Complainant is Sportsman’s Warehouse, Inc. of Midvale, Utah, United States of America, represented by Lindquist & Vennum, P.L.L.P., United States of America.
Respondent is Moniker Privacy Services / Domain Administrator of Pompano Beach, Florida, United States of America and New York, New York, United States of America, respectively. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 27, 2011. On January 28, 2011, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On January 31, 2011, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 7, 2011, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 8, 2011.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on February 10, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 2, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 4, 2011.
The Center appointed Sandra A. Sellers as the sole panelist in this matter on March 14, 2011. 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 owns and operates 26 retail outdoor goods stores across the United States,1 Complainant’s retail sales generate an average of USD 290 million annually, and almost USD 4 billion since 1995.
Since 1994, Complainant has used the mark SPORTSMAN’S WAREHOUSE in conjunction with its retail stores and outdoor goods. Complainant owns several United States (“U.S.”) registered trademarks and several state trademarks for SPORTSMAN’S WAREHOUSE, with and without a design.
Complainant also has used since December 21, 1999, to sell its outdoor goods.
On December 30, 2010, Complainant sent a cease and desist letter to Respondent concerning the disputed domain name. Respondent did not respond to the letter. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is nearly identical visually, and is identical phonetically and thus is confusingly similar, to Complainant’s mark SPORTSMAN’S WAREHOUSE. Complainant also contends that Respondent has engaged in typosquatting and uses the disputed domain name for commercial gain by redirecting consumers to websites of Complainant’s competitors and therefore has no rights or legitimate interests in the domain name. Complainant further contends that Respondent has registered and is using the domain name in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(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 has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant has several federally registered marks and other state registrations in the U.S. for SPORTSMAN’S WAREHOUSE. Complainant has used the mark in conjunction with retails sales of outdoor goods continuously since 1994. Complainant has demonstrated that it has rights in the SPORTSMAN’S WAREHOUSE mark.
The disputed domain name is nearly identical and thus in the Panel’s view, confusingly similar to Complainant’s SPORTSMAN’S WAREHOUSE mark. The disputed domain name contains one extra letter, “h”, , which is phonetically identical and visually nearly identical to Complainant’s mark. It is well settled that the addition of one letter may constitute confusing similarity under the Policy. See, e.g., CareerBuilder LLC v Azra Khan, WIPO Case No. D2003-0493 (); and Fuji Photo Film USA Inc vs LaPorte Holdings, WIPO Case No. D2004-0971 ().
The Panel finds that Complainant has rights in the SPORTSMAN’S WAREHOUSE mark, and that the disputed domain name is confusingly similar to Complainant’s registered mark, therefore Complainant meets the first criterion of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Because it is generally difficult for a complainant to prove the fact that a respondent does not have any rights or legitimate interests in a disputed domain name, previous UDRP decisions have found it sufficient for complainant to make a prima facie showing of its assertion.
Respondent is not affiliated with or related to Complainant, nor is Respondent licensed or authorized to use the SPORTSMAN’S WAREHOUSE mark. On the evidence before the Panel, Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name. The Panel is satisfied that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name.
Respondent is in default, and has not provided any evidence in its own favor.
The Panel finds that the evidence is sufficient to establish that Respondent has no rights or legitimate interests in the disputed domain name, and thus Complainant meets the second criterion of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Complainant has owned and operated retail outdoor goods stores under its SPORTSMAN’S WAREHOUSE mark continuously since 1994, 14 years before Respondent registered the disputed domain name. Complainant holds several federal registrations for the mark, with and without design. Respondent is a US entity, and thus under 15 USC Section 1072, is deemed to have constructive notice under US law of Complainant’s ownership of these trademarks. Respondent has not disputed this allegation. Based on these facts, this Panel infers that Respondent was aware or must have been aware of Complainant’s mark when Respondent registered the disputed domain name. See e.g. Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0013. Moreover, the use of a domain name confusingly similar to Complainant’s mark and selling the same product – here, outdoor goods – supports an inference that Respondent knew of Complainant’s mark before Respondent registered the domain name. Respondent, the Panel finds, thus registered in bad faith.
Moreover, Complainant sent Respondent a cease and desist letter on December 30, 2010, specifically informing Respondent of Complainant’s mark. This Panel infers that the Respondent had specific knowledge of Complainant’s marks and therefore has continued to use Complainant’s mark as part of the disputed domain name in bad faith.
Under paragraph 4(b)(iv) of the Policy, the Panel may find that Respondent has used the domain name in bad faith if, “[respondent] has intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] 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 web site or location or of a product or service on your web site or location.”
Here, the disputed domain name resolves to a website that contains links to other sites for outdoor goods that directly compete with Complainant’s SPORTSMAN’S WAREHOUSE outdoor goods. Respondent’s use of the disputed domain name clearly is an attempt to create confusion to attract Internet users to Respondent’s web site for commercial gain.
It is now a well-known practice to display on a web page or search engine various links to other commercial websites under a pay-per-click commission scheme: every link activated by an Internet user enables the host of the search engine to collect financial remuneration proportional to the number of connections. See, e.g., Deutsche Telekom AG v. WWW Enterprise, Inc.,WIPO Case No. D2004-1078. Therefore, in the Panel’s view, it is evident that Respondent has registered and used the disputed domain name with the intent to attract Internet customers looking for Complainant’s SPORTSMAN’S WAREHOUSE outdoor goods, thereby likely profiting from click-through revenue generated by the sponsored links.
This Panel finds that Respondent has registered and used the disputed domain name in bad faith, within the meaning of paragraph 4(b)(iv) of the Policy and that Complainant meets the third criterion of paragraph 4(a) of the Policy. 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 domain name be transferred to the Complainant .
Sandra A. Sellers
Sole Panelist
Dated: March 28, 2011
1 In Sportsman’s Warehouse, Inc. v. Sportswear for Men LLC/Domain Privacy Service,WIPO Case No. D2008-0592, concerning this same Complainant and mark, Complainant stated that it operated over 60 stores. The affidavit of Brian Brown, Director of Finance for the Complainant provided as Annex 5 to the Complaint, indicates that due to a reorganization the number of stores was reduced; however, Complainant’s overall sales continued to increase.
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