Sport Chalet, Inc. v. Darius Figarsky
Claim Number: FA1210001469449
Complainant is Sport Chalet, Inc. (“Complainant”), represented by Tawnya Wojciechowski of TRW Law Group, California, USA. Respondent is Darius Figarsky (“Respondent”), Louisiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sportchaletonline.com>, registered with GODADDY.COM, LLC.
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 October 30, 2012; the National Arbitration Forum received payment on October 30, 2012.
On October 31, 2012, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <sportchaletonline.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC 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 November 1, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 21, 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@sportchaletonline.com. Also on November 1, 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 December 7, 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 has operated retail sporting goods stores since1958, and has become one of the largest sporting goods retailers in the Western United States, with 54 locations.
Complainant owns two relevant trademark registrations with the United States Patent and Trademark Office ("USPTO"), one for SPORT CHALET (Reg. No. 1,869,466 registered Dec. 27, 1994) and another for SPORT CHALET & Design marks (Reg. No. 1,869,465 registered Dec. 27, 1994).
Respondent has created a duplicate, counterfeit website, lifting the text and graphics from Complainant’s website and is offering NFL jerseys for sale as if they were from a genuine SPORT CHALET retail location. Respondent is passing itself off as Complainant.
Respondent cannot show that it has been commonly known by the disputed domain name.
Respondent’s registration and use of the disputed domain name was done in bad faith. Respondent has lifted the website content and images of Complainant’s website while offering NFL jerseys for sale as if they were coming from Complainant. The public is being deceived by Respondent, and Respondent is attempting to pass itself off as Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns USPTO registrations for its SPORT CHALET mark.
Respondent registered the at-issue domain name after Complainant acquired trademark rights in SPORT CHALET.
Respondent is not authorized to use the SPORT CHALET trademark.
Respondent has created a duplicate, counterfeit website that is referenced by the at-issue domain name. The website displays text and graphics from Complainant’s website
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.
Complainant owns trademark registrations with the USPTO for its SPORT CHALET mark. Complainant’s registrations establish its rights in a mark for the purposes of Policy ¶4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant does not present an argument regarding the confusing similarity of the <sportchaletonline.com> domain name to the SPORT CHALET mark. Nevertheless, Respondent’s domain name contains Complainant’s entire SPORT CHALET trademark, absent the space, while adding the generic term “online” and appending the generic top-level domain, “.com.” These differences do not make the domain name distinct from Complainant’s mark under Policy ¶4(a)(i). Therefore, the Panel finds that Respondent’s <sportchaletonline.com> domain name is confusingly similar to Complainant’s SPORT CHALET trademark. See Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
Respondent lacks both rights and legitimate interests in respect of the at‑issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there is no Policy ¶4(c) circumstance 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 an 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, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name lists “Darius Figarsky,” as the domain name’s registrant. Furthermore, there is no evidence before the Panel which otherwise suggests that Respondent is known by the at‑issue domain name. 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). Therefore, the Panel finds that Respondent is not commonly known by the <sportchaletonline.com> domain name pursuant to Policy ¶ 4(c)(ii).
Respondent has created a counterfeit version of Complainant’s website by lifting Complainant’s text and graphics. There, Respondent is offering NFL jerseys for sale as it they were from a genuine SPORT CHALET retail location. In using the at-issue domain name in this manner, Respondent is passing itself off as Complainant and deceiving consumers. Such use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. Although no Policy ¶4(b) bad faith circumstances are argued by the Complainant, there is nevertheless evidence from which the Panel may conclude that Respondent acted in bad faith under Policy ¶4(a)(iii). The Panel is not confined to the Policy ¶ 4(b) factors in its Policy ¶ 4(a)(iii) analysis and thus may find bad faith under circumstances other than those identified under Policy ¶¶ 4(b)(i)-(iv). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).
Respondent has stolen the content of Complainant’s official website while offering NFL jerseys for sale on Respondent’s <sportchaletonline.com> website as if they were coming from Complainant. The public is likely deceived by Respondent’s attempt to pass itself off as Complainant. The foregoing leads the Panel to find that Respondent registered and uses the at-issue domain name in bad faith registration pursuant to Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sportchaletonline.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 9, 2012
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