WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

The Sportsman's Guide, Inc. v. Vipercom

Case No. D2003-0145

 

1. The Parties

The Complainant is The Sportsman's Guide, Inc., a Minnesota corporation with headquarters in South St. Paul, Minnesota, United States of America, represented by Michael G. Frey of the law firm Killworth, Gottman, Hagan & Schaeff, L.L.P., Dayton, Ohio, United States of America.

The Respondent is Vipercom, an entity of unknown provenance, according to its registration from Joppa, Maryland, United States of America.

 

2. The Domain Names and Registrar

The disputed domain names (disputed domain names ) are <sportsmanguides.com> and <sportsmenguides.com>. Both are registered with Register.com, New York, New York, United States of America (the Registrar).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the Center) on February 25 (email) and 27 (hard copy), 2003. On February 26, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names . On February 26, 2003, the Registrar 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 Rules 2(a) and 4(a), on March 5, 2003, the Center formally notified the Respondent of the Complaint, and dispatched the Complaint to Respondent by post/courier, telefax, and email, in each instance to the address provided in the Complaint and by the Registrar. This proceeding commenced on this date.

Under Rule 5(a), the Response was due March 26, 2003. The Respondent did not submit any response. On March 28, 2003, the Center notified the Respondent of its default.

The Center appointed Richard G. Lyon as the Sole Panelist on April 2, 2003. I submitted my Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with Rule 7.

 

4. Jurisdiction

A preliminary issue in cases such as this one, where no Response has been filed, is whether the Panel has obtained jurisdiction over the Respondent. Rule 10(b) requires that "each Party [be] given a fair opportunity to present its case." Rule 2(a) requires that the Center employ "reasonably available means calculated to achieve actual notice to Respondent."

The Center employed each of the measures listed in Rule 2(a). The Center has verified that the courier service confirmed delivery and that the email transmission was not returned as undeliverable.

Respondent has consented to the Policy by contract, in its agreement with the Registrar. Even if it did not receive actual notice of the Complaint, there is no unfairness to it when the Complainant and the Center complied with the prescribed notice procedure.

I therefore find that Respondent was "treated with equality" and "given a fair opportunity to present its case" and that there is jurisdiction over Respondent and the disputed domain names .

The Panel shall issue its decision based on the Complaint, the evidence presented, the Policy, the Rules, and the Supplemental Rules.

 

5. Factual Background

The following factual background is taken from the Complaint. Each of the factual allegations in the Complaint is duly supported by competent evidence. The evidence consists of copies of documents, printouts of web pages, and an affidavit from a participant in the telephone conversations described below.

Complainant has operated under the trade name THE SPORTSMANíS GUIDE (the Mark) for over twenty years, and has used that Mark as a service mark in connection with mail order catalog sales since at least as early as 1977, and in connection with on-line retail sales services since at least as early as 1998. Goods available through Complainantís services include clothing, camping gear, hunting and fishing gear, and other equipment of interest to outdoor enthusiasts. Complainant asserts that it currently serves over one million customers throughout the world.

Since 1998 Complainant has operated a website at "www.sportsmansguide.com", through which it offers on-line and telephone sales services and telephone shop-at-home services, and through which it provides links to information resources of interest to outdoors men. Complainantís website includes links to information pertaining to hunting, fishing, and other outdoor activities and listings of guides available for hunting and fishing outings throughout the U.S. and elsewhere.

Complainant is the owner of one Canadian and four United States federal registrations covering its Mark. It also asserts common law rights in the Mark based upon the usage described above.

Respondent registered the disputed domain names in November 2000. Complainant first discovered that Respondent had acquired the registrations two years later, in November 2002. At that time at least one of the disputed domain names resolved to a standard "Coming Soon" page developed by the Registrar. Exiting the page accessed by the <sportsmenguides.com> domain name triggered several pop-up ads.

Complainant first contacted Respondent about its registration of <sportsmenguides.com> on November 14, 2002, with a demand that it surrender the domain name. At this time Complainant was only aware of the <sportsmenguides.com> registration; it became aware of Respondentís registration of <sportsmanguides.com> through subsequent conversations with Dan Steen, the contact person for the disputed domain names . In those conversations, Mr. Steen stated that his company ran a large number of websites, most of which are adult-oriented sites, but that he did have interests in developing sites in other fields as well. Mr. Steen stated that he was unfamiliar with Complainantís business but that he was considering using the disputed domain names in connection with websites that would provide information about activities such as hunting and fishing and to provide space for hunting and fishing guides to advertise their services. Mr. Steen indicated that he might be willing to sell the disputed domain names to Complainant, but did not name a price.

Complainant offered to purchase the disputed domain names for the current registration costs and advised Respondent that its proposed use would constitute an infringement of Complainantís trademarks. Respondent did not reply to this offer, and within a month thereafter caused the disputed domain names to resolve to its "www.victorvoyeur.com"[1] website. As suggested by its title, this website offers pornography for sale.

 

6. Partiesí Contentions

A. Complainant

Complainantís contentions may be summarized as follows:

The disputed domain names are similar to Complainantís mark, differing only by deletion of the apostrophe and changing one or two letters.

Respondent has no rights or legitimate interests in the disputed domain names because (a) Respondent is not commonly known by either of the disputed domain names and has never used either of them to conduct business, (b) Complainant has never licensed the Mark to Respondent or otherwise granted Respondent permission to use the Mark in any respect, (c) Respondent is not using either Disputed Domain Name in connection with a bona fide offering of goods or services and has never made preparations to do so; and (d) Respondent's use of the disputed domain names for a pornographic site bears no relation to the meaning of the Mark in ordinary English.

Respondentís bad faith in registration and use is established by (i) registering the disputed domain names with admitted knowledge of Complainantís Mark, (ii) non-use of the disputed domain names for more than two years, (iii) possible use of the disputed domain names to compete directly with Complainant, (iv) Respondentís intimation that it might be willing to sell the disputed domain names for an amount greater than the costs of registration, (v) Respondent's potentially using the disputed domain names in a manner that would constitute an infringement of the Mark, (vi) Respondent's use of the disputed domain names as a link to pornographic material, and (vii) Respondent's failure to reply to several of Complainantís communications.

B. Respondent

As noted above, Respondent did not reply to the Complaint.

 

7. Applicable Standards

The Complainant must prove the elements set out in paragraph 4(a) of the Policy. These are:

(i) Respondent's Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect to the Domain Name; and

(iii) Respondent's Domain Name has been registered and is being used in bad faith.

Complainant bears the burden of proof on each of these elements. Respondent's default does not automatically result in judgment for the Complainant.

 

8. Discussion and Findings

A. Identical or Confusingly Similar. The disputed domain names 'similarity with the Mark is obvious. One differs only by deletion of the apostrophe and final letter "s" and the other by those distinctions and substitution of an "e" for an "a." Minor variations such as these do not suffice to distinguish a domain name from a protected mark. Confusion is obviously likely and, as noted in the following sections, intentional.

B. Rights or Legitimate Interests. Complainant has the burden of proving that the Respondent does not have a legitimate interest in the disputed domain names . Since there is not a strict logical means of proving a negative fact, however, several Panels have recognized that a Complainant can meet this burden with a prima facie showing. Once a Complainant has made this prima facie showing[2], the burden shifts to the Respondent to show that the Respondent has a legitimate interest in the domain name. Paragraph 4(c) of the Policy lists three non-exclusive ways that the Respondent can accomplish this showing.

In this case Complainant has established a prima facie case by showing (1) its ownership and use of the Mark, (2) that Respondent is neither licensed nor authorized to use the Mark, (3) that Respondent registered the disputed domain names after Complainant had registered its Mark, and (4) that Respondent was aware of Complainant's Mark when it registered the disputed domain names . Since Respondent has not filed a Response to the Complaint, I accept the facts alleged (and supported with evidence) in the Complaint to determine whether any of the circumstances listed in Paragraph 4(c) of the Policy exists.

No legitimate interest in the disputed domain names appears on the record. On the contrary, Respondent is using the disputed domain names to take advantage of the reputation of Complainant's marks[3]. There is no evidence that Respondent has ever "been commonly known by the domain name[s]." Rather than making a "legitimate noncommercial or fair use of the domain name[s],"[4] Respondent is using the site "for commercial gain" and "to misleadingly divert consumers."[5]

C. Registered and Used in Bad Faith. Typosquatting is by itself strong evidence of bad faith in registration and use of a domain name[6]. Respondent's use of domain names with only minor spelling variations from the Mark, for a purpose unrelated to the owner's use of the Mark or the meaning[7] in everyday English of the words in a mark that, like the Mark in this case, is descriptive and thus could be said to have an independent meaning, betrays an intention to attract Complainant's customers and prospective customers to those sites. This constitutes bad faith under Paragraph 4(b)(iv) of the Policy.[8]

 

9. Decision

For the foregoing reasons, in accordance with Rule 15 and Paragraph 4(i) of the Policy, the Panel orders that the disputed domain names be transferred to the Complainant.

 


 

Richard G. Lyon
Sole Panelist

Dated: April 10, 2003

 


1. On April 4, 2003, I verified that the disputed domain names still resolve to this site.
2. E.g., Credit Suisse Group v. Milanes-Espinach, WIPO Case No. D2000-1376; Anti Flirt S.A. v. WCVC, WIPO Case No. D2000-1553; Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467. As I have noted elsewhere, there is some disagreement over what constitutes a prima facie showing. See, e.g., Go Daddy Software, Inc. v. Hadani, WIPO Case No. D2002-0568, and cases cited in notes 12 through 16. .
3. Paragraph 4(c)(i) of the Policy.
4. Paragraph 4(c)(ii) of the Policy.
5. Paragraph 4(c)(iii) of the Policy.
6. Classmates Online, Inc. v. Zuccarini, WIPO Case No. D2002-0635.
7. While the vernacular term sporting house may relate to pornography, the connection is too tenuous to justify an inference that this was Respondent's intention.
8. I expressly decline to address, as unnecessary to the decision, Complainant's assertion that a trademark infringement is proof of bad faith.