Academy, Ltd., d/b/a Academy Sports + Outdoors v. This Domain For Sale Toll Free: 866-822-9073 Worldwide: 339-222-5132 / buydomains.com
Claim Number: FA1312001534168
Complainant is Academy, Ltd., d/b/a Academy Sports + Outdoors (“Complainant”), represented by Tyson D. Smith of Pirkey Barber PLLC, Texas, USA. Respondent is This Domain For Sale Toll Free: 866-822-9073 Worldwide: 339-222-5132 / buydomains.com (“Respondent”), represented by Erik S. Zilinek of NameMedia, Inc., Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <academyonline.net>, registered with eNom, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflicts in serving as Panelists in this proceeding.
James A. Carmody, G. Gervaise Davis, and Darryl C. Wilson, Chair, as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 11, 2013; the National Arbitration Forum received payment on December 11, 2013.
On December 11, 2013, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <academyonline.net> 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 December 11, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 31, 2013 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@academyonline.net. Also on December 11, 2013, 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.
A timely Response was received and determined to be complete on December 31, 2013.
A timely Additional Submission was received and determined to be complete on January 6, 2014.
On January 10, 2014 pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed James A. Carmody, G. Gervaise Davis, and Darryl C. Wilson, Chair, as Panelists.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Policy ¶ 4(a)(i)
a. Complainant uses the ACADEMY mark and related marks in connection with its business of selling a wide range of sporting goods and outdoor products, as well as related services.
b. Complainant owns rights in the ACADEMY mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,911,968 registered August 15, 1995).
c. The disputed domain name is confusingly similar to Complainant’s ACADEMY mark, because the domain name fully appropriates the mark and merely tacks on a generic top-level domain (“gTLD”) and the generic term “online.”
2. Policy ¶ 4(a)(ii)
a. Respondent is not commonly known as <academyonline.net> pursuant to Policy ¶ 4(c)(ii).
b. Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use, because the disputed domain name resolves to a parked, pay-per-click website that displays links that appear to resolve to Complainant’s own website but in reality resolve to unrelated websites.
a. Respondent’s willingness to sell the disputed domain name is further evidence of Respondent’s lack of rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).
3. Policy ¶ 4(a)(iii)
a. Respondent purchased the <academyonline.net> domain name with the intent to sell the domain name to Complainant, which is evidenced by an e-mail from an affiliate of Respondent to Complainant. Respondent’s bad faith under Policy ¶ 4(b)(i) is also demonstrated by Respondent’s offer to sell the disputed domain name to the general public for an amount exceeding Respondent’s out-of-pocket expenses.
b. Respondent has demonstrated a pattern of bad faith domain registrations under Policy ¶ 4(b)(ii), because there are at least fourteen (14) prior adverse UDRP proceedings which ordered the transfer of a domain name from Respondent to third-party complainants.
c. Respondent is presumably profiting from its registration and use of the <academyonline.net> domain name in the form of click-through fees.
B. Respondent
1. Respondent’s business is to register domain names that become available for registration through expiration or deletion. Respondent’s company policy is to register and maintain only those domain names that incorporate common and/or generic dictionary words, phrases, acronyms and other terms over which no party has exclusive rights.
2. Policy ¶ 4(a)(i)
a. Complainant does not have exclusive rights in the ACADEMY mark since the mark is comprised of an ordinary dictionary term used by numerous parties to describe innumerable academies around the world.
3. Policy ¶ 4(a)(ii)
a. The <academyonline.net> domain name resolves to a fair website that allows Internet users the opportunity to research a variety of academy-related topics online. Furthermore, unless an Internet user deliberately submits a query related to Complainant’s mark, exactly zero references to the products and services offered under Complainant’s ACADEMY mark appear on the at-issue website.
b. Complainant’s contention that Respondent offered to sell the disputed domain name to Complainant is not supported by reliable evidence.
c. The disputed domain name is comprised of two generic terms: “academy,” and “online.” Domain names comprised of common dictionary words are subject to registration on a “first come, first served” basis. Therefore, Respondent’s status as the owner of the <academyonline.net> domain name establishes that Respondent has rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
d. Respondent’s business practice is to register and resell domain names that incorporate common and/or generic dictionary words. Thus, Respondent’s public offer for sale of the domain name—comprised of two generic words— is a bona fide business activity establishing Respondent’s rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
4. Policy ¶ 4(a)(iii)
a. Respondent did not register the disputed domain name with Complainant’s ACADEMY trademark in mind, and its public offer to sell the disputed domain name is insufficient to demonstrate bad faith registration and use pursuant to Policy ¶ 4(b)(i).
b. Respondent has not demonstrated bad faith registration and use under Policy ¶ 4(b)(iv) because the disputed domain name and its resolving website create no likelihood of confusion with the business of Complainant.
c. Respondent has not demonstrated bad faith, because the disputed domain name consists of two generic terms: “academy” and “online.” Furthermore, the word “academy” is used by numerous parties to describe innumerable academies around the world. Respondent registered the disputed domain name precisely because of its generic value; such a registration is entirely permissible under the UDRP and under trademark law.
5. Respondent registered the disputed domain name more than eleven (11) years ago, and Complainant’s delay in bringing this action suggests that the relief sought is not appropriate.
6. Complainant’s filing of the instant proceedings constitutes Reverse Domain Name Hijacking, because Complainant is attempting to use the Policy to deprive Respondent of its good faith registration of a domain name. Complainant’s manipulation of the supposed screenshot of Respondent’s website is evidence that the Complaint was filed in bad faith.
C. Additional Submissions
Complainant:
Complainant is Academy, Ltd., d/b/a Academy Sports + Outdoors, of Katy, TX, USA. Complainant is engaged in the sporting goods business and uses the mark ACADEMY, along with related marks, in connection with the provision of goods and services related to sporting goods and outdoor products. Complainant has continuously used the mark as described since at least 1995 when it registered the mark with the USPTO. Complainant offers its goods and services in real space as well as in cyberspace through its official website <academy.com>. Complainant has also registered that domain name with the USPTO, principally for online retail services regarding the provision of sporting goods, athletic equipment, apparel and footwear.
Respondent is This Domain For Sale Toll Free: 866-822-9073 Worldwide: 339-222-5132 / buydomains.com of Waltham, MA, USA. Respondent is represented to be owned by NameMedia, Inc., whose Chairman and CEO is Kelly Conlin. Respondent’s CEO states that Respondent’s business is to register domain names that become available for registration through expiration or deletion. Respondent’s CEO asserts that Respondent has since 1999 developed a large portfolio of thousands of domain names that incorporate common descriptive and/or generic words, terms and phrases for which evidence suggest no single party has exclusive rights. The acquired domain names are offered for sale to the general public. Respondent registered the disputed domain on or about April 10, 2002.
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.
Complainant states that it uses the ACADEMY and related marks in connection with its business of selling a wide range of sporting goods and outdoor products, as well as related services. Complainant further alleges that it owns rights in the ACADEMY mark under the Policy through registrations of the mark with the USPTO (e.g., Reg. No. 1,911,968 registered August 15, 1995). A complainant’s registration of a mark with the USPTO is sufficient to establish the complainant’s rights in the mark under Policy ¶ 4(a)(i). See, e.g., AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that, where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i)”). The Panel finds that Complainant’s registration of the ACADEMY mark with the USPTO adequately establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).
Complainant next alleges that the <academyonline.net> domain name is confusingly similar to Complainant’s ACADEMY mark, because the domain name fully appropriates the mark and merely tacks on the gTLD “.net” and the generic term “online.” The Panel notes that prior panels have held that a disputed domain name’s affixation of a gTLD such as “.net” is irrelevant for the purposes of a confusing similarity analysis. See, e.g., Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”). The Panel here finds that the affixation of “.net” in the <academyonline.net> domain name does not sufficiently distinguish the disputed domain name from Complainant’s ACADEMY mark. The Panel also notes that prior panels have held that a domain name is confusingly similar to a complainant’s mark where the disputed domain name fully appropriates the mark and merely adds a generic term. See, e.g., Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word “Net” to the complainant’s ICQ mark, makes the <neticq.com> domain name confusingly similar to the complainant’s mark). The Panel here finds the added term “online” is a generic term that fails to distinguish the <academyonline.net> domain name from Complainant’s ACADEMY mark. The Panel further notes that Respondent does not dispute the use of Complainant’s mark. The Panel holds that the disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
Respondent suggests that Complainant lacks exclusive rights in the ACADEMY mark because it is comprised of a common and generic term. The Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has any rights in the mark and whether the disputed domain names are identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
Complainant has proven this element.
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have 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). The Complainant has NOT made such a prima facie case here.
Complainant alleges that Respondent is not commonly known as <academyonline.net> pursuant to Policy ¶ 4(c)(ii). The Panel notes that prior cases have held that a respondent is not commonly known by a disputed domain name under the Policy where there is no evidence in the record, including the WHOIS information, that suggests otherwise. See, e.g., M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). The Panel here notes that the WHOIS information identifies the registrant of the <academyonline.net> domain name as “This Domain For Sale Toll Free: 866-822-9073 Worldwide: 339-222-5132 / buydomains.com,” and does not suggest that Respondent is commonly known as “Academy Online.” Because nothing else in the record suggests that Respondent is commonly known as <academyonline.net>, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, the Panel notes that being commonly known by the disputed domain name is but one factor in determining if a respondent has rights or legitimate interests in the disputed domain.
Complainant next alleges that Respondent’s use of the <academyonline.net> domain name 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), because the disputed domain name resolves to a parked, pay-per-click website. The Panel notes that according to a screenshot submitted by Complainant, the <academyonline.net> domain name’s resolving website promotes links under the heading of “RELATED LINKS,” including links entitled, “Sports Academy,” “Flying Academy,” “Hair Academy,” “Police Academy School,” and “Fire Academy.” The Panel recognizes that although Respondent disputes certain information reflected in one or more of Complainant’s Exhibits, Respondent does not deny that the disputed domain resolves to a site containing the noted hyperlinks. However, the Panel notes that Respondent’s links use the word “Academy” in its common and ordinary sense. Procurement of trademark rights in a common term for a specific purpose does not remove that term from public use. Apple computer is not by virtue of its trademark rights able to preclude others from advertising and offering Fuji apples, Gala apples or even McIntosh apples.
Respondent argues that its use of the disputed domain name constitutes a bona fide offering of services under Policy ¶ 4(c)(i): specifically, the offering of a web directory to provide an opportunity for Internet users to research a variety of “academy”-related topics online. Further, the Panel notes that the disputed website is typical of web directory sites despite the fact that it promotes links to third-party “academies” that are unrelated to Complainant. The Panel recognizes that prior panels have held that the use of a disputed domain name to operate a web directory related to a particular generic term constitutes a bona fide offering of goods or services under Policy ¶ 4(c)(i). See, e.g., Eastbay Corp. v. VerandaGlobal.com, Inc., FA 105983 (Nat. Arb. Forum May 20, 2002) (finding that using a domain name consisting of a common descriptive and generic expression as a portal to a website featuring various advertisements and links is a bona fide offering of goods or services). The Panel here finds that Respondent’s use of the <academyonline.net> domain name to operate a web directory relating to various third-party “academies” is allowed under Policy ¶ 4(c)(i).
Respondent alleges that the disputed domain name is comprised of two generic terms—“academy” and “online” — over which Complainant does not have an exclusive monopoly. Furthermore Respondent does not use the terms for anything related to sporting goods, athletic apparel or outdoor products. The Panel finds that Respondent’s use of the word “academy” according to its common ordinary meaning, to institute a web directory for academies, establishes rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).
Although Respondent denies that it made an offer to sell the <academyonline.net> domain name to Complainant, Respondent does not dispute that it has placed the disputed domain name for sale to the general public. Respondent argues that its business is to register and resell domain names that incorporate common and/or generic dictionary words. Thus, Respondent argues that its public offer for sale of the disputed domain name is a bona fide business activity establishing Respondent’s rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The Panel notes that prior panels have held that in appropriate circumstances, the offering for sale of a domain name can constitute a bona fide offering of goods or services for the purposes of Policy ¶ 4(c)(i). See Allocation Network GmbH v. Gregory, D2000-0016 (WIPO Mar. 24, 2000) (holding that under appropriate circumstances the offering for sale of a domain name can itself constitute a bona fide offering of goods or services for purposes of paragraph 4(c)(i) of the ICANN policy). Similarly, it has been held that a respondent demonstrates its rights or a legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii) where the respondent is an Internet business which sells generic domain names. See Fifty Plus Media Corp. v. Digital Income, Inc., FA 94924 (Nat. Arb. Forum July 17, 2000) (finding that the complainant failed to prove that the respondent had no rights in the domain name and had registered and used the domain name in bad faith where the respondent is an Internet business which deals in selling or leasing descriptive/generic domain names). The Panel here again notes that Respondent is such a generic domain name reseller and has been compiling and selling such domain names since 1999. The Panel finds that Respondent’s public offering of the <academyonline.net> domain name constitutes a bona fide offering of goods or services under Policy ¶ 4(c)(i) and that Respondent thus has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).
Complainant has not proven this element.
Because the Panel concludes that Respondent has rights or legitimate interests in the <academyonline.net> domain name pursuant to Policy ¶ 4(a)(ii), the Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Respondent additionally contends that the registration and use of a domain name comprising common terms is not necessarily done in bad faith. The Panel notes that individuals are generally free to register domain names consisting of common or generic terms and that the domain name currently in dispute contains such common or generic terms. The Panel finds that this further supports the conclusion that the Respondent’s registration or use of the <academyonline.net> domain name was not in bad faith under Policy ¶ 4(a)(iii). See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis."); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).
Complainant has not proven this element.
Reverse Domain Name Hijacking
Because Complainant satisfied Policy ¶ 4(a)(i), the Panel finds that Complainant has not engaged in reverse domain name hijacking. See Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Respondent has not proven this element.
Because the Complainant has failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <academyonline.net> domain name REMAIN WITH Respondent.
James A. Carmody, G. Gervaise Davis, and Darryl C. Wilson, Chair, Panelists
Dated: January 23, 2014
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