WIPO Domain Name Decision: D2006-1147

The Respondent is Domain Administration Limited c/o David Halstead, of New Zealand.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 6, 2006. On September 12, 2006, the Center transmitted by email to eNom. a request for registrar verification in connection with the domain name at issue. On September 13, eNom. 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. In response to a notification by the Center that the Complainant was administratively deficient, the Complainant filed an amendment to the Complaint on September 20, 2006. 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 October 3, 2006. In accordance with the Rules, under paragraph 5(a), the due date for Response was October 23, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 24, 2006.

The Center appointed John Terry as the Sole Panelist in this matter on October 30, 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.

The 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. Copies of a relevant trademark registration is provided as Annex C to this Complaint, the trademarks comprise HIBBETT SPORTS registration 27157584 dated May 20, 2003 in Class 35 and application 78923441 for HIBBETT in class 35 filed by the Complainant July 6, 2006, on the basis of first use in commerce in 1980.

The Complainant’s principal place of business is in Birmingham, Alabama, but the Complainant operates over six hundred stores located in twenty-three (23) US states. The Complainant’s official corporate website uses the domain name <hibbett.com>.

The Respondent registered the disputed domain name <hibbettssports.com> on August 7, 2002.

The disputed domain name comprises the Complainant’s HIBBETT SPORTS trade name with pluralization of HIBBETT.

The Complainant has no relationship with Respondent and has never authorized Respondent to use either the HIBBETT SPORTS trademark or HIBBETT trade name.

Respondent’s website at the disputed domain name is a commercial search engine with direct links to competitors of Complainant as well as links to other sports equipment sites.

Respondent’s website at the disputed domain name offers the web user click-through links to direct competitors of and similar businesses to the Complainant.

The Complainant contends that the domain name in dispute is identical or confusingly similar to the trademarks it has registered and used and in which the Complainant has rights.

A further contention is that the Respondent’s website demonstrates no legitimate interest of the Respondent, and that the domain name in dispute was registered and used in bad faith.

“Respondent admitted, in a August 22, 2006, email to Complainant, that the disputed domain contained “adverts [which] infringed on your [Complainant’s] TM’s [sic].”

The Complainant contended that this email was relevant to proving its case for transfer of the domain name in dispute.

“I instructed your lawyer that if he was unhappy with the ads display we would instruct our tech people to stop which adverts infringed on your TM’s. We received no such response.”

For the Panel to find for the Complainant three elements must be satisfied under paragraph 4(a) of the Policy.

The trademarks of the Complainant HIBBETT and HIBBETT SPORTS differ only in immaterial detail from the distinct portion of the disputed domain name.

The Panel concludes that the present domain name <hibbettssports.com> is confusingly similar to the trademark in which the Complainant has established rights.

The Panel finds the Complainant has satisfied the first element of the Policy, namely paragraph 4(a)(i) of the Policy.

Paragraph 4(c) of the Policy provides a non-limiting list of circumstances in which a respondent may establish it has rights and legitimate interests in the domain name.

While the overall burden of proof rests with a complainant, previous WIPO UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of a respondent. A complainant is therefore generally required to make out an initial prima facie case that a respondent lacks rights or legitimate interests. Once such prima facie case is made, a respondent then carries the burden of demonstrating rights or legitimate interests in the domain name. If a respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (cf. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

In the present case, the Respondent has filed no Response. The Panel has therefore considered whether the material in the Complaint is sufficient to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

Of the three alternative subparagraphs in paragraph 4(c) of the Policy, clearly paragraph 4(c)(i) of the Policy is not relevant as there is no evidence before the Panel that the Respondent has made any bona fide offering of goods or services under the domain name in dispute. Furthermore, there is no evidence that supports any finding under paragraph 4(c)(ii) of the Policy because the Respondent has not established it has been commonly known by the domain name in dispute. Under paragraph (4)(c)(iii) of the Policy, the only evidence of activity of the Respondent, with respect to the domain name in dispute, is the evidence of the Complainant with regard to the Respondent’s website.

The evidence in the Complaint indicates that the website at the disputed domain name is commercial in the sense that it appears to provide links to other sites being apparent competitors of the Complainant, and of an apparently commercial nature from which the Respondent presumably derives or intends to derive profit.

Such use does not constitute a legitimate non-commercial or fair use of the disputed domain name by the Respondent within the meaning of paragraph 4(c)(iii) of the Policy.

The Panel finds that the Complaint has established a prima facie case that none of the three circumstances potentially available to the Respondent under paragraph 4(c) of the Policy are applicable, and that the Respondent lacks rights or legitimate interests in the disputed domain name. This has not been rebutted.

The Panel finds accordingly that the Complainant has established the second element of the Policy.

Paragraph 4(a)(ii) of the Policy provides that the Complainant must prove that the domain name has been registered and is being used in bad faith, and paragraph 4(b) of the Policy lists four specific, non-limiting circumstances, which, if established by the Complainant, are deemed to lead to a conclusion of registration and use of a domain name in bad faith.

In the present case, the circumstances referred to in paragraphs 4(b)(i), 4(b)(ii) and 4(b)(iii) of the Policy are not on point and are not indeed the subject of contentions by the Complainant. However, the circumstance of paragraph 4(b)(iv) of the Policy is applicable, namely:

“(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 of a product or service on your website or location.”

The Panel accepts that the Complainant’s trademarks are known with extensive use in time and geography. The only evidence of use of the disputed domain name by the Respondent is consistent with the circumstances described paragraph 4(b)(iv) of the Policy.

The Panel notes that there has been no Response filed in these circumstances, and it is open for the Panel to infer a prima facie case of bad faith registration. The Panel also notes that the Respondent has used the present domain name in a commercial website.

The evidence before the Panel indicates that the Respondent has used (or allowed the use) of the domain name for the purpose of some apparently commercial nature from which the Respondent (or a related third party) presumably derives or intends to derive revenue. This is not conduct consistent with registration and use in good faith.

Further, in the event that the website at the disputed domain name has been established by a third party without active input from the Respondent, current bad faith use might be inferred from passive holding of a domain name in circumstances where (as in the present case) there is no evidence of any possible legitimate use of the domain name by the Respondent (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Aventis, Aventis Pharma SA. v. John Smith, WIPO Case No. D2004-0565 and Case No. D2004-0624).

The Panel has doubt whether the email of Annex C is proof against the Respondent on any relevant test. In coming to this decision, the Panel has not relied on that material.

The Panel finds accordingly that the disputed domain name was registered and is being used in bad faith.

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, <hibbettssports.com> be transferred to the Complainant.

ADMINISTRATIVE PANEL DECISION