DECISION

The Sports Authority Michigan Inc. v. Henry Chan

Claim Number:  FA0308000176552

PARTIES

Complainant is The Sports Authority Michigan Inc., Ft. Lauderdale, FL, USA (“Complainant”) represented by Robert S. Gurwin, of Rader Fishman & Grauer PLLC.  Respondent is Henry Chan, Nassau, Bahama (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <sportsaurthority.com>, <sportsathoraty.com>,         <sportsauthor.com>, and <portathority.com>, registered with Iholdings.

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.

 James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on July 31, 2003; the Forum received a hard copy of the Complaint on August 1, 2003.

On August 1, 2003, Iholdings confirmed by e-mail to the Forum that the domain names <sportsaurthority.com>, <sportsathoraty.com>, <sportsauthor.com>, and <portathority.com> are registered with Iholdings and that Respondent is the current registrant of the names. Iholdings has verified that Respondent is bound by the Iholdings 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 August 6, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 26, 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@sportsaurthority.com, postmaster@sportsathoraty.com,  postmaster@sportsauthor.com, and postmaster@portathority.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 September 11, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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 <sportsaurthority.com>, <sportsathoraty.com>,                   <sportsauthor.com>, and <portathority.com> domain names are confusingly similar to Complainant’s SPORTS AUTHORITY mark.

2. Respondent does not have any rights or legitimate interests in the <sportsaurthority.com>, <sportsathoraty.com>, <sportsauthor.com>, and <portathority.com> domain names.

3. Respondent registered and used the <sportsaurthority.com>,                        <sportsathoraty.com>, <sportsauthor.com>, and <portathority.com> domain names in bad faith.

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

FINDINGS

Since 1989, Complainant has held a registered trademark with the United States Patent and Trademark Office for SPORTS AUTHORITY (Reg. No. 1,527,526) and THE SPORTS AUTHORITY (Reg. No. 1,529,035), both in relation to retail store services featuring sporting equipment and clothing. 

With sales of $1.4 billion in fiscal year 2001, Complainant is the largest national full-line sporting goods retailer in the United States.  Complainant operates 201 retail stores in the United States, and an e-commerce website located at its preferred domain name, <thesportsauthority.com>, also accessible at <sportsauthority.com>.  Complainant has held the <sportsauthority.com> domain name since July 1995, and its preferred domain name was registered in September 1997.   

Respondent registered each of the disputed domain names in late 2002.  Respondent is using the disputed domain names as part of a scheme to attract shoppers looking for Complainant’s website.  The disputed domain names automatically redirect shoppers from Respondent’s active websites to Complainant’s website.  In accordance with Complainant’s affiliate program, if a shopper, after being redirected, makes a purchase from Complainant’s website, Respondent will be paid a commission by Complainant.  

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 that is has rights in the SPORTS AUTHORITY mark through registration with the United States Patent and Trademark Office.  Furthermore, Respondent’s disputed domain names capitalize on common typing errors.  For example, Respondent’s <sportsaurthority.com> domain name capitalizes on Internet users who type Complainant’s domain name but insert an additional “r”.  This typographical error will unwillingly divert these users to Respondent’s website.  Respondent’s <sportsathoraty.com>, <sportsauthor.com>, and <portathority.com> domain names are consistent with this analysis, as they capitalize on the misspelling of “sportsauthority” by omitting or adding letters.  Typographical errors do not therefore create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) “confusingly similar” analysis.  See 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); see also Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001)  (finding that the domain names <tdwatergouse.com> and <dwaterhouse.com> are virtually identical to Complainant’s TD WATERHOUSE name and mark).

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

Rights or Legitimate Interests

Respondent has failed to come forward with a Response.  Therefore, the Panel is permitted to make reasonable inferences in favor of Complainant and accept Complainant’s allegations as true.  See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence); 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”).

Furthermore, based on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain names.  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 in respect of 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 Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interest in the domain name because Respondent never submitted a Response nor provided the Panel with evidence to suggest otherwise).

As previously noted, Respondent has registered the disputed domain names in Complainant’s affiliate program, with the intention of profiting off the domain names at Complainant’s expense, thereby evidencing a lack of rights and legitimate interests in the domain name under Policy ¶¶ 4(c)(i) and (iii).  See Sports Auth. Mich., Inc. v. Haywood Jablome, FA 124861 (Nat. Arb. Forum Nov. 4, 2002) (by signing up for Complainant’s affiliate program upon registering the domain name, 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));  see also 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 affiliates program is not a bona fide offering of goods or services nor a noncommercial use of the domain name).

Respondent has not come forward with any proof and there is no evidence on record to establish that Respondent is commonly known by the disputed domain names or SPORTS AUTHORITY.  Therefore, Respondent has failed to establish that it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); 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).

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

Registration and Use in Bad Faith

It can be inferred that Respondent had knowledge of Complainant’s SPORTS AUTHORITY mark when it registered the disputed domain names because the domain names are a misspelling of Complainant’s mark.  Registration of a domain name, despite knowledge of Complainant’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

Further evidence of Respondent’s bad faith registration is Respondent’s registration of the disputed domain names in Complainant’s affiliate program.  See Sports Auth. Mich., Inc. v. Internet Hosting, FA 124516 (Nat. Arb. Forum Nov. 4, 2002) (stating that, “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”); see also Sports Auth. Mich., Inc. v. Skander d/b/a Web Registration Service, FA 135598 (Nat. Arb. Forum Jan. 7, 2002) (stating that “[b]y registering the “typosquatted” domain name in [Complainant’s] affiliate program, Respondent profits on the goodwill of [Complainant’s] protected marks and primary Internet domain names,” evidence of bad faith registration and use).

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 <sportsaurthority.com>, <sportsathoraty.com>,    <sportsauthor.com>, and <portathority.com> domain names be TRANSFERRED from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated:  September 15, 2003

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