similar to
Complainant’s mark and that Respondent’s use of the domain names to sell
competing goods was illegitimate and not a bona fide offering of goods); see
also Am. Online, Inc. v. Fu,
D2000-1374 (WIPO Dec. 11, 2000) (finding that “[I]t would be unconscionable to
find a bona fide offering of services in a respondent’s operation of web-site
using a domain name which is confusingly similar to Complainant’s mark and for
the same business”).
Both parties in
this dispute are domiciled in the U.S., and Complainant registered its SPORTS
AUTHORITY mark on the Principal Register of the USPTO years before Respondent
registered the disputed domain name.
Given the widespread fame of Complainant’s mark in the U.S. and
Respondent’s failure to submit a response to the Complaint stating otherwise,
the Panel finds that Respondent is not “commonly known by” the name SPORTS
AUTHORITY SHOP or <sportsauthorityshop.com>, pursuant to Policy ¶
4(c)(ii). See Nike, Inc. v. B. B.
de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate
interests where one “would be hard pressed to find a person who may show a
right or legitimate interest” in a domain name containing Complainant's
distinct and famous NIKE trademark); 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).
Accordingly, the
Panel finds that Respondent does not have rights or legitimate interests in the
<sportsauthorityshop.com> domain
name under Policy ¶ 4(a)(ii).
Respondent registered a domain name that differs from Complainant’s
famous mark by one inconsequential and generic word. Respondent’s <sportsauthorityshop.com> domain name
was
thus designed to create a “likelihood of confusion” in the minds of Internet
users as to the “source, sponsorship, affiliation, or endorsement” of the
domain name. Respondent deliberately created this likelihood of confusion, and
is using the domain name to host a commercial website which it will use to sell
products that directly compete with Complainant. In “intentionally attempting
to attract” Internet users “for commercial gain” Respondent’s activities
evidence bad faith use and registration pursuant to Policy ¶ 4(b)(iv). See
Phat Fashions v. Kruger,
FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶
4(b)(iv) even though Respondent has not used the domain name because “It makes
no sense whatever to wait until it actually ‘uses’ the name, when inevitably,
when there is such use, it will create the confusion described in the Policy”);
see also Perot Sys. Corp. v.
Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith
where the domain name in question is obviously connected with the Complainant’s
well-known marks, thus creating a likelihood of confusion strictly for
commercial gain).
The Panel thus
finds that Respondent registered and used the <sportsauthorityshop.com>
domain name in bad faith, and that
Policy ¶ 4(a)(iii) is satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <sportsauthorityshop.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
April 4, 2003
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