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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sports Holdings, Inc. v. MB
Case No. D2006-1262
1. The Parties
The Complainant is Sports Holdings, Inc., a Nevada corporation with its principal place of business located in Birmingham, Alabama, United States of America, represented by David M. Benck.
The Respondent is MB, located in Washington, District of Columbia, United States
2. The Domain Name and Registrar
The disputed domain name <hibbettsporting.com> (the “Domain Name”)
is registered with Go Daddy Software, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 29, 2006. On October 2, 2006, the Center transmitted by email to Go Daddy Software, Inc. a request for registrar verification in connection with the domain name at issue. On October 3, 2006, Go Daddy Software, Inc. 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 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 18, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was November 7, 2006. The Respondent did not submit a response. Accordingly, the Center notified the Respondent’s default on November 10, 2006.
The Center appointed Maxim H. Waldbaum as the sole
panelist in this matter on November 14, 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 engaged in the business of selling sporting goods under the names HIBBETT and HIBBETT SPORTS. Respondent registered the domain name on November 27, 2005.
A series of emails were exchanged between Complainant
and Respondent in August and September 2006 in which Complainant requested that
Respondent transfer the Domain Name to it. Respondent first claimed ignorance,
but later sought guidance from Complainant on how to transfer the Domain Dame.
5. Parties’ Contentions
Complainant contends that:
Complainant has been continuously using the HIBBETT and HIBBETT SPORTS trademarks in connection with the operation of full line sporting goods stores since 1980 and 1994, respectively.
Complainant’s principal place of business is in Birmingham, Alabama, United States of America, but Complainant operates over six hundred (600) stores located in twenty-three (23) US states.
Complainant’s official corporate website uses the domain name <www.hibbett.com>.
Respondent registered the disputed domain name <www.hibbettsporting.com> on November 27, 2005.
Complainant has no relationship with Respondent and has never authorized Respondent to use either the HIBBETT SPORTS trademark or HIBBETT trademark.
Respondent’s website associated with the Domain Name (the “Website”) is a commercial search engine with direct links to competitors of Complainant as well as links to other sports equipment sites.
Respondent is using Complainant’s long-established reputation and goodwill to lure web users to its Website and then divert them to Complainant’s competitors.
Respondent is profiting from the Internet traffic it is diverting to websites other than Complainant’s and therefore is not making a bona fide offering of its own goods or services.
Respondent has offered on two (2) occasions to transfer ownership of the domain to Complainant, however has not made any good faith efforts to do so and has repeatedly ignored the three (3) transfer requests initiated by Complainant.
Respondent’s Website specifically offers the web user a myriad of click-through links to direct competitors of and similar businesses to Complainant.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The domain names are 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 names; and
(iii) The domain names have been registered and are being used in bad faith.
Rule 15(a) of the Rules provides that the Panel shall
decide a complaint in accordance with the Policy, the Rules and “any rules
and principles of law that it deems applicable”. See Institut Straumann
AG v. Core-Vent Corporation, WIPO Case
No. D2000-0404 (July 1, 2000). Since both Complainant and Respondent are
based in the United States of America, the Panel finds it appropriate to make
reference to United States law. In referring to authorities, the Panel is also
conscious that it is not necessarily appropriate to use the same criteria when
comparing a domain name as are used when comparing two trademarks.
A. Identical or Confusingly Similar
To satisfy this element, Complainant must establish
it has rights to a trademark or service mark, and that the disputed domain names
are identical or confusingly similar to such mark. See Policy, paragraph 4(a)(i).
As established by prior UDRP decisions, the test of confusing similarity is
“confined to a consideration of the disputed domain name and the trademark.”
America Online, Inc. v. Anson Chan, WIPO
Case No. D2001-0004 (February 22, 2001).
Complainant has shown that, since as early as 1980, it has owned valid trademark registrations for trademarks consisting of or incorporating HIBBETT in connection with its business of selling sporting equipment.
The Domain Name at issue incorporates Complainant’s
HIBBETT Mark in its entirety. “[T]he fact that a domain name wholly incorporates
a complainant’s registered mark is sufficient to establish identity or
confusing similarity for purposes of the Policy. . . .” Oki Data Americas,
Inc. v. ASD, Inc., WIPO Case No. D2001-0903
(November 6, 2001).
Further, the addition of the word “sporting” to the Complainant’s HIBBETT Mark does not absolve the Domain Name of its confusingly similar nature. “It is a general rule that likelihood of confusion is not avoided between otherwise confusingly similar marks merely by adding or deleting a house mark or matter that is descriptive or suggestive of the named goods or services.” Trademark Manual of Examination Procedures, Ch. 1207.01(b)(iii). Indeed, because Complainant is engaged in the sale of sporting goods, the addition of the descriptive moniker only adds to the confusingly similar nature of the Domain Name.
Respondent, in defaulting, does not dispute that the Domain Name is confusingly similar to the HIBBETT Mark.
The Panel thus finds that Complainant has rights to the HIBBETT Mark and that the Domain Name is confusingly similar to Complainant’s Mark. Complainant has thus satisfied its burden of proof under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the Domain Name. According to the Policy, a Respondent may demonstrate that it has rights or legitimate interests in the disputed domain name by showing that (i) prior to the Dispute, the Respondent had used or prepared to use the domain name in connection with the bona fide offering of goods or services; (ii) that the Respondent has been commonly known by the domain name; or (iii) that the Respondent was “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(c) of the Policy.
Here, it is clear that the Respondent has no rights
or legitimate interests in the Domain Name. First, Complainant has shown that
the domain name is simply “parked” with the Registrar, in that the
Website merely links to other commercial websites and does not itself offer
any original content or goods or services.1
The use of a domain name that merely offers links to other websites is not a
bona fide offering of goods and services pursuant to paragraph 4(c)(i)
of the Policy. See e.g., Southern Communications Services, Inc. d/b/a Southern
LINC v. Henry Chan, WIPO Case No. D2004-0214
(May 10, 2004). Respondent, in defaulting, has not disputed Complainant’s
contention in this regard.
Additionally, the evidence provided by Complainant indicates that Respondent MB is an individual or entity operating under the name Maisha B. Nothing in the evidence indicates that Respondent has been commonly known by the Domain Name. Respondent, in defaulting, has not disputed Complainant’s evidence in this regard.
The Panel thus holds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the Domain Name, and that Respondent, in defaulting, has failed to rebut such showing. The Panel accordingly finds that Complainant has thus satisfied its burden of proof under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Policy outlines several circumstances which serve to indicate that a domain name was registered and used in bad faith, including that the respondent intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or of a product or service on the respondent’s website. See paragraph 4(b)(iv) of the Policy.
Complainant has shown that Respondent has wholly incorporated Complainant’s HIBBET Mark into the Domain Name, and that Respondent’s website serves to direct Internet users to other commercial websites offering goods and services in competition with Complainant.
The Panel finds that Complainant has thus made a sufficient
showing that Respondent’s registration and use of the Domain Name is an
intentional attempt to attract Internet users to Respondent’s website
by creating a likelihood of confusion with Complainant’s Mark as to source,
sponsorship, or affiliation with Respondent’s Website. Pursuant to paragraph 4(b)(iv)
of the Policy, such use is evidence of bad faith registration and use of the
Domain Name. Respondent, in defaulting, has not responded to Complainant’s
contentions in this regard. Complainant’s contentions are therefore deemed
undisputed, and Complainant’s burden of proof under paragraph 4(a)(iii)
of the Policy is 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 <hibbettsporting.com> be transferred to the Complainant.
Maxim H. Waldbaum
Dated: November 28, 2006
1 The Panel notes that the Registrar offers a CashParking program, which for a monthly fee, allows domain name registrants to share in the profits generated by the click-through advertising from parked websites. See https://www.godaddy.com/gdshop/park/cp_details.asp. Complainant has not provided any evidence that Respondent is enrolled in this program or otherwise profits economically from the Website.