The Sportsman’s Guide, Inc. v. Vipercom

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Sportsman's Guide, Inc. v. Vipercom

Case No. D2003-0145

1. The Parties

The Complainant is The Sportsman's Guide, Inc., a Minnesota corporation with

headquarters in South St. Paul, Minnesota, United States of America, represented

by Michael G. Frey of the law firm Killworth, Gottman, Hagan &

Schaeff, L.L.P., Dayton, Ohio, United States of America.

The Respondent is Vipercom, an entity of unknown provenance, according to its

registration from Joppa, Maryland, United States of America.

2. The Domain Names and Registrar

The disputed domain names (disputed domain names ) are <sportsmanguides.com>

and <sportsmenguides.com>. Both are registered with Register.com, New

York, New York, United States of America (the Registrar).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the

Center) on February 25 (email) and 27 (hard copy), 2003. On February 26, 2003,

the Center transmitted by email to the Registrar a request for registrar verification

in connection with the disputed domain names . On February 26, 2003, the Registrar

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. 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 Rules 2(a) and 4(a), on March 5, 2003, the Center formally

notified the Respondent of the Complaint, and dispatched the Complaint to Respondent

by post/courier, telefax, and email, in each instance to the address provided

in the Complaint and by the Registrar. This proceeding commenced on this date.

Under Rule 5(a), the Response was due March 26, 2003. The Respondent did not

submit any response. On March 28, 2003, the Center notified the Respondent of

its default.

The Center appointed Richard G. Lyon as the Sole Panelist on April 2, 2003.

I submitted my Statement of Acceptance and Declaration of Impartiality and Independence,

as required by the Center to ensure compliance with Rule 7.

4. Jurisdiction

A preliminary issue in cases such as this one, where no Response has been filed,

is whether the Panel has obtained jurisdiction over the Respondent. Rule 10(b)

requires that "each Party [be] given a fair opportunity to present its

case." Rule 2(a) requires that the Center employ "reasonably available

means calculated to achieve actual notice to Respondent."

The Center employed each of the measures listed in Rule 2(a). The Center has

verified that the courier service confirmed delivery and that the email transmission

was not returned as undeliverable.

Respondent has consented to the Policy by contract, in its agreement with the

Registrar. Even if it did not receive actual notice of the Complaint, there

is no unfairness to it when the Complainant and the Center complied with the

prescribed notice procedure.

I therefore find that Respondent was "treated with equality" and

"given a fair opportunity to present its case" and that there is jurisdiction

over Respondent and the disputed domain names .

The Panel shall issue its decision based on the Complaint, the evidence presented,

the Policy, the Rules, and the Supplemental Rules.

5. Factual Background

The following factual background is taken from the Complaint. Each of the factual

allegations in the Complaint is duly supported by competent evidence. The evidence

consists of copies of documents, printouts of web pages, and an affidavit from

a participant in the telephone conversations described below.

Complainant has operated under the trade name THE SPORTSMAN’S GUIDE (the Mark)

for over twenty years, and has used that Mark as a service mark in connection

with mail order catalog sales since at least as early as 1977, and in connection

with on-line retail sales services since at least as early as 1998. Goods available

through Complainant’s services include clothing, camping gear, hunting and fishing

gear, and other equipment of interest to outdoor enthusiasts. Complainant asserts

that it currently serves over one million customers throughout the world.

Since 1998 Complainant has operated a website at "www.sportsmansguide.com",

through which it offers on-line and telephone sales services and telephone shop-at-home

services, and through which it provides links to information resources of interest

to outdoors men. Complainant’s website includes links to information pertaining

to hunting, fishing, and other outdoor activities and listings of guides available

for hunting and fishing outings throughout the U.S. and elsewhere.

Complainant is the owner of one Canadian and four United States federal registrations

covering its Mark. It also asserts common law rights in the Mark based upon

the usage described above.

Respondent registered the disputed domain names in November 2000. Complainant

first discovered that Respondent had acquired the registrations two years later,

in November 2002. At that time at least one of the disputed domain names

resolved to a standard "Coming Soon" page developed by the Registrar.

Exiting the page accessed by the <sportsmenguides.com> domain name triggered

several pop-up ads.

Complainant first contacted Respondent about its registration of <sportsmenguides.com>

on November 14, 2002, with a demand that it surrender the domain name. At this

time Complainant was only aware of the <sportsmenguides.com> registration;

it became aware of Respondent’s registration of <sportsmanguides.com>

through subsequent conversations with Dan Steen, the contact person for the

disputed domain names . In those conversations, Mr. Steen stated that his company

ran a large number of websites, most of which are adult-oriented sites, but

that he did have interests in developing sites in other fields as well. Mr.

Steen stated that he was unfamiliar with Complainant’s business but that he

was considering using the disputed domain names in connection with websites

that would provide information about activities such as hunting and fishing

and to provide space for hunting and fishing guides to advertise their services.

Mr. Steen indicated that he might be willing to sell the disputed domain names

to Complainant, but did not name a price.

Complainant offered to purchase the disputed domain names for the current registration

costs and advised Respondent that its proposed use would constitute an infringement

of Complainant’s trademarks. Respondent did not reply to this offer, and within

a month thereafter caused the disputed domain names to resolve to its "www.victorvoyeur.com"[1]

website. As suggested by its title, this website offers pornography for sale.

6. Parties’ Contentions

A. Complainant

Complainant’s contentions may be summarized as follows:

The disputed domain names are similar to Complainant’s mark, differing only

by deletion of the apostrophe and changing one or two letters.

Respondent has no rights or legitimate interests in the disputed domain names

because (a) Respondent is not commonly known by either of the disputed domain

names and has never used either of them to conduct business, (b) Complainant

has never licensed the Mark to Respondent or otherwise granted Respondent permission

to use the Mark in any respect, (c) Respondent is not using either Disputed

Domain Name in connection with a bona fide offering of goods or services and

has never made preparations to do so; and (d) Respondent's use of the disputed

domain names for a pornographic site bears no relation to the meaning of the

Mark in ordinary English.

Respondent’s bad faith in registration and use is established by (i) registering

the disputed domain names with admitted knowledge of Complainant’s Mark, (ii)

non-use of the disputed domain names for more than two years, (iii) possible

use of the disputed domain names to compete directly with Complainant, (iv)

Respondent’s intimation that it might be willing to sell the disputed domain

names for an amount greater than the costs of registration, (v) Respondent's

potentially using the disputed domain names in a manner that would constitute

an infringement of the Mark, (vi) Respondent's use of the disputed domain names

as a link to pornographic material, and (vii) Respondent's failure to reply

to several of Complainant’s communications.

B. Respondent

As noted above, Respondent did not reply to the Complaint.

7. Applicable Standards

The Complainant must prove the elements set out in paragraph 4(a) of the Policy.

These are:

(i) Respondent's Domain Name is identical or confusingly similar to a trademark

or service mark in which the Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect to the Domain

Name; and

(iii) Respondent's Domain Name has been registered and is being used in bad

faith.

Complainant bears the burden of proof on each of these elements. Respondent's

default does not automatically result in judgment for the Complainant.

8. Discussion and Findings

A. Identical or Confusingly Similar. The disputed domain names 'similarity

with the Mark is obvious. One differs only by deletion of the apostrophe and

final letter "s" and the other by those distinctions and substitution

of an "e" for an "a." Minor variations such as these do

not suffice to distinguish a domain name from a protected mark. Confusion is

obviously likely and, as noted in the following sections, intentional.

B. Rights or Legitimate Interests. Complainant has the burden of proving

that the Respondent does not have a legitimate interest in the disputed domain

names . Since there is not a strict logical means of proving a negative fact,

however, several Panels have recognized that a Complainant can meet this burden

with a prima facie showing. Once a Complainant has made this prima

facie showing[2], the burden shifts to

the Respondent to show that the Respondent has a legitimate interest in the

domain name. Paragraph 4(c) of the Policy lists three non-exclusive ways that

the Respondent can accomplish this showing.

In this case Complainant has established a prima facie case by showing

(1) its ownership and use of the Mark, (2) that Respondent is neither licensed

nor authorized to use the Mark, (3) that Respondent registered the disputed

domain names after Complainant had registered its Mark, and (4) that Respondent

was aware of Complainant's Mark when it registered the disputed domain names

. Since Respondent has not filed a Response to the Complaint, I accept the facts

alleged (and supported with evidence) in the Complaint to determine whether

any of the circumstances listed in Paragraph 4(c) of the Policy exists.

No legitimate interest in the disputed domain names appears on the record.

On the contrary, Respondent is using the disputed domain names to take advantage

of the reputation of Complainant's marks[3].

There is no evidence that Respondent has ever "been commonly known by the

domain name[s]." Rather than making a "legitimate noncommercial or

fair use of the domain name[s],"[4] Respondent

is using the site "for commercial gain" and "to misleadingly

divert consumers."[5]

C. Registered and Used in Bad Faith. Typosquatting is by itself strong

evidence of bad faith in registration and use of a domain name[6].

Respondent's use of domain names with only minor spelling variations from the

Mark, for a purpose unrelated to the owner's use of the Mark or the meaning[7]

in everyday English of the words in a mark that, like the Mark in this case,

is descriptive and thus could be said to have an independent meaning, betrays

an intention to attract Complainant's customers and prospective customers to

those sites. This constitutes bad faith under Paragraph 4(b)(iv) of the Policy.[8]

9. Decision

For the foregoing reasons, in accordance with Rule 15 and Paragraph 4(i) of

the Policy, the Panel orders that the disputed domain names be transferred to

the Complainant.

Richard G. Lyon

Sole Panelist

Dated: April 10, 2003

1. On April 4, 2003, I verified that the

disputed domain names still resolve to this site.

2. E.g., Credit Suisse Group v. Milanes-Espinach,

WIPO Case No. D2000-1376; Anti Flirt S.A.

v. WCVC, WIPO Case No. D2000-1553; Intocast

AG v. Lee Daeyoon, WIPO Case No. D2000-1467.

As I have noted elsewhere, there is some disagreement over what constitutes

a prima facie showing. See, e.g., Go Daddy Software, Inc. v. Hadani, WIPO

Case No. D2002-0568, and cases cited in notes 12 through 16. .

3. Paragraph 4(c)(i) of the Policy.

4. Paragraph 4(c)(ii) of the Policy.

5. Paragraph 4(c)(iii) of the Policy.

6. Classmates Online, Inc. v. Zuccarini,

WIPO Case No. D2002-0635.

7. While the vernacular term sporting house

may relate to pornography, the connection is too tenuous to justify an inference

that this was Respondent's intention.

8. I expressly decline to address, as unnecessary

to the decision, Complainant's assertion that a trademark infringement is proof

of bad faith.

More cases by this complainant

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• The Sportsman’s Guide, Inc. v. JoyRide — D2003-0153 · sportmansguide.com, thesportsmensguide.com · Transfer · 19 May 2003
• The Sportsman’s Guide, Inc. v. Damir Kruzicevic — D2002-1127 · sportsmanguide.com · Transfer · 23 Jan 2003
• The Sportsman’s Guide, Inc. v. CostNet Domain Manager — D2002-1126 · sportmanguide.com · Transfer · 23 Jan 2003
• The Sportsman’s Guide, Inc. v. Lorna Kang — D2002-1121 · thesportsmanguide.com · Transfer · 20 Jan 2003
• The Sportsman’s Guide, Inc. v. Asia Ventures, Inc. — D2002-1116 · sportmensguide.com · Transfer · 20 Jan 2003