WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sports Holdings, Inc. v. WhoisGuard Protection
Case No. D2006-1360
1. The Parties
The Complainant is Sports Holdings, Inc., United States of America, internal representative David M. Benck, United States of America.
The Respondent is WhoisGuard Protection, Westchester, California United States of America.
2. The Domain Name and Registrar
The disputed domain name <hibbettsportinggoods.com> (the “Domain Name”) is registered with 1800-website, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2006. On October 24, 2006, the Center transmitted by email to 1800-website, LLC a request for registrar verification in connection with the domain name at issue. On that same day, 1800-website, LLC 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 10, 2006. 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 November 13, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 3, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 6, 2006.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on December 28, 2006. 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
Complainant is Sports Holdings, Inc., which is a subsidiary of Hibbett Sporting Goods, Inc. Complainant has been continuously using the HIBBETT and HIBBETT SPORTS trademarks (the “Marks”) in connection with the operation of a full line of sporting goods stores since 1980 and 1994, respectively. It operates over six hundred stores, which are located in twenty-three (23) states.
Complainant owns Registration No. 2,717,584 on the Principal Register of the U.S. Patent and Trademark Office for the mark HIBBETT SPORTS for use in conjunction with “retail store services featuring sporting goods, clothing and footwear.” Complainant owns the domain name <hibbett.com> and it uses it for its official corporate website.
Respondent’s website at the disputed domain name is a commercial search engine with direct links to competitors of Complainant as well as links to other sports equipment websites. Respondent registered the Domain Name on October 2, 2006. On October 5, 2006, Complainant wrote Respondent regarding its registration of the Domain Name and requested, among other things, that Respondent immediately cease using the HIBBETT mark and transfer ownership of the Domain Name to Complainant. Respondent never responded to Complainant.
5. Parties’ Contentions
Complainant contends that the Domain Name < hibbettsportinggoods.com> is identical or confusingly similar to Complainant’s HIBBETT and HIBBETT SPORTS marks, as well as its <hibbett.com> domain name and its parent company’s trade name - Hibbett Sporting Goods. Complainant also contends that Respondent has no rights or legitimate interests in the Domain Name and that Respondent registered and is using the Domain Name in bad faith. For these reasons, Complainant requests that the Panel transfer the Domain Name to it.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Where a party fails to present evidence in its control, the Panel may draw adverse inferences regarding those facts. Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004 (February 16, 2000). Insofar as Respondent has defaulted, it is therefore appropriate to accept the facts asserted by Complainant and to draw adverse inferences of fact against Respondent. Nonetheless, Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) 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
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
This element consists of two parts: first, does Complainant have rights in a relevant mark and, second, is the Domain Name identical or confusingly similar to that mark.
It is uncontroverted that Complainant has established rights in the Marks (HIBBETT and HIBBETT SPORTS) based on its long-standing use of them on products and services that include retail stores selling sporting goods, clothing and footwear as well as its U.S. trademark registration for the mark HIBBETT SPORTS. Likewise, Complainant has established rights in its domain name <hibbett.com> and its parent company has established rights in its trade name Hibbett Sporting Goods. Complainant’s registration is entitled to a presumption of validity, which Respondent has not rebutted. Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261 (June 1, 2004).
Regarding likelihood of confusion, it is well settled that the use of lower case letter format and the addition of the gTLD “.com” are not significant in determining whether the Domain Name is identical or confusingly similar to the Marks. CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO Case No. D2000-0834 (September 4, 2000). Furthermore, the Domain Name <hibbettsportingoods.com> incorporates the dominant portion of Complainant’s Marks (“HIBBETT”) and its domain name < hibbett.com> and simply adds the descriptive term “sporting goods.” It is well established that a domain name is confusingly similar to a mark “when the domain name includes the trademark, or a confusingly similar approximation.” Nicole Kidman v. Zuccarini, WIPO Case No. D2000-1415 (January 23, 2001); see also, Rolex Watch U.S.A., Inc. v. Spiders Webs, Ltd., WIPO Case No. D2001-0398 (July 2, 2001) (the issue of confusing similarity should be evaluated solely based on a comparison of the complainant’s mark and the accused domain name). The use of the descriptive term “sporting goods” does not eliminate the confusing similarity. In fact in this case where the Respondent is offering direct links to competitors of Complainant as well as links to other sports equipment sites and Respondent even refers to Complainant and its products and services on its website, use of “sporting goods” actually serves to increase the likelihood of confusion. American Automobile Association, Inc. v. Nevis Domains LLC, WIPO Case No. 2006-0489 (June 13, 2006); Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795 (November 27, 2003); 1099 Pro, Inc. v. Convey Compliance Systems, Inc., WIPO Case No. D2003-0033 (April 1, 2003).
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
It is uncontested that Complainant has not licensed or otherwise authorized Respondent to use its Marks or domain name in connection with Respondent’s website. Insofar as Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name (Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261 (June 1, 2004)), this shifts the burden to Respondent to show by concrete evidence that it has rights or legitimate interests in the Domain Name. See, e.g,. Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000). Pursuant to paragraph 4(c) of the Policy, Respondent may satisfy its burden by demonstrating any of the following: (i) before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) 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.
Respondent has provided no evidence to carry its burden. For example, there is no evidence that Respondent has been commonly known by the Domain Name. Rather, it is undisputed that Complainant adopted and used the Marks long before Respondent registered the Domain Name. Furthermore, the evidence strongly suggests that by using a domain name that is confusingly similar to Complainant’s Marks, domain name and parent corporate name to sell products and services which overlap with those of Complainant, Respondent is not making a legitimate or fair use of the Domain Name without the intent to gain a commercial benefit and to divert customers from a competitor. Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261 (June 1, 2004); see also, Household International, Inc. v. Cyntom Enterprises, NAF Case No. FA0010000095784 (holding that Respondent could not have any legitimate interest in the domain name at issue where “[t]he only inference is that he knew perfectly well that he would create confusion, or was willfully blind to this fact”). It also appears that Respondent earns money from sponsors for click-throughs to their sites, thus further confirming the commercial use of the Domain Name. See, Southern Communications Services., Inc. d/b/a Southern LINC v. Henry Chan, WIPO Case No. D2004-0214 (May 10, 2004).
For the foregoing reasons, the Panel finds that Policy, paragraph 4(a)(ii) has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states nonexclusive circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that you have registered or you 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 the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you 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) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.
Respondent had both constructive and actual notice of Complainant and its Marks when registering the Domain Name because (1) Complainant’s HIBBETT SPORTS mark has been registered since May, 2003 and used in commerce since 1994, (2) Complainant’s HIBBETT mark has been used in commerce since 1980, and (3) Respondent refers to Complainant and the goods and services Complainant provides on the website that uses the Domain Name. In the face of these uncontested facts, Respondent adopted a domain name that is confusingly similar to the Marks and Complainant’s domain name that directs internet users to businesses that sell sporting goods and services which compete with Complainant’s goods and services. Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 (January 3, 2002) (holding that to have proceeded with registration of an infringing domain name knowing of Complainant’s rights in the mark and use of the mark demonstrates Respondent’s bad faith registration); Beemak Plastics, Inc. v. WestRep Group, WIPO Case No. D2001-1023 (October 5, 2001) (holding that the use of an identical mark in connection with the offering for sale of products that directly compete with the trademarked products of Complainant is evidence of bad faith). Accordingly, the Panel finds that Respondent registered the Domain Name in bad faith.
It is unrebutted that Respondent is using a confusingly similar domain name to Complainant’s Marks and domain name in connection with a website that offers links to products and services that compete with those of Complainant. On the record before it the Panel finds that Respondent is using the Domain Name to intentionally attract, for commercial gain (there are sponsored links on the website), Internet users to its website by creating a likelihood of confusion with the Marks and Complainant’s domain name as to the source, sponsorship, affiliation, or endorsement of the website. See, e.g., Deutsche Telekom AG v. Gary Seto, WIPO Case No. D2006-0690 (September 7, 2006) (“In particular, the Panel sees the sponsored links for businesses in the same field as that of the Complainant as an indication of bad faith. Even if the users who access the Respondent’s website may conclude that it is not what they were originally looking for, the Respondent has already succeeded in its purpose of using the Complainant’s mark to attract users for commercial gain . . .”). The Panel further finds that Respondent is using the Domain Name primarily for the purpose of diverting potential customers from Complainant’s business thus disrupting Complainant’s business.
As further evidence of Respondent’s bad faith use of the Domain Name, Complainant notified Respondent of its senior rights in the Marks and requested that Respondent cease use of the Domain Name and transfer it to Complainant, however Respondent took no action in response to Complainant’s concerns and continued to use the Domain Name.
For the foregoing reasons, the Panel finds that Policy, paragraph 4(a)(iii) has been satisfied.
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 <hibbettsportinggoods.com> be transferred to the Complainant.
Harrie R. Samaras
Dated: January 11, 2007