WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sports Holdings Inc. v. “Texas International Property Associates”/ “Sports Holdings Inc.”
Case No. D2007-0430
1. The Parties
The Complainant is Sports Holdings Inc., Birmingham, Alabama, United States of America, represented by An internal representative.
The Respondent is Texas International Property Associates, Dallas, Texas, United States of America, represented by The Law Offices of Gary Wayne Tucker, United States of America.
2. The Domain Names and Registrar
The following disputed domain names are registered with Compana LLC:
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2007. On March 22, 2007, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the domain names at issue. On April 13, 2007, Compana LLC, transmitted by email to the Center its verification response confirming that Texas International Property Associates
is listed as the registrant for four (4) of the Domain Names, namely , ; ; and , and providing the contact details for the administrative and technical contact. The Registrar, Compana LLC further stated that the remaining fourteen (14) Domain Names are registered with Complainant, “Sports Holdings Inc.”
Due to this notification that fourteen (14) of the Domain Names are registered in the name of Complainant, the Center on April 17, 2007, requested that the Complainant 1) confirm whether it has control over the Domain Names at issue that are registered in its name and if so 2) amend its Complaint by April 22, 2007, to show the Respondent holding only four (4) domain names. In response to this request by the Center, the Complainant in an April 17, 2007 e-mail to the Center disputed the Registrar’s contentions. Complainant stated that although changes were made to the contact information in the Registrar’s database, no control of any of the Domain Names in Complainant’s name was ever given to Complainant. Complainant refused to amend the Complaint to show only 4 domain names at issue because doing so would “reflect the misrepresentations of the Registrar.”
On May 1, 2007, 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”) but the Center left for determination by the Panel whether or not the domain names specified in the Complaint were registered by the Respondent.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Complaint, and the proceedings commenced on May 2, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 22, 2007. The Response was filed with the Center on May 23, 2007.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on June 4, 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
Complainant has been in the sporting goods business for more than a decade and owns two valid United States trademark registrations; one for the mark HIBBETT SPORTS, Registration No. 2717584 registered on May 20, 2003 and one for the mark SPORTS ADDITIONS, Registration No. 1767761 registered on April 27, 1993.
The domain names were registered on the following dates and according to the Registrar’s confirmation the listed registrant of record for each is currently as follows:
Domain Name
Date Registered
Current listed Registrant per Registrar Confirmation
11/15/2005
Texas International Property Associates
05/30/2006
Sport Holdings Inc.
11/23/2005
Sport Holdings Inc.
10/18/2005
Sport Holdings Inc.
12/20/2005
Sport Holdings Inc.
1/30/2006
Sport Holdings Inc.
8/27/2006
Sport Holdings Inc.
11/2/2005
Sport Holdings Inc.
12/27/2004
Sport Holdings Inc.
11/23/2005
Sport Holdings Inc.
12/6/2005
Sport Holdings Inc.
11/2/2005
Sport Holdings Inc.
4/22/2005
Texas International Property Associates
11/23/2005
Texas International Property Associates
6/3/2005
Texas International Property Associates
12/13/2005
Sport Holdings Inc.
12/20/2005
Sport Holdings Inc.
10/23/2005
Sport Holdings Inc.
Respondent states that it will transfer the and domain names to Complainant pursuant to Complainant’s request, but that it will not transfer the and the domain names.
5. Parties’ Contentions
A. Complainant
Complainant submits that Respondent updated its contact information in Registrar, Compana LLC d/b/a ’s Whois database, to reflect that of Complainant but adds that Complainant has no ownership or control over these domain names.
With respect to paragraph 4(a)(i) of the Policy 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 has been continuously using the SPORTS ADDITIONS trademark in connection with the operation of full line sporting goods stores since 1990.
Complainant’s official corporate website uses the domain name .
Respondent registered the disputed domain names on the following dates:
1
11/15/2005
2
5/30/2006
3
11/23/2005
4
10/18/2005
5
12/20/2005
6
1/30/2006
7
8/27/2006
8
11/2/2005
9
12/27/2004
10
11/23/2005
11
12/6/2005
12
11/2/2005
13
hibitsport. com
4/22/2005
14
11/23/2005
15
6/3/2005
16
12/13/2005
17
12/20/2005
18
10/23/2005
The disputed domain names use Complainant’s trademarks with varying typographical errors and additional words related to Complainant’s primary business.
Complainant has no relationship with Respondent and has never authorized Respondent to use either the SPORTS ADDITIONS or HIBBETT SPORTS trademarks or HIBBETT trade name.
With respect to paragraph 4(a)(ii) of the Policy Complainant contends that:
Respondent’s websites at the disputed domain names are commercial search engines with links to other sports equipment sites.
Respondent is using Complainant’s long established reputation and goodwill to lure web users to its websites at the disputed domain names and then divert them to Complainant’s competitors.
Upon information and belief, 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.
Complainant submits that Respondent recognizes that it has no rights or legitimate interests in the disputed domain names as shown by its various offers to transfer sixteen (16) of the disputed domain names; though no transfer of ownership or control has actually transpired.
With respect to paragraph 4(a)(iii) of the Policy Complainant contends that:
Respondent’s websites at the disputed domain names specifically offer the web user click-through links to direct competitors of and similar businesses to Complainant.
Complainant requested that Respondent transfer all of the 18 Domain Names to Complainant.
On February 8, 2007, Compana LLC d/b/a ’s WHOIS database reflected an update with Complainant’s contact information, albeit not Complainant’s name, for , , and .
On February 27, 2007, Compana LLC d/b/a ’s WHOIS database reflected an update with Complainant’s contact information, albeit not Complainant’s name, for , , , , , and .
On February 28, 2007, Compana LLC d/b/a ’s WHOIS database reflected an update with Complainant’s contact information, albeit not Complainant’s name, for .
B. Respondent
The following fourteen (14) Domain Names currently reflect the Complainant’s information as to the Registrant, Administrative and Technical Contacts, as well as the Complainant’s nameservers. As such, Respondent contends that these domains should not be part of this proceeding:
Respondent states that Complainant alleges that the transfer of the above domain names was a “sham” transfer as it has no control over these domains. Respondent has consulted with the Registrar who informed the Respondent that any changes, updates, or requests to transfer to another Registrar concerning “the 14” domains must come from the email account associated with these domains, [name]@. As Respondent has no access to this email account, it thus has no control over these 14 domains.
As to the two domains and , Respondent states:
Respondent has already offered to transfer those names and agrees to the relief requested by the Complainant as to those domains only and will, upon order of the Panel, do so. This is not an admission to the three elements of 4(a) of the policy but rather an offer of “unilateral consent to transfer” as prior Panels have deemed it.
In sum, Respondent contends that there are only two (2) Domain Names in dispute: and .
With respect to paragraph 4(a)(i) of the Policy, Respondent contends that:
The domain name is generic and/or descriptive and is not identical to any mark in which Complainant has enforceable rights under the policy.
Hibbats is a surname.
The slightly altered form of the word “Hibbat” is a part of “Hibbat Zion” which was a movement for the Jewish return to Zion.
“Hibbat” itself means “love of.”
Anyone looking for Hibbetts Sports will not be typing in the word “hibbats” and thus there can be no confusion between the two.
Complainant’s desire for the name is similar to the overreaching it attempted in Sports Holdings, Inc. v. Hoffman Hibbett, WIPO Case No. D2007-0283 (May 3, 2007) wherein it was denied the right to the domain even though the Respondent failed to file a Response and where the Panel used the word “tellingly” to note that the Complainant did not address the Rights or Legitimate Interest portion of the Complaint directly.
With respect to paragraph 4(a)(i) of the Policy, Respondent contends that:
The domain name is generic and/or descriptive and is not identical to any mark in which Complaint has enforceable rights under the Policy. A Google search for the phrase “sport addition” returns numerous results and the Complainant’s stores are not listed among the first two pages. While Google search results are not definitive, they can be quite instructive and have been used in UDRP proceedings for this and related purposes.
With respect to paragraph 4(a)(ii) of the Policy, Respondent contends that:
The links in question are provided pursuant to Google’s terms and are triggered by search requests entered by computer users.
There is no intent to target Complainant.
Respondent has no control over what terms advertisers bid on at Google and what terms appear on its website.
Respondent submits that Panels have recognized that the domain name holder is not responsible for the potentially offending content where they have contracts with third parties, such as Google or Yahoo, to control that content.
Respondent may fairly use descriptive or generic terms as a commercial domain name, regardless of whether they are federally registered.
Respondent registered and began using the subject domain name for similar purposes, long before receiving notice of the present dispute.
Respondent registered this disputed domain name because it believed it was a descriptive term to which no party had exclusive rights.
Respondent contends that the principal that the mere ownership of a common term domain should, in and of itself, establish the owner’s rights and legitimate interest has been recognized by several UDRP panels.
With respect to paragraph 4(a)(iii) of the Policy, Respondent contends that:
Having demonstrated that Complainant’s alleged mark is generic and/or merely descriptive it must follow that Respondent did not register, and is not using, the disputed domain name in bad faith.
Respondent is in the business of providing locator services.
Respondent is not attempting to pass itself off as Complainant.
Respondent has created a good faith business that is valuable to Internet users seeking to locate providers of goods and services, through reference to common, well-known, generic, descriptive, and geographically descriptive terms.
It is well established that, where a mark is a common term with substantial third party use, as it is here, the complainant must proffer evidence that demonstrates that respondent has specifically intended to confuse consumers seeking out complainant.
Respondent had no actual knowledge of Complainants mark and as panels have recognized the mere registration without actual knowledge does not impute a finding of bad faith.
There is no evidence of bad faith for registering a commonly used combination of words and the claim must be denied.
Respondent did not register the domain name to sell. Accordingly, bad faith is not established the Policy.
6. Discussion and Findings
A. Respondent Identity
In relation to the matter of registrant and Respondent identity, the Panel notes that according to Whois printouts dated March 3, 2007 attached to the Complaint at the time of filing, many of the disputed domain names were listed as registered in the name of "Texas International Property". A number of the disputed domain names were also listed in Whois in the name of "NA". It would appear that counsel for the named Respondent, in a letter to the Complainant of January 22, 2007, acknowledged rights in the disputed domain names, and offered to transfer a number of these to the Complainant, requesting certain details and contact information for that purpose . At a subsequent point, on or before May 1, 2007 (according to Whois Case File records printed on that date), it would appear that the listed registrant data for a number of the disputed domain names was changed to reflect the name and contact details of the Complainant, “Sports Holdings Inc”. The Respondent claims to have transferred the registration of a number of the disputed domain names to the Complainant, while the Complainant denies having obtained any control. To this extent, as "control" of the domain names must presumably reside with one or other of the parties, it would not be unreasonable to assume that it remains with the Respondent.
However this may be, the Panel is satisfied that "Texas International Property" was appropriately identified as a Respondent at the time the Complaint was filed, and that it remains an appropriate Respondent in relation the disputed domain names.
B. Policy Elements
To justify a domain name transfer, the Policy requires that Complainant prove:
(i) the domain name 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 was registered and is being used in bad faith.
C. Consent
In addition, the Panel may in appropriate cases need to consider whether a party consents to a transfer:
“Because Respondent has consented to the relief requested by Complainant, it is not necessary to review the facts supporting the claim. I am left to decide the appropriate procedure to conclude the case in a situation not directly addressed by the Rules. Several provisions provide guidance. Rule 10(a) gives the panel the discretion to conduct the proceeding in such manner as it deems appropriate under the Policy and the Rules. Rule 10(c) requires the Panel to “ensure that the proceeding takes place with due expedition.” Rule 12 permits the Panel to require further statements from the parties. Rule 17 requires the Panel to terminate the proceeding when the parties have agreed to a settlement.
Here, although Respondent has consented to the requested relief, the parties have not agreed to a formal settlement and terminating the proceeding would not effect the parties intent. Under Rules 10 and 12, the Panel appears to have authority to delay the decision and permit the parties time to submit confirmation that they have agreed to a settlement. That procedure, however, would delay this proceeding and impose unnecessary cost on both the parties and WIPO. Under the circumstances, I believe the better course is to enter an order granting the relief requested by the Complainant so that the transfer may occur without further delay.
Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207
In this case, the Respondent has consented expressly or implicitly to the transfer of 16 of the 18 domain names. The Panel notes, however, that it follows Williams-Sonoma, in part, because of its finding that Complainant has established (as explained below) a prima facie case justifying transfer of all the Domain Names at issue even without consent.
D. Respondent’s Consent to Transfer
With respect to and , Respondent expresslyconsents to the transfer to Complainant of these two (2) disputed domain names.
Respondent has also implicitly consented to the transfer of the following fourteen (14) disputed domain names:
The Respondent’s consent is “implicit” in its assertion that it has already transferred these names to Complainant. The Panel finds from reviewing current Whois records and from information provided to the Center by the Registrar, Compana LLC, that the above fourteen (14) Domain Names are currently listed as registered in the name of Complainant. However, Complainant alleges that complete control of these domain names has not been transferred. The dispute therefore appears to be in part a disagreement about whether Respondent’s attempted transfer has been effective. To the extent any further action is required to effect complete the transfer of all right, title and interest, including all control rights, as to these Domain Names, such further action is hereby so ordered, based on the Panel’s finding below.
As noted, the Respondent has not consented to the transfer of the domain names and .
E. Identical or Confusingly Similar
Complainant is the owner of United States Trademark SPORTS ADDITIONS, Registration No. 1767761 registered on April 27, 1993, which Complainant states has been used continuously since 1990 with the operation of a full line of sporting goods.
The Panel finds that Complainant has rights in the trademark SPORTS ADDITIONS.
As to whether the Domain Name is identical or confusingly similar to Complainant’s registered trademark, the Panel finds that the Domain Name at issue is confusingly similar to Complainant’s trademark because it incorporates Complainant’s entire trademark except for the final letter “s” in the words “sport” and “addition”. The mere deletion of the two letters “s” in the disputed Domain Name is insufficient to avoid a finding of confusing similarity to Complainant’s trademark. See for e.g. i2 Technologies Inc v. Richard Alexander Smith, WIPO Case No. D2001-0164.
Further, the addition of the generic top-level domain “.com” is without legal significance when comparing the domain name at issue to Complainant’s registered trademark. The Forward Association, Inc., v. Enterprises Unlimited, NAF Claim No. FA0008000095491 (“[N]either the beginning of the URL (http://www.), nor the TLD (.com) have any source indicating significance”.)
The Panel finds the disputed domain name is confusingly similar to the Complainant’s trademark.
Complainant is the owner of HIBBETT common law trademark which allegedly has been in use in connection with the operation of full line sporting goods stores since 1980. Complainant further owns United States Trademark, HIBBETT SPORTS, Registration No. 2717584, registered on May 20, 2003, which Complainant states has been used continuously since 1994. The Panel finds that Complainant has rights in the trademarks HIBBETT and HIBBETT SPORTS.
As to whether the Domain Name is identical or confusingly similar to Complainant’s common law and registered trademarks, the Panel finds that the Domain Name at issue is confusingly similar to Complainant’s trademarks because although it differs in spelling from the Complainant’s established trademark rights in the HIBBETT and HIBBETT SPORTS marks it is phonetically identical to the HIBBETT mark except for the plural form of the disputed domain name. See Microsoft Corporation v. Mike Rushton, WIPO Case No. D2004-0123. (The word “mikerosoft”, in the disputed domain name was found to be phonetically identical to Complainant’s MICROSOFT trademark.) As seen above in the discussion of the domain name, the generic top-level domain “.com” is without legal significance when comparing the domain name at issue to Complainant’s registered trademark.
The Panel finds the disputed domain name is confusingly similar to the Complainant’s trademark.
With regard to the following sixteen (16) disputed domain names:
Each of the above domain names is either a misspelling of Complainant’s mark or contains Complainant’s mark plus additional descriptive wording. As such, the Panel finds that each of the above domain names is confusingly similar to Complainant’s HIBBETT common law trademark or to Complainant’s HIBBETT SPORTS registered trademark.
F. Rights or Legitimate Interests
In order for the Respondent to demonstrate rights or legitimate interests in the Domain Names, it must show:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
A complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 (, Transfer); Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110 (, Transfer).
Here, the Respondent has no connection or affiliation with Complainant and has not received any license or consent to use the marks. Further, Respondent is not commonly known by or has acquired rights in the domain name.
Respondent is not using the Domain Names in connection with a bona fide offering of goods or services. Respondent uses the disputed domain names to divert Internet users who are interested in Complainant or its products to websites of Complainant’s competitors.
Respondent is not making a legitimate noncommercial or fair use of the Domain Names without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel finds that Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the disputed Domain Names and . Therefore, the second requirement of paragraph 4(a) of the Policy is satisfied with respect to these two (2) domain names.
With regard to the sixteen (16) disputed domain names:
For the same reasons given above for the Domain Names and , the Panel finds that Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the above sixteen (16) disputed Domain Names. Therefore, the second requirement of paragraph 4(a) of the Policy is also satisfied with respect to these 16 domain names.
G. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets forth four criteria for bad faith registration and use of domain names:
“(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 that 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.”
The Panel finds that Respondent registered and used the Domain Names and in bad faith. Actual knowledge of Complainant’s rights (and consequent bad faith registration) can be inferred from Respondent’s multiple registrations of domain names containing misspellings of Complainant’s marks. See Microsoft Corporation v. Charlie Brown,WIPO Case No. D2001-0362 (“The Respondent’s domain name misspelling of the Complainant’s trademark is designed to confuse and take advantage of Internet users who do not know the correct spelling of the Complainant’s mark or name or who mistyped it. Prior UDRP cases have found that such conduct alone creates a prima facie inference of bad faith.”) The Panel finds that the Domain Names were registered in bad faith.
In addition, misspellings may in appropriate cases be “sufficient to prove bad faith under paragraph 4(b)(iv) of the Policy because Respondent has used these domain names intentionally to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark.” See AltaVista Co. v. Yomtobian, WIPO Case No. D2000-0937. Accordingly, the Panel concludes that the Domain Names and are being used in bad faith pursuant to Policy, paragraph 4(b)(iv).
The third requirement of paragraph 4(a) of the Policy is, therefore, satisfied with respect to the domain names and .
With regard to the sixteen (16) disputed domain names:
For the same reasons given above for the Domain Names and , the Panel finds that the sixteen (16) above domain names were registered and are being used in bad faith.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the following eighteen (18) domain names:
be transferred to the Complainant.
Lawrence K. Nodine
Sole Panelist
Dated: June 18, 2007
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