WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Sportsmanís Guide, Inc. v. Damir Kruzicevic
Case No. D2002-1127
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 Damir Kruzicevic of Vukovarska 43, Split, 21000, Hrvatska, Croatia.
2. The Domain Name and Registrar
The disputed domain name <sportsmanguide.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 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").
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. 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.
3.5. 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 on-line 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, covering 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, as follows:
(a) The domain name is confusingly similar to the Complainantís registered mark THE SPORTSMANíS GUIDE, which has been used by the Complainant since 1977;
(b) The Respondent has no rights or legitimate interests in respect of the domain name <sportsmanguide .com>;
(c) The domain name was registered and is being used in bad faith;
(d) The domain name consists of nothing more than a slight misspelling of the primary word of the Complainantís registered mark;
(e) The elimination of an apostrophe and a "The" from the Complainantís mark doesnít make the domain name dissimilar from the one in which the Complainant has rights;
(f) The Complainant has never assigned, sold, licensed or transferred any rights to the Respondent;
(g) The Respondent is not commonly known by the domain name and is using the disputed website for commercial gain.
5.2 The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
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 disputed domain name and neither has the Complainant licensed or ever granted the Respondent permission to use its mark. Complainant operates an on-line catalog for selling products and to meet this end uses the help of affiliate programs to boost its sales. The affiliate programs are managed by third parties, who in turn receive a fee based on the merchandise sold to consumers who reach the Complainantís on-line catalog by passing through such sites.
6.3. The Respondent was an affiliate with Performics Inc., one of the third parties that manages Complainantís affiliate programs. Under the agreement with Performics, Respondent was to receive compensation for each of the Complainantís sales made to a consumer who reached the Complainantís website by passing through <sportsmanguide.com> i.e. the Respondentís website. The webpage of the disputed domain name resolves to a webpage that features a number of links to other sites. In the middle of the webpage is the advertisement for an on-line casino. In the past the space was taken up by an ad for the Complainantís website and clicking on it would lead the consumer to the Complainantís on-line catalog and website. The advertisement was removed when the Complainant contacted Performics and asked them to de-activate the account of the Respondent. The Respondent had earned close to U.S. dollars 15,000 through the Performics affiliate program. The Performics affiliate program does not give the Respondent a right to use the Complainantís service or trademark. Such use of a domain name that infringes on the Complainantís mark to redirect Internet traffic is not legitimate use, as held in The Toronto-Dominion Bank v. Boris Karpachev, WIPO Case No. D2000-1571 and AltaVista v. Saeid Yomtobian, WIPO Case No. D2000-0937.
6.4. The Respondentís website has a variety of links, and clicking on these links accesses search results provided by the "roar.com" search engine. "Roar.com" operates a pay-for-performance search engine and its customers pay a fee to have their website included in the search results; the more a customer pays the higher his site is ranked. "Roar.com" also offers a program wherein participants place search tools on their own website. A program participant receives compensation every time an Internet user links to one of "roar.com" customers by utilizing the search tools located on the participantís site.
6.5. Many "roar.com" customers operate stores selling the same types of products as the Complainant and some of the keywords on the Respondentís website thus link to results that feature websites that are in direct competition with the Complainant. Therefore it is clear that the Respondent uses the disputed domain name to divert Internet traffic to his own website for commercial gain, as held in AltaVista Company v. Andrew Krotov, WIPO Case No. D2000-1091 wherein the finding was that use of a domain name to direct users to an unrelated website does not constitute a legitimate interest in the domain name. Thus it is evident that the Respondent has no right or legitimate interest in the domain name.
C. Registration and Use in Bad Faith
6.6. 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 domain name is not only identical but also confusingly similar to the mark in which the Complainant has rights. The Internet user when searching for the Complainantís website can due to a minor typographical error reach the Respondentís website. Respondentís website contained a link to the Complainantís website and this is evidence that the Respondent was trying to sell the Complainantís products to his consumers for his commercial gain. The Respondentís website contains a directory of keywords that links to other sites, some of which are in direct competition with the Complainant and this is sufficient evidence of bad faith as held in Ltd. Commodities, Inc. v. CostNet Domain Manager, WIPO Case No. D2002-0031.
6.7. The Respondent has been involved in a lot of UDRP disputes, Patricia Ford and Online Creations Inc. v. Damir Kruzicevic, WIPO Case No. D2001-0059 (involving a domain name similar to former Playboy playmate Patricia Ford); Global Media Group, Ltd. v. Damir Kruzicevic, FA 96558 (involving a domain name similar to the OUI MAGAZINE trademark); Oly Holigan, L.P. v. Damir Kruzicevic, FA 97353 (NAF) (involving a domain name similar to the MICHAEL HOLIGAN trademark); V&S Vin & Spirit Aktiebolag v. Damir Kruzicevic, FA 98459 (NAF) (involving a domain name similar to the ABSOLUT trademark); Mountain Gear, Inc. v. Damir Kruzicevic, CPR019.
6.8 The Respondentís conduct of registering multiple misspellings of famous marks is ample evidence of bad faith, as held in Armstrong Holdings, Inc. v. JAZ Associates, FA 95234 (NAF) and America Online v. iDomain Names.com, FA 93766 (NAF). All these above reasons are ample evidence that the domain name has been registered and is being used 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