WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Sportsmanís Guide, Inc. v. JoyRide
Case No. D2003-0153
1. The Parties
The Complainant is The Sportsmanís Guide, Inc. of South St. Paul, Minnesota, United States of America, represented by Killworth, Gottman, Hagan & Schaeff, L.L.P of United States of America.
The Respondent is JoyRide of Ridgewood, New Jersey, United States of America.
2. The Domain Names and Registrars
The disputed domain name <sportmansguide.com> is registered with Fabulous.com. The disputed domain name <thesportsmensguide.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 26, 2003. On February 27, 2003, the Center transmitted by email to Fabulous.com and to eNom a request for registrar verification in connection with the domain name <sportmansguide.com>. On March 6, 2003, the Center transmitted a reminder by email to eNom for registrar verification in connection with the domain name <thesportsmensguide.com>. On March 6, 2003, and March 25, 2003, respectively, Fabulous.com and eNom transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contacts. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 28, 2003. The Center verified that the Complaint together with the amendment to 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 April 1, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was April 21, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on April 24, 2003.
The Center appointed Angela Fox as the sole panelist in this matter on May 5, 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
For over twenty years, the Complainant has operated a mail order catalogue sales business for outdoor and sporting clothing and equipment under the name THE SPORTSMANíS GUIDE. The Complainantís services under this name were extended to on-line retail sales services in 1998 through the website "www.sportsmansguide.com". The Complainant has over one million customers worldwide.
The Complainant has registered THE SPORTSMANíS GUIDE as a trademark on its own and with other matter for catalogue mail order services, retail services and on-line sales services in the United States, under registration numbers 1430664 dating from February 24, 1987, 1436014 dating from April 7, 1987, 2267142 dating from August 3, 1999 and 2624677 dating from September 24, 2002. The Complainant also owns Canadian trademark registration 398067 for THE SPORTSMANíS GUIDE dating from May 8, 1992, for catalogue mail order services. Copies of the registration certificates were annexed to the Complaint.
The disputed domain names <sportmansguide.com> and <thesportsmensguide.com> were registered on January 6, 2002, and October 22, 2002, respectively. The <sportmansguide.com> domain name had previously stood in the name of the Complainant following its transfer in an earlier administrative proceeding (The Sportsmansís Guide, Inc. v. John Zuccarini, WIPO Case No. D2001-0617), but was picked up by the Respondent following the Complainantís inadvertent failure to renew.
Before these proceedings commenced, the administrative, technical and billing contacts for the Respondentís domain names were identified as Rob Huebner and Rob Hubner, respectively. As the contact addresses given were identical, these individuals are presumed to be the same person and will be referred to in this decision as "Rob Hubner."
Rob Hubner was known to the Complainant as an affiliate with Commission Junction, a third party who managed the Complainantís affiliate advertising programs on the Internet. Under the program, affiliates created links on their web pages to the Complainantís website, and received a commission based on the percentage of merchandise sold to consumers who reached the Complainantís on-line catalogue by passing through the affiliateís site. On registration as an affiliate in June 2001, Hubner indicated that he would drive traffic to the Complainantís site by using advertisements linked to the domain names <mopedwarehouse.com>, <joyride.com>, <bergenmall.com>, <mall.com> and <bfinc.com>. When the Respondent later registered the disputed domain names, however, these also routed visitors through to the Complainantís website, and the Respondentís commission earnings increased significantly.
On November 14, 2002, the Complainantís lawyers wrote to the Respondent demanding the immediate disablement of the domain names and their transfer to the Complainant. The following day, the Respondentís lawyers stated that the domain names had been disabled but that the Respondent had no intention of transferring them to the Complainant in the absence of a satisfactory offer. On November 26, 2002, the Complainantís lawyers offered to pay the Respondentís registration costs in exchange for transfer, but this elicited a swift sarcastic reply declining the Complainantís " Ďgenerousí offer" and listing several factors which contributed to the rejection of it, including "your allowing the domain registrations [sic] to expire after battling for them at WIPO." The Respondentís lawyersí email of November 28, 2002, concluded, "If you wish to reconsider and be serious in your approach, we will in turn, be serious in our response." Copies of this correspondence were annexed to the Complaint.
Following this exchange, the Respondent re-activated the domain names and in January 2003, the Complainant contacted Commission Junction to arrange for the Respondentís status as an advertising affiliate to be terminated. Following termination, the domain name <sportmansguide.com> began re-directing visitors to another site on which an outdoor activities guide book entitled Sportmansguide was advertised. The domain name <thesportsmensguide.com> did not link to any site.
The Complainant brought this administrative proceeding on February 26, 2003.
5. Partiesí Contentions
The Complainant contends that the domain names are confusingly similar to its trademark THE SPORTSMANíS GUIDE. They are common misspellings of, and typographical errors for, the Complainantís trademark with only non-distinctive differences. A documented jump in commission revenue enjoyed by the Respondent following the linking of these domain names to the Complainantís site evidences actual confusion.
According to the Complainant, the Respondent has no rights or legitimate interests in the domain names. The Respondent is not commonly known by names corresponding to the domain names and has not been authorized to use the domain names by the Complainant. Before notice of the dispute, the Respondent was not using either domain name in connection with a bona fide offering of goods or services, nor had it made preparations to do so. Instead, the Respondent was using the domain names to unfairly trade on the Complainantís trademark by diverting the Complainantís customers through its websites to earn commissions from the Complainant. Such use was commercial but not bona fide. The use of <sportmansguide.com> to advertise a book purportedly called Sportmansguide after the advertising affiliate agreement came to an end in January 2003 was not capable of conferring rights or legitimate interests, since it began two months after notice to the Respondent of the dispute in November 2002.
The Complainant also alleges that the Respondent registered and used the domain names in bad faith. The Respondentís use of the domain names in the affiliate program violated the terms of the standard affiliate agreement with Commission Junction, which prohibited affiliates from adopting domain names which were confusingly similar to trademarks of the licensors, in this case the Complainant. An example of Commission Junctionís standard contract with affiliates was annexed to the Complaint. The Complainant contends that the Respondent knew of the Complainantís trademark through its activities as an advertising affiliate of the Complainant before the first disputed domain was registered, and its adoption of the disputed domain names in violation of this agreement is evidence that they were registered and used in bad faith. Moreover, the Respondentís activities intentionally created a likelihood of confusion with the Complainantís trademark and thereby attracted Internet users to, or more properly, through, the Respondentís site for its own commercial gain.
Moreover, the Complainant contends that the Respondent can be presumed to have registered the domain names for the ultimate purpose of selling them to the Complainant for valuable consideration in excess of the Respondentís documented, out-of-pocket expenses directly related to the domain names. The Respondentís rejection of the Complainantís offer to purchase the domain names for the registration price and implication that the domain names were worth more because of the Complainantís previous UDRP proceeding to retrieve one of them suggest that the Respondent intended to gain a significant monetary consideration for the sale of the domain names to the Complainant.
Finally, the Complainant contends that the Respondent tried to conceal its registrant and contact information for <thesportsmensguide.com> by deleting data from its Whois record one day after its affiliate agreement was terminated, and that such concealment is also evidence of bad faith.
The Respondent did not reply to the case against it and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14 (a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondentís default.
6. Discussion and Findings
Under Paragraph 4 (a) of the Policy, a Complainant can only succeed in an administrative proceeding under the Policy if the Panel finds that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights in or legitimate interests to the domain name;
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.
A. Identical or Confusingly Similar
The Complainant has adequately proved that it has rights in the registered trademark THE SPORTSMANíS GUIDE in the United States and Canada by exhibiting copies of its registration certificates.
The domain name <sportmansguide.com> differs from the Complainantís trademark in the addition of the non-distinctive top-level domain ".com" and the omission of the apostrophe. These may be discounted as incidental to domain names, however, as held in e.g. Rolls Royce PLC v. Hallofpain (WIPO Case No. D2000-1709) and Busy Body, Inc. v. Fitness Outlet Inc. (WIPO Case No. D2000-0127). The only other differences are the omission of the word "the" and the middle "s" in "sportsmanís." The word "the" is non-distinctive and its omission is unlikely to affect the question of confusing similarity. It is likely to be dropped in speech or in casual use and, indeed, even the Complainant omitted it in its legitimate website name, <sportsmansguide.com>. The second difference, the omission of the middle letter "s" in "sportsmanís," is not visually prominent enough to avoid confusion on its own and is, moreover, a typographical error likely to be made by Internet users.
The material portion of <thesportsmensguide.com> differs from the Complainantís trademark only in the substitution of an "e" for an "a" in "sportsmanís." Again, such a minor difference is not visually prominent and is not only a common typographical error, but also the correct spelling for the plural of "sportsmanís." Those attempting to locate the Complainantís website with only an aural or imperfect visual recollection of how the Complainantís trademark was spelled could be expected to confuse <thesportsmensguide.com> with the legitimate site of the Complainant.
Other Panels have found confusing similarity in cases where minor differences between domain names and trademarks were in the nature of common misspellings or typographical errors, as in Ltd. Commodities, Inc. v. CostNet/Domain Manager (WIPO Case No. D2002-0031), where <ltdcomodities.com> was found confusingly similar to LTD COMMODITIES, INC., and Aurora Foods, Inc. v. David Paul Jaros (WIPO Case No. D2000-0274), where <duncanhine.com> was found confusingly similar to DUNCAN HINES.
In this case, there is evidence to suggest that actual confusion arose from the registration and use of the Respondentís domain names. The Complainant submitted uncontroverted evidence that the Respondent enjoyed a significant increase in commission earnings from the Complainant following registration and use of the disputed domain names, through increased numbers of customers reaching the Complainantís site through the Respondent. In the absence of any alternative explanation for this increase, the Panel considers it likely to have arisen from Internet visitors confusing the Respondentís domain names with the Complainantís directly accessible site.
In line with the reasoning in the cases mentioned above, and with that in The Sportsmans Guide, Inc. v. John Zuccarini (WIPO Case No. D2001-0617), the Panel finds that the disputed domain names are confusingly similar to the Complainantís trademark.
B. Rights or Legitimate Interests
The Respondent has not contested the facts as presented by the Complainant, and there is nothing in these to suggest that the Respondent was ever commonly known by a name corresponding to the domain names.
The Panel also accepts that the Complainant did not consent to or authorize the Respondentís registration and use of domain names confusingly similar to the Complainantís trademark. The Respondent has not denied that it entered into an agreement with Commission Junction in the same terms as the standard form agreement attached to the Complaint. That agreement expressly prohibited the adoption by affiliates of domain names which were confusingly similar to trademarks of licensors such as the Complainant. In the absence of a response, the Panel considers it likely that the Respondent did enter into an agreement in those terms, and there is therefore no question that the Complainant did not consent to or authorize the registration and use of the disputed domain names through the advertising affiliate program.
Before notice to it of this dispute in November 2002, the Respondent was making a commercial use of the domain names by re-directing visitors to the Complainantís site in order to earn a commission through an affiliate advertising program. However, such use is not bona fide and cannot confer legitimacy under Paragraph 4 (c) (i) of the Policy. The use of domain names which are confusingly similar to anotherís trademark in order to draw a commission from sales to that other which were channeled through the confusingly similar domain names cannot be said to be in good faith. The mere fact that Internet users arriving at the Complainantís site through the disputed domain names would not have known that they had been re-directed does not make the Respondentís activities any less misleading. Visitors channeled through the disputed domain names who ultimately make purchases from the Complainantís site, thus triggering a commission for the Respondent, can reasonably be assumed to have intended to reach the Complainantís site directly. The use of domain names so similar to the Complainantís trademark as to mislead Internet users to assume that they are those of the Complainant is not bona fide commercial use.
Analogous results have been reached in other cases, including Ritz-Carlton Hotel Company, LLC v Jtravel (NAF Case No. FA00105960) where the respondent registered the domain name in order to sell the complainantís services and thereby to earn a commission; Gorstew Ltd. and Unique Vacations v. Carribean Tours & Cruises (NAF Case No. FA0094927) where the respondent registered the domain name in order to earn commissions for bookings at the complainantís holiday resorts; Deluxe Corporation v. Dallas Internet (NAF Case No. FA00105216) and Ticketmaster Corp. v. DiscoverNet, Inc. (WIPO Case No. D2001-0252) where the respondentís use of a confusingly similar domain name to divert Internet traffic to a complainantís competitors for a fee was held not to be bona fide commercial use; and Vapor Blast Mfg. Co. v. R & S Technologies, Inc. (NAF Case No. FA0096577), where misleading use of a domain name for commercial purposes was held not to be bona fide commercial use.
In most of these cases, Internet traffic was being diverted for the respondentís commercial gain through the use of confusingly similar domain names. However, it is a natural extension of the line of reasoning in such cases to find that the use of confusingly similar domain names to re-direct traffic to a complainantís legitimate website for the respondentís commercial gain is also not in good faith. The same basic pattern is present, and the Panel sees no reason why the result should be different simply because the Complainant also receives some benefit from the re-directed traffic. The Complainant was liable to pay commission fees for the benefit of re-directed traffic which could reasonably have been expected to reach the Complainantís site directly, had it not been for the Respondentís use of confusingly similar domain names. Use by the Respondent which intentionally created this result is not bona fide commercial use.
That the Respondentís commercial use of the domain names was not in good faith is further evidenced by its violation of the agreement which Commission Junction required its affiliates to sign, which expressly prohibited the adoption of domain names confusingly similar to licensorsí trademarks. There is no doubt that the Respondent was aware of the Complainantís trademark, as it had been sublicensed to advertise the Complainantís website on other, unconnected websites for some time before the first disputed domain name was registered. The Respondent therefore knowingly acquired and used domain names which were confusingly similar to the Complainantís trademark in its advertising affiliate activities, in direct violation of its affiliate agreement. Commercial use based on such a knowing breach cannot be said to be in good faith.
The Panel disregards the Respondentís advertisement of a book purportedly entitled Sportmans Guide on the <sportmansguide.com> website. The advertisement was placed two months after the Respondent had notice of this dispute from the Complainant. Commercial activities launched after notice of a dispute and not clearly shown to have been planned before such notice do not confer rights or legitimate interests in accordance with Paragraph 4 (c) (i) of the Policy.
The Panel finds that the Respondent has no rights or legitimate interests in the domain names.
C. Registered and Used in Bad Faith
The Respondentís use of confusingly similar domain names in order to profit from the confusion of Internet users was a parasitic use. The Respondent intentionally created a likelihood of confusion with the Complainant's catalogue sales trademark by using the disputed domain names, and did so in order to attract Internet users through the Respondentís website for its own commercial gain. The fact that Internet users were lured through rather than to the Respondentís site does not lessen the bad faith present on these uncontested facts. Paragraph 4 (b) of the Policy is not exhaustive on what circumstances may be evidence of registration and use of a domain name in bad faith. The registration and use of domain names which the Respondent had reason to know were confusingly similar to the Complainantís trademark, in order to divert the Complainantís would-be customers down a route that would trigger a commission for the Respondent, was manifestly below the standards of acceptable commercial behaviour. Such use was in bad faith, notwithstanding the fact that the re-routed visitors probably never knew that they had not reached the Complainantís site directly. The Respondentís success in misleading the public is not the measure against which its good or bad faith should be judged. Similar reasoning was adopted in Ritz-Carlton Hotel Company, LLC v Jtravel (NAF Case No. FA00105960) and Deluxe Corporation v. Dallas Internet (NAF Case No. FA00105216), referred to above.
The Respondentís bad faith in using and registering the disputed domain names is also evidenced by its apparent breach of the agreement with Commission Junction by adopting domain names which were unquestionably confusingly similar to the Complainantís trademark.
The Respondentís bad faith is also apparent from its clear implication to the Complainant that the disputed domain names were for sale at a price significantly higher than the registration fees, taking into account the obvious value of the domains to the Complainant following its previous retrieval of <sportmansguide.com> from an earlier cybersquatter (The Sportsmansís Guide, Inc. v. John Zuccarini, WIPO Case No. D2001-0617). This demonstrated that the Respondent was aware of the Complainantís rights in a trademark which had been held confusingly similar to <sportmansguide.com>, and that a desire to hold the Complainant for ransom was behind its registration of <thesportsmensguide.com> and its re-registration of <sportmansguide.com> following the Complainantís inadvertent failure to renew. Similar motivations were detected in BAA plc v. Spektrum Media Inc. (WIPO Case No. D2000-1179), where the respondentís re-registration of the complainantís domain name following failure to renew contributed to an inescapable inference that the respondent intended to use it to the complainantís detriment. In the present case, that detriment was likely to have been a significant sum of money had the Complainant agreed to negotiate. These circumstances suggest that the Respondent registered the domain names primarily for the purpose of selling them to the Complainant, who it knew to own a confusingly similar trademark, for a price substantially higher than the Respondentís out-of-pocket expenses directly related to the domain names. This is prima facie evidence of bad faith registration and use under Paragraph 4 (b) (i) of the Policy.
Further, the Panel accepts the Complainantís submission, supported by Whois print-outs from both before and after the affiliate advertising agreement ended, that the Respondent appears to have organised the deletion of its contact information from the Whois record for <thesportsmensguide.com> following notice of the dispute. Such action suggests that the Respondent was attempting to conceal his contact details from the Complainant in order to complicate efforts to serve a complaint or claim. Concealment of this type is in bad faith, analogous to the finding in Novus Credit Services Inc. v. Personal (WIPO Case No. D2000-1158) where the respondent falsely amended his contact details in order to conceal his identity.
In view of all this, the Panel finds that the disputed domain names were registered and used in bad faith.
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 names <sportmansguide.com> and <thesportsmensguide.com> be transferred to the Complainant.
Date: May 19, 2003