The Complainant is Sports Holdings, Inc., of Alabama, United States of America, represented by Hibbet Sporting Goods, Inc., United States of America.
The Respondent is Web Domain Names, of Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <sportsaddition.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 6, 2006. On September 12, 2006, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On September 19, 2006, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 5, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 25, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 26, 2006.
The Center appointed James A. Barker as the Sole Panelist in this matter on November 2, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a subsidiary of the company that represents it, Hibbet Sporting Goods Inc.
The Complainant is the owner of a registered mark SPORTS ADDITIONS. That mark is registered on the principal register of the US Patent and Trademark Office.
The Respondent registered the disputed domain name on February 27, 2003.
5. Parties’ Contentions
A. Complainant
The following contentions are summarized from the Complaint.
The Complainant has been continuously using its SPORTS ADDITIONS trademark in connection with sporting goods stores since 1993. The Complainant operates over 600 stores in 23 states of the US.
The Complainant has no relationship with the Respondent and has never authorized the Respondent to use the SPORTS ADDITIONS trademark. The Respondent’s website at the disputed domain name is a commercial search engine with direct links to the competitors of the Complainant, as well as links to other sports equipment sites.
The Respondent is using the Complainant’s long-established reputation and goodwill to lure web users to its website and then divert them to the Complainant’s competitors. The Complainant contends that the Respondent is profiting from the Internet traffic it is diverting. The Respondent is therefore not making a bona fide offering of its own goods or services.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
For the Complaint to succeed, under paragraph 4(a) of the Policy the Complainant must prove that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered in bad faith and is being used in bad faith.
The Complainant must provide each of these 3 elements, which are discussed in turn below.
A. Identical or Confusingly Similar
The Complainant clearly has rights in the registered mark SPORTS ADDITIONS. The disputed domain name is not identical to that mark. The issue then is whether the disputed domain name is confusingly similar to the Complaint’s mark.
The only relevant difference between the disputed domain name and the Complainant’s mark is the added “s” at the end. That difference is trivial. With only that trivial difference, the disputed domain name is confusingly similar to the Complainant’s mark.
Supporting this conclusion, prior panel decisions have found that the addition of an “s” (and similar changes) is insufficient to avoid confusing similarity with a mark. (See e.g. Scholastic Inc. v. Applied Software Solutions Inc.,
WIPO Case
No. D2000-1629. In that case, the panel stated that: “Prior Panel decisions have determined that the addition of minor elements such as an ‘e’ before a trademark, or ‘s’ following the trademark have not altered the determination that the domain name adopted is identical or confusingly similar to the trademark in which the complainant has rights.”)
The Complainant has therefore established this first element.
B. Rights or Legitimate Interests
The Complainant has made a prima facie case against the Respondent. Essentially, that case consists of the Complainant’s disclaimer of any relationship with the Respondent. The Complainant has also asserted that there are no circumstances here which demonstrate a right or legitimate interest under paragraph 4(c) of the Policy.
Having made that prima facie case, the burden shifts to the Respondent to rebut it. (For a recent statement of this principle, see e.g. Displays Depot, Inc. v. GNO. Inc., WIPO Case
No. D2006-0445).
The Respondent has filed no response, nor made any other communication in connection with this case. There are otherwise no circumstances that suggest that the Respondent may have a right or legitimate interest in the disputed domain name. The Respondent’s use of the disputed domain name appears to be only as a device to divert Internet users to a directory website. Such a use, in these circumstances, is not sufficient to establish a right or legitimate interest.
Rather, a right or legitimate interest must be established by reference to the substance of the domain name itself. In other words, the meaning or content of the domain name must have some relationship with the character or activities of the Respondent. There is no evidence, in this case, that there is any such relationship.
The Complainant has therefore established this second element.
C. Registered and Used in Bad Faith
The Complainant claims that the Respondent is not making a bona fide offering of its (the Respondent’s) own goods and services. Rather, the Respondent is profiting from diverting Internet traffic.
Paragraph 4(b)(ii) of the Policy provides that there is evidence of bad faith where the Respondent has:
“registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you [the Respondent] have engaged in a pattern of such conduct”.
Although not mentioned in the Complaint, the Respondent has a prior history of being an unsuccessful respondent in proceedings under the Policy, in circumstances similar to this case. See e.g. Sharman License Holdings, Limited v. Web Domain Names, WIPO Case
No. D2004-0821; and more recently in ING North America Insurance Corporation v. Web Domain Names,
WIPO Case
No. D2006-0455. In the former case, the panel found that the Respondent had registered domain names primarily for the purpose of disrupting businesses and commercial gain. In the latter case, the Panel found that the Respondent had engaged in a pattern of conduct, within the meaning of paragraph 4(b)(ii) of the Policy.
This prior history of the Respondent, its lack of a Response, and the other circumstances of this case, point to a similar finding. It also seems likely that the Respondent knew or ought to have known of the Complainant. This is because the Respondent’s website refers to competitors of the Complainant, in a similar field of business.
Paragraph 4(b)(ii) of the Policy is clearly intended to provide for findings against serial cybersquatters. The Respondent has put itself in this category, with a number of findings against it under paragraph 4(b)(ii) of the Policy.
The Complainant has therefore established this third element.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <sportsaddition.com> be transferred to the Complainant.
James A. Barker
Sole Panelist
Dated: November 15, 2006
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