Sportsman’s Warehouse, Inc. v. Sportswear for Men LLC./Domain Privacy Service
Case No. D2008-0592
1. The Parties
The Complainant is Sportsman’s Warehouse, Utah, United States of America represented by Lindquist & Vennum, P.L.L.P., United States of America.
The Respondent is Sportswear for Men LLC./Domain Privacy Service, Massachusetts, United States of America, of United States of America.
2. The Domain Name and Registrar
The disputed domain name <sportsmanswearhouse.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 April 15, 2008. On April 17, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On April 17, 2008, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 22, 2008, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 22, 2008. The Center verified that the Complaint together with the amended 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 April 23, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 13, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 15, 2008.
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on May 26, 2008. 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
Sportsman’s Warehouse, Inc. (“Sportsman’s Warehouse” or “Complainant”) is a corporation organized under the laws of the state of Utah. Sportsman’s Warehouse owns and operates over 60 retail outdoor goods stores across the United States generating over $700,000,000 in annual sales.
Since 1994, Complainant has consistently used the name SPORTSMAN’S WAREHOUSE in conjunction with its retail stores and outdoor goods. Since December 21, 1999, Complainant has also owned and operated a website using the registered domain name <sportsmanswarehouse.com>. Complainant also owns four trademarks registered with the United States Patent and Trademark office, all of which incorporate the mark SPORTSMAN’S WAREHOUSE in their designs. In addition, Complainant owns six state-registered trademarks that either consist solely of the mark SPORTSMAN’S WAREHOUSE or incorporate that mark in their designs.
Recently, Complainant became aware that Respondent had registered the domain name <sportsmanswearhouse.com>. Respondent registered the domain name on November 27, 2005. In December 2007, Complainant sent a cease and desist letter via email and certified U.S. mail to Respondent using the contact information provided by the Registrar and received no response.
5. Parties’ Contentions
A. Complainant
Complainant contends that the domain name is nearly identical to and confusingly similar to at least one trademark in which Complainant has rights, that Respondent has no rights or legitimate interests in the domain name and that Respondent has registered and is using the domain name in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in Paragraph 4(a) of the Policy have been satisfied:
(i) the domain name in dispute is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
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”.
A. Identical or Confusingly Similar
The disputed domain name is nearly identical and confusingly similar to Complainant’s trademark. But for the typographical error of shifting one letter by one place, the disputed domain name would be identical in spelling and appearance to Complainant’s trademark, and is phonetically identical to Complainant’s mark.
Complainant’s mark is incorporated in several federal and state-registered trademarks owned and registered by Complainant, and in the domain name for its web site, which Complainant has owned and operated under that domain name since 1999. Furthermore, Complainant’s company name, through long use in connection with the selling of outdoor goods, has obtained at least common law trademark significance.
Thus, the Panel finds that the domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Respondent is not affiliated or related to Complainant, nor is Respondent licensed by Complainant or otherwise authorized to use Complainant’s mark.
There is no evidence before the Panel to establish that Respondent is generally known by the domain name or that Respondent has acquired any trademark or service mark rights in that name or mark.
On the basis of the present record, Respondent is not using the disputed domain name in a bona fide manner. Instead, Respondent is apparently using the disputed domain name to generate advertising revenue. Respondent accomplishes this by attracting Internet users to its website using the domain name, and inviting the users to browse through different categories of products of the kind that Complainant is in the business of selling. When a user clicks on the links to these product categories, the browser takes the user to a page that links to various websites offering such products. Many of these linked websites are owned by direct competitors of Complainant.
Respondent’s use of the domain name for such purposes is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name. Respondent has not put forward any evidence that would rebut Complainant’s case or support a finding that it has rights or legitimate interests in the domain name.
In light of the foregoing, the Panel finds that Respondent has no rights or legitimate interests with regard to the domain name at issue.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or location of a product or service on Respondent’s website or location.
In the present case, it is apparent that the domain name is being used for commercial gain to attract Internet users to Respondent’s website based on a likelihood of confusion with Complainant’s mark. Using a domain name to intentionally attract, for commercial gain, Internet users to a website by creating confusion with Complainant’s mark is evidence of bad faith use and registration under the Policy.
Evidence submitted by Complainant, including media recognition and a 2006 consumer survey, shows that Complainant’s trademark is associated with Complainant’s retail outdoor clothing and equipment business by a substantial segment of relevant consumers. There is also evidence that Respondent tailored the content of its website at the disputed to domain name to specifically relate to Complainant’s business, and directed browsers to competitors of Complainant. This evidence, in addition to Complainant’s publicly available trademark information and domain name registrations, together with Respondent’s failure to respond to Complainant’s cease and desist letter, demonstrates that Respondent registered and is using the disputed domain name with actual knowledge of Complainant’s rights.
Accordingly, on the present record, the Panel finds the disputed domain name to be registered and used in bad faith.
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, <sportsmanswearhouse.com> be transferred to the Complainant.
Lynda J. Zadra-Symes Sole Panelist
Dated: June 9, 2008
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