DECISION

The Sports Authority Michigan Inc. v. villagewebsmith a/k/a Russell Dickson

Claim Number:  FA0307000175291

PARTIES

Complainant is The Sports Authority Michigan Inc., Ft. Lauderdale, FL, (“Complainant”) represented by Robert S. Gurwin, of Rader Fishman & Grauer PLLC.  Respondent is villagewebsmith a/k/a Russell Dickson, North Port, NY, (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <sportsawthority.com> and <thesportsawthority.com>, registered with Go Daddy Software.

PANEL

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.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on July 29, 2003; the Forum received a hard copy of the Complaint on July 30, 2003.

On July 30, 2003, Go Daddy Software confirmed by e-mail to the Forum that the domain names <sportsawthority.com> and <thesportsawthority.com> are registered with Go Daddy Software and that Respondent is the current registrant of the names. Go Daddy Software has verified that Respondent is bound by the Go Daddy Software 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 July 31, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 20, 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@sportsawthority.com and postmaster@thesportsawthority.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 August 28, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <sportsawthority.com> and <thesportsawthority.com> domain names are confusingly similar to Complainant’s SPORTS AUTHORITY and THE SPORTS AUTHORITY marks.

2. Respondent does not have any rights or legitimate interests in the <sportsawthority.com> and <thesportsawthority.com> domain names.

3. Respondent registered and used the <sportsawthority.com> and <thesportsawthority.com> domain names in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant is the largest national full-line sporting goods retailer in the U.S. and currently operates 201 stores in the U.S.  Complainant holds registrations for the SPORTS AUTHORITY and THE SPORTS AUTHORITY marks with the U.S. Patent and Trademark Office (“USPTO”), which were registered on February 28, 1989 and March 7, 1989 respectively (Reg. Nos. 1,527,526 and 1,529,035).  Complainant has used both the SPORTS AUTHORITY and THE SPORTS AUTHORITY marks in commerce since May 19, 1988.  Complainant registered the <thesportsauthority.com> and <sportsauthority.com> domain names on September 29, 1997 and July 27, 1995 respectively and uses them in conjunction with Complainant’s business.  Complainant’s <thesportsauthority.com> website was named the 2^nd overall shopping site on the Internet by a study conducted by Shelley Taylor & Associates. 

Respondent registered the <sportsawthority.com> and <thesportsawthority.com> domain names on April 4, 2003 and uses them to redirect Internet users to Complainant’s <thesportsauthority.com> website.  Respondent uses the disputed domain names to participate in Complainant’s affiliate program, which pays commissions to domain name registrants for sales made by redirecting Internet users to Complainant’s commercial website. 

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."

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.

Identical and/or Confusingly Similar

Complainant has established rights in the SPORTS AUTHORITY and THE SPORTS AUTHORITY marks through their use in commerce and registration with the USPTO.

Also, Respondent’s <sportsawthority.com> and <thesportsawthority.com> domain names are confusingly similar to Complainant’s SPORTS AUTHORITY and THE SPORTS AUTHORITY marks because the disputed domain names merely replace the “u” in “AUTHORITY” with a “w.”  See Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to Complainant’s HEWLETT-PACKARD mark); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks).

In addition, Respondent’s <sportsawthority.com> and <thesportsawthority.com> domain names are confusingly similar to Complainant’s marks because the disputed domain names are phonetically similar to the SPORTS AUTHORITY and THE SPORTS AUTHORITY marks.  See Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is phonetically identical to Complainant’s mark satisfies ¶ 4(a)(i) of the Policy); see also VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that the pronunciation and spelling between the domain name <venesign.com> and Complainant’s mark, VERISIGN, are so close that confusion can arise in the mind of the consumer).

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

Rights or Legitimate Interests

Respondent has failed to contest the allegations of the Complaint; therefore the Panel may presume that Respondent lacks rights or legitimate interests in the disputed domain names.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality, Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

Furthermore, the record fails to establish that Respondent is authorized or licensed to register or use domain names that incorporate Complainant’s marks.  The WHOIS information for the disputed domain names lists Respondent, villagewebsmith, as the registrant of the domain names but fails to establish Respondent as one commonly known by the disputed domain names or by the SPORTS AUTHORITY mark or the THE SPORTS AUTHORITY mark.  Therefore, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See Tercent, Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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).

In addition, Respondent’s use of the confusingly similar domain names in Complainant’s affiliate program is evidence that Respondent has attempted to commercially benefit from Internet users who misspell Complainant’s domain names.  Complainant has not given Respondent permission to use the disputed domain names in Complainant’s affiliate program.  Respondent’s disputed domain names take advantage of a minor misspelling of Complainant’s domain names and Respondent profits from this minor mistake by receiving a commission for sales made via redirecting Internet users to Complainant’s commercial website.  Respondent’s attempt to commercially benefit from Internet users who misspell Complainant’s domain names is evidence that Respondent is not using the disputed domain names for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Sports Auth. Mich., Inc. v. Domhold Co., a/k/a D'Vaul L., FA 135011 (Nat. Arb. Forum Jan. 9, 2003) (finding that registering a domain name which differs by one letter from Complainant’s commercial website, and using that domain name to redirect Internet consumers to Complainant’s website as a part of Complainant’s affiliate program is not a bona fide offering of goods or services nor a noncommercial use of the domain name); see also Sports Auth. Mich., Inc. v. Jablome, FA 124861 (Nat. Arb. Forum Nov. 4, 2002) (as a member of Complainant’s affiliate program, by registering the domain name that reflects a misspelling of Complainant’s mark, Respondent intended to profit off the domain name at Complainant’s expense, thereby evidencing a lack of rights and legitimate interests in the domain name under Policy ¶¶ 4(c)(i) and (iii).

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

Registration and Use in Bad Faith

It can be inferred that Respondent had either actual or constructive knowledge of Complainant’s marks because Complainant’s marks are known throughout the U.S., the marks have been registered with the USPTO, and the disputed domain names were used to participate in Complainant’s affiliate program.  See Digi Int’l, Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”).

Furthermore, Respondent’s unauthorized use of the disputed domain names in Complainant’s affiliate program is evidence that Respondent registered and used the disputed domain names in bad faith because Respondent merely takes advantage of Internet users who intend to access Complainant’s commercial websites but who misspell Complainant’s domain names.  Due to the probable typographical error, Respondent receives a commission for sales made via redirecting Internet users to Complainant’s commercial websites.  See Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding Respondent registered and used the <deluxeform.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) by redirecting its users to Complainant’s <deluxeforms.com> domain name, thus receiving a commission from Complainant through its affiliate program); see also Sports Auth. Mich., Inc. v. Internet Hosting, FA 124516 (Nat. Arb. Forum Nov. 4, 2002) (“Redirecting Internet users attempting to reach a complainant’s website in order to gain a profit off of a complainant is one example of bad faith use and registration under the Policy”).

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

DECISION

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

Accordingly, it is Ordered that the <sportsawthority.com> and <thesportsawthority.com> domain names be TRANSFERRED from Respondent to Complainant.

Tyrus R. Atkinson, Jr., Panelist

Dated:  September 9, 2003

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