WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Sportsmanís Guide, Inc. v. CostNet Domain Manager
Case No. D2002-1126
1. The Parties
The Complainant is The Sportsmanís Guide, Inc. of Minnesota, United States of America, represented by Killworth, Gottman, Hagan & Schaeff, L.L.P. of United States of America.
The Respondent is CostNet in San Jose, Costa Rica.
2. The Domain Name and Registrar
The disputed domain name <sportmanguide.com> is registered with Register.com.
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 9, 2002.
3.2 On December 11, 2002, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue.
3.3 On December 11, 2002, Register.com transmitted by email to the Center its verification response stating the administrative, technical and contact details. 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").
3.4. 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 December 12, 2002.
3.5. In accordance with the Rules, paragraph 5(a), the due date for Response was January 1, 2003. The Respondent did not submit any Response. Accordingly, the Center notified the Respondentís default on January 3, 2003.
3.6. The Center appointed Pravin Anand as the sole Panelist in this matter on January 10, 2003. 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
4.1 The Complainant has operated under the trade name THE SPORTSMANíS GUIDE for over 20 years and has used THE SPORTSMANíS GUIDE as a service mark in connection with mail order catalog sales as early as 1977 and in connection with on-line retail services from 1998. Goods available through the Complainantís services include clothing, camping gear, hunting and fishing gear and other equipment of interest to the outdoorsman.
4.2 The Complainant is the owner of four United States federal registrations covering its THE SPORTSMANíS GUIDE mark.
a) U.S. Reg. No. 1,430,664 for THE SPORTSMANS GUIDE, issued February 24, 1987, covering catalog mail order services.
b) U.S. Reg. No.1, 436,014 for THE SPORTSMAN GUIDE and DESIGN, issued April 7, 1987, covering catalog mail order services.
c) U.S. Reg. No. 2,267,142 for THE SPORTSMAN GUIDE and DESIGN, issued September 24, 2002, covering online retail and retail store services.
d) U.S. Reg. No.2, 624,677 for THE SPORTSMAN GUIDE and DESIGN, issued September 24, 2002, featuring footwear, hunting and shooting accessories, camping and outdoor recreation products, optics, ammunition, domestics, novelties and other collectibles, electronics, cookware, utensils, hardware, knives, tools, automotive products, electronics and other consumer products.
The Complainant is also the owner of a Canadian registration, for THE SPORTSMANíS GUIDE.
e) CANADA Reg. No. TMA 398,067 for THE SPORTSMANíS GUIDE, registered on May 8, 1992, catalog mail order services.
4.3. The Complainant also owns the domain name <thesportsmansguide.com>. The Complainant has been using the said site from 1998.
5. Partiesí Contentions
5.1 The Complainant stated in its formal Complaint, submitted on December 9, 2002, that:
1) The Respondentís domain name is confusingly similar to the Complainantís registered mark THE SPORTSMANíS GUIDE, which has been used by the Complainant since 1977.
2) The Complainant also states that the Respondent has no rights or legitimate interests in respect of the domain name <sportmanguide.com>.
3) The Complainant also contends that the domain name was registered and is being used in bad faith.
5.2 The domain name consists of nothing more than a slight misspelling of the primary word of the Complainantís registered mark. The elimination of an apostrophe and "The" from the Complainantís mark does not make the domain name dissimilar from the one in which the Complainant has rights. The Respondent is not commonly known by the domain name. The Respondent uses the disputed domain name to divert Internet traffic to its own website for commercial gain.
5.3. The Complainant has never licensed, assigned, sold or transferred any rights to the Respondent in regard to the disputed domain name.
5.4. Respondent has not filed a reply and thus does not contest the facts.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove, with respect to the domain name in issue, each of the following:
A. The domain name in issue is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
B. The Respondent has no rights or legitimate interests in respect of the domain name;
C. The domain name has been registered and is being used in bad faith.
A. Complainantís Trademark Rights; Identical/Confusing Similarity
6.1. The Complainant is the owner of the Registered trademark for "THE SPORTSMANíS GUIDE." The disputed domain name does not contain anything more than a slight misspelling of the trademark in which the Complainant has rights, and such a slight misspelling does not make the domain name dissimilar to the Complainantís trademark (as held in Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/k/a Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330). The non-inclusion of the initial word "THE" from the disputed domain name does not make it dissimilar to the mark in which the Complainant has rights. Therefore the domain name is confusingly similar to the mark in which the Complainant has rights.
B. Rights/Legitimate Interests
6.2. The Respondent is not commonly known by the domain name or any part thereof. The Respondent is the owner of a website called "linkster.com", whose webpage contains a number of links under various categories, including links for sports, entertainment and shopping, in addition to having a place for users to enter each search term. These links lead Internet users to search results on the Overture website. Overture operates a pay-for-performance search engine and Overtureís customers pay to have their sites included when certain terms are searched for. Overture also offers a program wherein a program participant places search tools on their website and the program participant receives compensation each time an Internet user links to one of Overtureís customers by utilising the search tools located on the participantís website. Thus the Respondent is diverting Internet users to his website from the Complainantís website. Further, many Overture users operate on-line stores offering many types of the same products that the Complainant sells and therefore diverting Internet traffic from the Complainantís website and causing harm to the Complainantís on-line presence. This is ample evidence of non-legitimate use as held in The Toronto-Dominion Bank v. Boris Karpachev, WIPO Case No. D2000-1571 and Altavista Company v. Saeid Yomtobian, WIPO Case No. D2000- 0937.
6.3. The Respondent also has a history of linking misspellings of well-known marks. (Commodities, Inc. v. CostNet Domain Manager, WIPO Case No. D2002-0031 and Briefing.com Inc. v. Cost Net Domain Manager, WIPO Case No. D2001-0970). For the above stated reasons, the Respondent lacks rights or legitimate interest in the domain name.
B. Registration and Use in Bad Faith
6.4 Under the Policy, paragraph 4(b)(ii), the registration of 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 the registrant has engaged in a pattern of such conduct is an evidence of bad faith. The Internet user when searching for the Complainantís website can due to a minor typographical error reach the Respondentís website, which redirects the customers to the Complainantís competitorís website and hence disrupts the business of the Complainant. The Respondent also receives revenue from the pop-up advertisement on the disputed domain name webpage and hence this amounts to non-legitimate commercial use of the disputed domain name.
6.5. The Respondent has also been involved in a number of UDRP disputes where he has registered domain names that are confusingly similar to well known marks. Commodities, Inc. v. CostNet Domain Manager, WIPO Case No. D2002-0031, Briefing.com Inc. v. Cost Net Domain Manager, WIPO Case No. D2001-0970, and ABC Distributing Inc. v. Cost Net Domain Manager, FA 101826 (NAF) are some of them. The Respondent also receives revenue every time he redirects a customer to Overture and thus derives commercial gain from misleading customers and thereby disrupts the commercial activities of the Complainant. All these factors are ample evidence that the Respondent has registered and is using the domain name in bad faith.
For all of the foregoing reasons, the Panel decides that the domain name registered by the Respondent is identical and confusingly similar to the trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name at issue, and that the Respondentís domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the impugned domain name be transferred to the Complainant.
Dated: January 23, 2003