WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Sportsmanís Guide, Inc. v. Modern Limited, Cayman Islands
Case No. D2003-0305
1. The Parties
The Complainant is The Sportsmanís Guide, Inc., Minnesota, United States of America, represented by Killworth, Gottman, Hagan & Schaeff, L.L.P of United States of America.
The Respondent is Modern Limited, Cayman Islands, Georgetown Cayman Islands, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name is <sportsmenguide.com>, which is registered with Address Creation.
3. Procedural History
3.1 Submission of the Complaint
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center"), in electronic format, on April 17, 2003. The original of the Complaint together with the 11 Annexes were submitted in hard copy on April 22, 2003.
3.2 Confirmation of registration details
On April 24, 2003, the Center transmitted by email, to Address Creation a request for registrar verification in connection with the domain name at issue. The request was sent to the email address displayed on the Registrarís website Ė "firstname.lastname@example.org." The Registrar did not send the required verification, even though a reminder was sent to them. Due to the lack of reply from the Registrar, the Center proceeded with the case using the information provided on the corresponding Registrars Whois data. This information was obtained on June 3, 2003. The information obtained by the Center, from the corresponding Registrars Whois data, about the disputed domain name, are identical with those submitted in the Complaint and obtained from the same source on January 23, 2003, and on April 4, 2003. The Panel itself has performed several checks related to the disputed domain name, from the same source - the corresponding Registrars Whois data - and acknowledged that this information obtained during the checks are identical with those obtained by the Center and provided by the Complainant. Therefore, the Panel assumes that the information of the disputed domain name and its Registrant shown in the corresponding Registrars Whois data, are correct, as neither the Respondent or the Registrar contest such information.
3.3 Formal compliance check
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"). As for sending the Complainant to the Respondent and to the Registrar, according to the Complainantís contentions, the Panel presumes that it was done, as neither the Respondent or the Registrar contested it.
The Panel independently determined and agreed with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Policy, the Rules and the Supplemental Rules.
3.4 Notification of the Respondent
In accordance with the Rules, paragraphs 2(a) and 4(a), and in the light of the information available (as mentioned in the paragraph 3.2 above), the Center formally notified the Respondent of the Complaint and of the commencement of the proceedings on May 1, 2003.
The Notification specified, in accordance with the Rules, paragraph 5(a), May 21, 2003, as the due date for the submission of the Response.
Paragraph 2(a) of the Rules provides that it is the providerís responsibility to employ reasonably available means calculated to achieve actual notice of the Respondent. This paragraph further provides that this responsibility is discharged:
- by sending the Complaint to each of the address shown in the Registrarís Whois database for the domain name holder and the technical and administrative contact and to the address supplied for the Billing contact, and
- by sending the Complaint in electronic form to the respective e-mail addresses, to the postmaster at the domain name and to any address on an active web page to which the domain name resolves, and to any other addresses notified to the sender by Respondent or provided by Complainant.
The Center sent the Notification of the Complaint and Commencement of the Administrative Procedure, by post, facsimile and by email, to all the addresses shown in the Registrarís Whois, as listed for the Respondent Modern Limited Ė Cayman Islands, on January 23, 2003, April 16, 2003 and June 3, 2003.
The Panel accepts that in light of the information available WIPO has employed all means reasonably available to achieve notice to the Respondent of the Complaint.
3.5 Filling a Response
The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on June 4, 2003.
3.6 Constitution of the administrative Panel
The Center appointed Beatrice Onica Jarka as the Sole Panelist in this matter on June 4, 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.
The projected decision date is June 18, 2003.
The Panel finds that, the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.
3.7 Language of the Proceedings
The Panel considers that, according to paragraph 11 of the Rules, the language of the proceedings is English.
4. Factual Background
According to its website, "www.sportsmansguide.com," the Complainant is a public company listed on NASDAQ stock exchange, which is in the business of mail order catalog sales. Its first catalog sale was offered to the public in 1977. Since at least 1998, through its website the Complainant has offered online sales services and telephone shop-at-home services, and has provided links to information resources of interest to outdoorsmen. Goods available through Complainantís services include clothing, camping gear, hunting and fishing gear and other equipment of interest to the outdoorsman.
According to its own assertion, the Complainant currently serves over one million customers throughout the world.
As results from the search performed by the Panel, the Complainant registered the domain name <sportsmansguide.com> with Network Solutions on May 11, 1996.
According to the annexes to the Complaint, the Complainant is the owner of four United States federal registrations covering its "THE SPORTSMANíS GUIDE" mark:
∑ U.S. Reg. No. 1,430,664, for THE SPORTSMANíS GUIDE, issued February 24, 1987, covering catalog mail order services;
∑ U.S. Reg. No. 1,436,014, for THE SPORTSMANíS GUIDE and Design, issued April 7, 1987, covering catalog mail order services;
∑ U.S. Reg. No. 2,267,142, for THE SPORTSMANíS GUIDE, issued August 3, 1999, covering catalog mail order services, retail store services, and online sales services; and
∑ U.S. Reg. No. 2,624,677, for THE SPORTSMANíS GUIDE and Design, issued September 24, 2002, covering catalog, mail-order, online retail and retail store services, featuring footwear, clothing and accessories, hunting and shooting accessories, camping and outdoor recreation products, optics, ammunition, domestics, novelties and collectibles, electronics, furniture, cookware, utensils, hardware, knives, tools, automotive products, electronics and other consumer products.Reg. Nos. 1,430,664 and 1,436,014 have become incontestable under the provisions of U.S. trademark law,
The Complainant is also the owner of a registration for THE SPORTSMANíS GUIDE mark in Canada:
∑ Canadian Reg. No. TMA 398,067, for THE SPORTSMANíS GUIDE, registered May 8, 1992, covering catalogue mail order services.
The disputed domain name <sportsmenguide.com> has been registered in the Respondentís name since November 15, 2002.
Before the said date, the disputed domain name was registered to a Mr. Anthony Peppler of RealTimeInternet.com.Inc. (as shown in the Annex 7 to the Complaint).
As before November 15, 2002, to the present moment, the disputed domain name displays a collection of generic keywords, which resolves to websites associated to each keyword. Each website associated to the keywords contains a listing and a search "List your site here with ShopFind integrated search results!", which resolves to another website <shopfind.com> where the process of getting a website included in the listing is discussed. Among the generic keywords, one can find words as shopping and clothing, which access to pages offering on line stores, some of them for products similar with those of the Complainant.
The disputed domain name was registered on May 27, 2002, and, expires on May 27, 2004.
On November 14, 2002, the Complainant contacted Mr. Peppler of RealTimeInternet.com., Inc., requesting the surrender of the disputed domain name. There was no answer from the side of Mr. Peppler. On November 15, 2002, the disputed domain name was transferred to the present Respondent, which is also the Registrant of <shopfind.com>.
On January 23, 2003, the Complainant contacted both the Respondent and Mr. Peppler regarding the surrender of the disputed domain name. Again there was no answer from their side.
5. Partiesí Contentions
The Complainant contends that:
I. the disputed domain name is confusingly similar to Complainantís marks, as registered at the federal level and as reflected in its own domain name, the main differences between the Respondentís domain name and Complainantís mark are the omission of the final "S" in the term SPORTSMANS and the substitution of the letter "E" for "A" in MAN.
II. the Respondent has no rights or legitimate interests in respect of the disputed domain name because:
- prior to notice to the Respondent of this dispute, Respondent was not using the 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 name to unfairly trade on Complainantís name and mark, by associating the domain name with a list of generic words resolving some of them to online stores offering some of the same types of products Complainant sells.
- the Respondent is not commonly known by the domain name or any portion thereof, nor has it registered the domain name as a trademark.
- Complainant has never assigned, sold or transferred any rights in its THE SPORTSMANíS GUIDE marks to Respondent, has not granted Respondent permission to use or register its mark as a domain name.
- The Respondent is making commercial use of the disputed domain name, with intent of diverting Internet traffic away from Complainantís site for its own commercial gain.
- The "contact" link on the web page accessed by the disputed domain name, takes one to a page that is identical to the home page for the site.
III. The domain name was registered and is being used in bad faith because
- the disputed domain name was registered by Anthony Peppler of the RealTimeInternet.Com, which has been involved in a pattern of bad faith registration and use of domain names;
- the Respondentís use of the disputed domain name is effectively an attempt to create confusion with Complainantís mark and domain name, and thereby to attract Internet users to Respondentís website for its own commercial gain, and this results from both clicking through the links to the sites with which the keywords are connected and from the use of banner advertisements and pop adds, displayed on the web page accessed by the disputed domain name;
- the transfer of the domain name following Complainantís initial contact, and the involvement of RealTimeInternet.Com with the domain name, also suggests bad faith on the part of the Respondent, especially in connection to the fact that Respondent has no legitimate interests in the domain name.
Properly notified according to Paragraph 2(a) of the Rules, the Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
6.1. Substantive elements of the Policy
Paragraph 15(a) of the Rules instructs the 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."
The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:
A. that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
B. that the Respondent has no rights or legitimate interests in respect of the domain name; and
C. that the domain name has been registered and is being used by the Respondent in bad faith.
Paragraph 5(e) of the Rules instructs the Panel that:
"if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint."
Further paragraph 14(b) of the Rules instructs the Panel that:
"If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate."
A. Identical or Confusingly Similar
The record shows that the Complainant holds several trademark registrations in the mark THE SPORTSMANíS GUIDE mark. Also the record shows that the Complainant has reflected its mark in its own active domain name <sportsmansguide.com> since at least 1998 (the registration of the domain name shows 1996 as the date of its creation).
Such registration of the trademark and the reflection of this mark in an active domain name is conclusive evidence of Complainant's exclusive rights in the mark for the goods and services listed in the registrations, and displayed on the Internet. As a result, the validity of Complainant's rights may not be challenged on the grounds that the mark is merely descriptive. (See, T. Rowe Price Associates, Inc. v. J A Rich, WIPO Case No. D2001-1044). Further, there is no indication that SPORTSMANíS GUIDE is a common generic term for the class of goods or services provided by the Complainant, mainly because of the popularity of the Complainant business. An Internet search (as the Panel conducted) for the words "SPORTSMANíS GUIDE," which corresponds to the Complainant mark, resolves to hundreds of addresses which contains references to the Complainantís website <sportsmansguide.com>.
As the Complainant contends, the disputed domain name is confusingly similar to Complainantís marks "The Sportsmanís Guide" and to its reflection in the Complainantís domain name. The main differences between the disputed domain name and Complainantís mark is the omission of the final "S" in the term "sportsmans" and the substitution of the letter "E" for "A" in "man," do not render the disputed domain name totally distinctive from the Complainantís trademark (See, The Sportsmanís Guide, Inc v. Vipercom, WIPO Case No. D2003-0145, VeriSign Inc.,v. Venesign C.A., WIPO Case No.D2000-0303). Even if these differences do not represent misspellings of the Complainantís trademark, as the sportsmenguide represents by itself a descriptive term, the pronunciation of the disputed domain name and of the Complainantís trademark is so close that the risk for confusion between the two exists mainly because the Complainantís trademark in its website denomination <sportsmansguide.com> is so popular online.
The Panel does not need to discuss further the differences between the disputed domain name and the Complainantís registered trademark, the addition of generic top-level domains name "com" or the omission of the term "the," are without legal significance and certainly do not render the disputed domain name different from the Complainantís trademark.
For the reasons above, the Panel finds that the disputed domain is confusingly similar to Complainantís marks "The Sportsmanís Guide."
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides three nonexclusive circumstances that can demonstrate that the Respondent has rights to or legitimate interests in the domain names:
(i) before any notice to the Respondent of the dispute, his/her/its use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name has been in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) have been commonly known by the domain name, even if he/she/it have acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the domain names.
It has become accepted by more and more prior panels, that in the absence of any Response, once a Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights apply, the burden of proof on this element shifts to the Respondent to rebut the showing (See, Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270; Chanel, Inc v. Estco Technology Group, WIPO Case No. D2000-0413, WIPO Case No. D2003-0145, The Sportsmanís Guide, Inc v. Vipercom).
Silence of the Respondent might be an indication that he has no rights or legitimate interests in respect of the disputed domain name, as many prior ICANN panels have accepted (See, Edgar Rice Burroughs, Inc v. Adtel Communications, WIPO Case No. D2000-0115, Singapore Airlines limited v. European Travel Network, Wipo Case No. D2000-0641; Bayerische Motoren Weke AG v. Null, WIPO Case No. D2002-0937).
According to the prior practice of ICANN panels, in the present case, the Panel finds that the Complainant established a prima facie showing that the Respondent has no rights to or legitimate interests in the disputed domain name.
The Panel, referring to the Respondent, has no indication whatsoever of any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, under the <sportsmenguide.com>.
As the Complainant contends, there are only two references to the domain name on the web page accessed by the disputed domain name. First, the domain name itself is reproduced at the top of the web page and second, immediately after the heading "looking for something", there is a statement starting with "welcome to sportsmenguide.com. Weíve collected a list of sources sites to help you find exactly what are you looking Ö.." Neither the statement nor the reproduction of the disputed domain name can be considered to be a description of the Respondents' business in connection with a bona fide offering of goods.
As an Internet user looks for the Complainantís site, opening the disputed domain name, he or she cannot find any indication that it is not the website looked for. More importantly, some of the generic words in the web page accessed by the disputed domain name link to online stores offering some products that are similar to those the Complainant sells.
From the contentions of the Complainant, which have not been denied by the Respondent, it results also that the Respondent is not a licensee of the Complainant and no permission or consent has been granted to the Respondent to use the "SPORTSMANSGUIDE" mark or to apply for any domain name incorporating this mark. In the same time, the Panel cannot find that the Respondent was using the domain name not in the trademark sense, but in the descriptive sense, describing the types of businesses listed on the directory page, as prior ICANN panels have recognized that it may be considered as evidence for legitimate rights and interests of the Respondent in the disputed domain name. (See, Sweeps Vacuum & Repair Center. Inc v. Nett Corp Inc., WIPO Case No. D2001-0031), because, even if the disputed domain name is a generic name, it is not used to describe the Respondents website activities. The website operated by the Respondent could have been hosted at any other address such as "urbanmenguide" or "worldmenguide," as it has very little (at certain links it offers for sale products similar to those offered by the Complainant on his site) or nothing do with the sports skills or sports hobbies of a person.
As the Complainant pointed out in the Complaint, the fact that the "contact" link on the web page accessed by the disputed domain name, takes one to a page that is identical to the home page for the site, is sustaining the consideration that the Respondent does not run a legitimate business through the disputed domain name.
Moreover, related also to the fact that the Respondent failed to submit a Response to the Complainants allegations, the Panel will not, in these circumstances, draw an inference that Respondent, prior to notice of a dispute, made demonstrable preparations to use the disputed domain name for a bona fide offer of goods or services.
Additionally, the Respondent is not commonly known by the domain name <sportsmenguide.com>, especially because his name does not include any of the words used in the disputed domain name, and also because the Respondent does not prove that he holds a trademark "SPORTSMENGUIDE."
Regarding the circumstance provided by paragraph 4(c)(iii), there is no evidence that the Respondent is making a legitimate noncommercial or fair use nor is making an educational, political satirical or other use of the disputed domain name that implicates free speech principles or any other recognized category of fair use.
As it appears to be from the website accessed by the disputed domain name, the Respondent earns revenues from the several pop-adds and banner advertisements, which open on the website and also from the <shopfind.com> website associated with the web page accessed by the disputed domain name, whose registrant is the Respondent.
For the above said considerations and taking into account the failure of Respondent to file a Response to the Complainants allegations, the Panel finds that the Respondent has no rights to and legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent have registered or have 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 that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent have 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 have engaged in a pattern of such conduct; or
(iii) the Respondent have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent have intentionally attempted to attract, for commercial gain, Internet users to his/her/its website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his/her/its website or location or of a product or service on your website or location.
Even if the Panel is not limited to the circumstances provided by paragraph 4(b), the Panel considers that the provisions of paragraph 4(b)(iv) of the Policy are applicable in the present case and it shall not go further in analyzing the remaining circumstances provided by paragraph 4(b).
Considering the Complaint and the evidences submitted in the case, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
The application of the paragraph 4(b)(iv) of the Policy, implies in the present case two elements of equal legal significance:
1) the constructive knowledge of the Respondent of the Complainantís long standing trademark at the moment of registration of the disputed domain name;
2) the use of the disputed domain name for commercial gain;
1) Constructive Knowledge
Given that the "constructive knowledge" concept seems to exist in principle under the US trademark law (see Sterling Inc. v. Sterling Jewelers, Inc and Domain Traffic, WIPO Case No. D2002-0772, Biogen, Inc. v. Kel Ellis, KELCO, WIPO Case No. D2002-0679, Jeffrey S. Thompson d/b/a The Wedding Planner v. Weddingchannel.com, Inc., WIPO Case No. D2002Ė0086), the Panel accepts that such a concept may be generally valid, especially in the situation when the Complainant and the Registrant of the disputed domain name are located in the US. The constructive knowledge concept refers to the fact that a registration at the federal level of a trademark provides constructive knowledge to any third parties in the US.
Regarding the disputed domain name in the present case, the registration by the first Registrant - Anthony Peppler of RealTimeInternet.Com, in the circumstances of paragraph 4b(iv) of the Policy, is obviously valid for the present Respondent, which maintained with no modification the website under <sportsmenguide.com.> taken over from the former Registrant.
The registration of the disputed domain name by the former Registrant has been done in bad faith, and the former Registrant had, as the Complainant contends, constructive knowledge of the Complainantís trademark. The Panel agrees that the registration of the Complainantís trademark, and the popularity of this trademark on Internet, obtained long time before the former Registrant actually registered the disputed domain name represent evidences as to the constructive knowledge of the former Registrant.
The present Respondent, which took over the disputed domain name from the former Registrant, can also be charged with constructive knowledge of the Complainantís trademark, at the transfer time, even if it is not a US company as the former Registrant is.
This is for three reasons:
First, there is an obvious connection between the former Registrant and the present Respondent which results from the fact that, before and after the transfer of the disputed domain name, the generic keywords on the website "sportsmenguide" resolves to the same pay per click engine <shopfind.com>, registered under the name of the present Respondent, way back in 2001.
Second, the website to which the disputed domain name resolves has remained the same as it was before the transfer.
Third, the Respondent, who has not filed a Response, even though it was properly notified, has not denied the connection with the former Registrant, alleged by the Complainant.
Adding to the three reasons above, the fact that the disputed domain name was transferred from the former Registrant (which by chance was involved as Respondent in other similar cases of registration and use of domain names in bad faith) to the actual Respondent the next day after the Complainant notified the Registrant on the disputed domain name and asked for surrender, makes a strong case for proving that constructive knowledge of the Complainantís trademark, as registered and as reflected in the Complainantís domain name existed both at the registration and at the transfer time of the disputed domain name.
2) The Use of the Disputed Domain Name for Commercial Gain
The Panel agrees that, as the Complainantís contends and as it appears to be from the website to which the disputed domain name resolves, the Respondent earns revenues from the several pop-adds and banner advertisements, which opens on the website and also from the <shopfind.com> associated website. Such an inference results also from the fact that the Respondent, who has not filed a Response, even though it was properly notified, has not denied these allegations of the Complainant.
The current presentation of the website to which the disputed domain name resolves is, as results from the evidences submitted by the Complainant, very much the same with that existing before the transfer from the former Registrant to the actual Respondent took place.
The constructive knowledge of the Complainantís trademark and of the services offered under this trademark, from the side of the former Registrant and of the present Respondent, associated with the use of the disputed domain name for commercial gain, represent, in the opinion of the Panel, evidence for the registration and use in bad faith of the disputed domain name.
As the Panel has previously accepted, the disputed domain name is descriptive in nature and one may argue that an Internet user entering <sportsmenguide.com>, enters the descriptive term. In such situation when the user arrives to the website featuring the collection of generic keyword with links to a list of websites associated with each keyword, the user shall not feel that the website satisfies his need for information related to the general topic (See, Home Interiors& Gifts, Inc v. Home Interiors, WIPO Case No. D2000-0010). As stated above the website operated by the Respondent could have been active under any other domain name such as "urbansmedguide," or "worldmeguide," as it is not offering mainly sports product or sports information for an outdoor person.
Taking into consideration also the popularity of the Complainant trademark on Internet (an Internet search for the words "SPORTSMANíS GUIDE," which corresponds to the Complainant mark, resolves to hundreds of addresses which contains references to the Complainantís website <sportsmansguide.com>) and the registration by the Complainant of a domain name reproducing its trademark, way back to 1996, the Panel concludes, that the disputed domain name has been registered and used in bad faith by the Respondent with the clear intent of attracting, "for commercial gain, Internet users to his/her/its website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his/her/its website or location or of a product or service on your website or location."
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, <sportsmenguide.com> be transferred to the Complainant, as requested.
Beatrice Onica Jarka
Dated: June 18, 2003