Dick’s vs. Wang: UDRP against SportingGS.com failed and here’s why

Dick’s Sporting Goods, Inc. and American Sports Licensing, LLC v. bo wang

Claim Number: FA2409002117216

PARTIES

Complainant is Dick’s Sporting Goods, Inc. and American Sports Licensing, LLC (“Complainant”), represented by Johanna Schmitt of Norton Rose Fulbright US LLP, New York, USA. Respondent is bo wang (“Respondent”), China.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is sportinggs.com, registered with Name.com, Inc.

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

Richard Hill as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on September 24, 2024; Forum received payment on September 24, 2024.

On September 25, 2024, Name.com, Inc. confirmed by e-mail to Forum that the sportinggs.com domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On September 25, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 2024 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@sportinggs.com. Also on September 25, 2024, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

On October 16, 2024, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS

Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”

There are two Complainants in this matter: Dick’s Sporting Goods, Inc. & American Sports Licensing, LLC. American Sports Licensing, LLC is a wholly owned subsidiary of Dick’s Sporting Goods, Inc..

Previous panels have interpreted Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:

It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.

In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.

The Panel finds that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and thus it will treat them as a single entity in this proceeding.

PARTIES’ CONTENTIONS

A. Complainant

Complainant states that, founded in 1948, it is a leading omnichannel sporting goods retailer offering an extensive assortment of authentic, high quality sports equipment, apparel, footwear and accessories. It operates a family of sporting goods stores, including over 700 retail stores throughout the United States under the name DICK’S SPORTING GOODS. It also offers goods through a family of websites, including the DICK’S SPORTING GOODS-branded website at the domain name dickssportinggoods.com. Complainant asserts rights in the mark DICK’S SPORTING GOODS through its registration in the United States in 2012.

Complainant alleges that the disputed domain name is confusingly similar to its DICK’S SPORTING GOODS mark as it consists of the term “Sporting” along with the letters “gs” (which stand for “goods”) and merely adds the “.com” generic top-level domain (“gTLD”). The use of a domain which means “Sporting Goods”— coupled with Respondent’s use of the disputed domain in connection with a fraudulent website that is designed to mislead consumers into thinking it is Complainant’s website—renders the disputed domain name confusingly similar to Complainant’s mark.

According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not licensed or authorized to use Complainant’s mark and is not commonly known by the disputed domain name. Respondent does not use the disputed domain name for a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Instead, the resolving website blatantly replicates the look and feel of Complainant’s website in an attempt to confuse consumers into believing that the resolving website is an official website for the DICK’S SPORTING GOODS brand or that the products or services on the site are offered by or are affiliated with or sponsored by Complainant. The resolving website displays Complainant’s distinctive logo.

Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith by disrupting Complainant’s business by passing off as Complainant. Respondent had actual knowledge of Complainant’s rights in its mark.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant owns the mark DICK’S SPORTING GOODS and uses it to market sports equipment.

Complainant’s rights in its mark date back to 2012.

Complainant’s registration for the mark DICK’S SPORTING GOODS states: “No claim is made to the exclusive rights to use ‘SPORTING GOODS’, apart from the mark as shown.”

The disputed domain name was registered in 2022.

Complainant has not licensed or otherwise authorized Respondent to use its mark.

The resolving website attempts to pass off as Complainant by displaying its distinctive logo, and images of Complainant’s products.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

In view of Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).

Identical and/or Confusingly Similar

The Panel is not convinced that the letters “gs” in the disputed domain name necessarily refer to “goods”. Be that as it may, this issue can be left undecided for the reasons given below.

Complainant’s registration for the mark DICK’S SPORTING GOODS states: “No claim is made to the exclusive rights to use ‘SPORTING GOODS’, apart from the mark as shown.”

The disputed domain name consists only of the common words “sporting”, and perhaps “goods”. Under the Policy, those terms are not confusingly similar to Complainant’s mark. See Fabricators & Manufacturers Association, International v. Domain Administrator / Namefind, LLC, FA 1728625 (Forum June 1, 2017) (“The Panel duly observes that it is well and long established rationale and principle of trademark laws across the countries that the exclusivity of a trademark right does not extend to non-distinctive terms, words, or devices which are subject to the free use of the public. Therefore, the Panel agrees with Respondent’s contentions that Complainant does not have any right to monopolize the dictionary word “fabricator” alone because the mark is indivisible: neither the article “the” nor the noun “fabricator” is distinctive in its own right. The Panel agrees that Complainant’s mark is distinctive only in its indivisible wholeness.”); see also Viking Office Products, Inc. v. Natasha Flaherty a/k/a ARS – N6YBV, FA 1383534 (Forum May 31, 2011) (“The disputed domain name is comprised of a common and descriptive term and thus cannot be deemed identical to Complainant’s mark.”).

Complainant argues that the content of the resolving website, which clearly impersonates Complainant, should be taken into account when assessing confusing similarity under the Policy.

According to 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”) (emphasis added): “In specific limited instances, while not a replacement as such for the typical side-by-side comparison, where a panel would benefit from affirmation as to confusing similarity with the complainant’s mark, the broader case context such as website content trading off the complainant’s reputation, … may support a finding of confusing similarity.”

Here, Complainant presents evidence showing that the resolving website contains elements intended to make consumers believe that Respondent’s site is somehow affiliated with Complainant. However, this cannot replace the side-by-side comparison above, according to which the disputed domain name is not confusingly similar to Complainant’s mark, because the disputed domain name consists only of dictionary words, and Complainant’s mark makes no claim to the exclusive rights to use such words.

For all the reasons given above, the Panel finds that Complainant has failed to satisfy its burden of proof for this element of the Policy.

Rights or Legitimate Interests

As Complainant has failed to satisfy the first element of the Policy, the Panel will not analyze the other elements. See HOSTAFRICA v. Domain Support, FA 2010138 (Forum Oct. 6, 2022) (“The Panel declines to analyze Respondent’s rights or legitimate interests, or bad faith, regarding the at-issue domain name since having failed to show rights in a mark under Policy ¶ 4(a)(i) Complainant cannot prevail.”); see also Red Reactive, LLC v. Brian Probst / Desenia, FA 2006864 (Forum Sept. 19, 2022) (“The Panel finds that Complainant has not satisfied Policy ¶ 4(a)(i). Thus, the Panel declines to analyze the other two elements of the Policy.”).

The Panel however notes, obiter dictum, that the evidence set forth by Complainant would appear to support its allegations.

Registration and Use in Bad Faith

As Complainant has failed to satisfy the first element of the Policy, the Panel will not analyze the other elements.

The Panel however notes, obiter dictum, that the evidence set forth by Complainant would appear to support its allegations.

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the sportinggs.com domain name REMAIN WITH Respondent.

Richard Hill, Panelist

Dated: October 16, 2024