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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sports Holdings, Inc. v. Hoffman Hibbett
Case No. D2007-0283
1. The Parties
The Complainant is Sports Holdings, Inc., Birmingham, Alabama, United States of America, represented by David Benck, United States of America.
The Respondent is Hoffman Hibbett, Saratoga, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <hibbett.net> is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed by email with the WIPO Arbitration and Mediation Center (the “Center”) on February 9, 2007 with the hard copies received on February 26, 2007. On February 28, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On February 28, 2007, Go Daddy Software 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 8, 2007. 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 March 9, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 29, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 2, 2007.
The Center appointed Dennis A. Foster as the sole panelist in this matter on April 19, 2007. 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
An American company, the Complainant has been in the sporting goods business for more than a decade and owns a valid Unites States of America trademark for the name, “HIBBETT SPORTS” (Reg. No. 2717584, May 20, 2003).
The Respondent is listed as the registrant of the disputed domain name, and the record of registration was created on November 5, 2003. The Respondent’s surname is listed as “Hibbett.”
5. Parties’ Contentions
The Complainant has used the trademarks HIBBETT and HIBBETT SPORTS in commerce since, respectively, 1980 and 1994. The Complainant has registered the latter, and has applied for registration of the former, in the United States of America.
With its principal place of business located in Birmingham, Alabama, the Complainant operates over 600 stores in 23 states of the United States of America.
The Complainant owns the domain name <hibbett.com> for use as its corporate website.
The Respondent registered the disputed domain name <hibbett.net> on November 5, 2003.
The disputed domain name is identical to the Complainant’s trademark.
The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has no relationship with the Respondent and has not authorized the Respondent to use either of its marks.
The website located at the disputed domain name is a search engine linked to competitors of the Complainant, and the Respondent is using the reputation and goodwill attached to the Complainant’s trademarks as a lure for diversion to competing websites.
The diversion by the Respondent of Internet users to competing websites is not a bona fide offering of goods or services.
The domain name at issue was registered and is being used in bad faith as a click-through website to websites of the Complainant’s direct competitors and similar businesses. The Respondent’s use of the disputed domain name for commercial purposes belies its claim that the name was registered for “personal use only.”
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To prevail in this administrative proceeding pursuant to Policy paragraphs 4(a)(i-iii) and obtain possession of the disputed domain name <hibbett.net>, the Complainant must establish the following:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name was registered and is being used by the Respondent in bad faith.
A. Identical or Confusingly Similar
The Complainant has submitted to the Panel evidence of its United States Patent and Trademark Office registration for the mark, HIBBETT SPORTS (Annex C). Such registration creates a presumption that the Complainant has valid rights in that mark. Based on that presumption and other uncontested assertions made by the Complainant as to its long and extensive business operations under that trademark, the Panel concludes that the Complainant does indeed possess those rights. See Reebok International Limited v. Shaydon Santos, NAF Case No. FA565685 (December 21, 2005) (where the panel found that the complainant’s United States of America trademark registration for the “RBK” mark was adequate to establish its rights in that mark); and VICORP Restaurants, Inc. v. Anastasios Triantafillos, NAF Case No. FA485933 (July 14, 2005). The Complainant has also filed an application for a similar trademark in the name “HIBBETT” (see Annex C), but, as explained below, the Panel finds it unnecessary to analyze the Complainant’s rights in that abbreviated version of its registered mark.
Having concurred with the Complainant’s contention as to its rights in the trademark, “HIBBETT SPORTS,” the Panel must determine whether the disputed domain name, <hibbett.net>, is identical or confusingly similar to the mark. Certainly, there is no identity since the domain name does not include the descriptive English word “sports.” However, the distinctive and most defining element of the Complainant’s trademark is its first word “Hibbett,” which is not a common or descriptive English word. In the Panel’s judgement, an Internet user searching for products from a company named “Hibbett Sports” would reasonably and logically infer a connection between that company and a website located at “www.hibbett.net”. Prior UDRP panels have found confusing similarity between trademarks and domain names whose only difference is the omission in the latter of a modifying descriptive word. See World Triathlon Corporation v. ironman, NAF Case No. FA600972 (January 11, 2006) (where the panel held the domain name <ironman.com> to be confusingly similar to the trademark “IRONMANLIVE.COM”); and Archer-Daniels-Midland Company v. Robyn Bodine (a.k.a. D.L. Tate, Donnie Tate),
WIPO Case No. D2002-0482 (July 16, 2002) (where the confusing similarity between <hickorypointbank.com> and “Hickory Point Bank & Trust” was upheld by the panel, which stated, “[j]ust as the addition of common words to a protected mark will not save a challenged domain name, so deletion of a nonessential portion of the mark does not vitiate the likelihood of confusion.”). As a result, the Panel finds in this case that the disputed domain name is confusingly similar to the Complainant’s trademark.
Therefore, the Panel rules that the Complainant has successfully shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. Accordingly, it is not necessary for the Panel to make a finding in the present proceedings in relation to the Complainant’s contentions regarding the HIBBETT Mark.
B. Rights or Legitimate Interests
The Policy, in paragraph 4(a)(ii), places the onus upon the Complainant to prove that the Respondent does not have rights or legitimate interests in the disputed domain name. However, as this is a negative proposition, many prior panels have concluded that it is sufficient for a complainant in a UDRP proceeding to establish merely a prima facie case with respect to a respondent’s lack of rights and legitimate interests in a domain name in order to shift the burden to that respondent to demonstrate otherwise. See Citizens Financial Group, Inc. v. Ron Alvarado, NAF Case No. FA897530 (March 8, 2007); and Do The Hustle, LLC v. Tropic Web,
WIPO Case No. D2000-0624 (August 21, 2000) (where the Panel, which found for the respondent regarding the domain names <pollyester.com> and <pollyesters.com>, stated “…once the complainant has made a prima facie showing, the burden of production shifts to the respondent to show by providing concrete evidence that it has rights to or legitimate interest[s] in the domain name at issue.”). In the present case, the Complainant has presented such a prima facie case by furnishing conclusive evidence as to its valid trademark and asserting that it has never authorized the Respondent’s use of that mark.
To meet the shift in the burden of production, paragraph 4(c) of the Policy suggests three ways in which a respondent may show its rights or legitimate interests in a disputed domain name. Most germane to this case, paragraph 4(c)(ii) states that the Respondent may prevail if the evidence shows that “[the Respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the Respondent has] acquired no trademark or service mark rights.”
Though the Respondent has chosen not to file a Response, simple inspection of the record reveals that Respondent’s listed surname is “Hibbett” – a name that is identical to the domain name in question. Although conceivable that a false or made up name could be given in a whois database, the Complainant has not denied or sought to disprove that the Respondent’s name is as listed in the Whois. In the experience of the Panel, an individual is commonly known by his or her surname; and thus the record in this case supplies the Respondent with evidence sufficient to satisfy its burden of production. See Billerbeck Schweiz AG v. Peter Billerbeck,
WIPO Case No. D2001-0825 (August 28, 2001) (where the panel denied a transfer of the domain name <billerbeck.com> and opined that, “[t]he use of one’s own surname in a domain name corresponds to a legitimate customary practice and is, as a rule, sufficient evidence of a legitimate right or interest in the domain name.”). See also, Mattel, Inc. v. Gopi Mattel, NAF Case No. FA372847 (February 15, 2005); Perfetti Van Melle S.p.A. v. Pi-Effe S.a.s.,
WIPO Case No. D2003-0067 (April 1, 2003); and G. A. Modefine S.A. v. A.R. Mani,
WIPO Case No. D2001-0537 (July 20, 2001).
The Respondent having thus discharged its burden, it falls upon the Complainant again to make its case on this point. Tellingly, the Complainant does not address this issue directly. The Complainant is aware of the issue since it included in the Complaint an e-mail from Lori Hibbett – who may very well be someone related to the Respondent – in which she presents her last name as a rationale for registration of the disputed domain name (Annex E). The Complainant’s only reference to this e-mail is to argue that the Respondent “fraudulently claimed to have registered the disputed domain name for ‘personal use only’…” However, while the Complainant supplied the Panel with evidence that the disputed domain name resolves to a Go Daddy parking page where it is apparently used for commercial and not personal use (Annex D), the Complainant has not furnished any evidence to the Panel as to the use of the domain name during the more than three years between its registration and the Complainant’s filing of this action.
Moreover, the Complainant’s contention is insufficient in this case because it relates more directly to an examination of bad faith use of the disputed domain name than to the examination of rights and legitimate interests. In making this distinction, the Panel is mindful of A.R. Mani, supra, where the panel, in denying a transfer of the domain name <armani.com>, noted that the chief argument of the complainant in that case “…wrongly imports into the test for legitimate interest an element of confusion or bad faith.” Moreover, in this case the Complainant does not assert that the Respondent altered its surname recently, or that the Respondent is not commonly known by that name (see again A.R. Mani, supra). Therefore, given the absence of persuasive argument or evidence to the contrary submitted by the Complainant, the Panel must reasonably conclude that the Respondent is commonly known by his surname which matches exactly the disputed domain name.
Accordingly, the Panel finds that the Complainant has on balance failed to sustain its burden in demonstrating that the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Because the Panel has determined that the Complainant has not succeeded as required under paragraph 4(a)(ii) of the Policy, the Panel will not rule as to whether the Respondent registered and is using the disputed domain name in bad faith.
For all the foregoing reasons, the Complaint is denied.
Dennis A. Foster
Dated: May 3, 2007