Trademark Infringement Litigation: Sports Brand Successfully Sues SportingGS.com

In a recent Uniform Domain Name Dispute Resolution Policy (UDRP) case, Dick's Sporting Goods, Inc. filed a complaint against Bo Wang, the registrant of the domain name SportingGS.com. The Complainant claimed that the domain name infringed on its trademark “DICK'S SPORTING GOODS”, registered in 2012, because the word “Sporting” and the letters “gs “in the disputed domain name were considered likely to represent “Goods” and could lead to confusion. However, the Panel ultimately rejected Dick's claim and allowed the domain name SportingGS.com to remain in the possession of Bo Wang.

Complainant's Claims

Dick's Sporting Goods claims that its trademark “DICK'S SPORTING GOODS” is widely recognized in the sporting goods industry. The Complainant argues that the combination of the letters “Sporting” and “gs” in the disputed domain name “SportingGS.com” is easily recognizable by its trademark “Sporting Goods”. “Sporting Goods” portion of its trademark, particularly when the disputed domain name is used in connection with a fraudulent website that attempts to pass itself off as a Dick's website.

Focus of the Case

While it is true that there is a fraudulent website using the Dick's logo on the disputed domain name, SportingGS.com, in an attempt to mislead consumers, the case hinges on the interpretation of trademark rights. According to Dick's trademark registration, there is no exclusive right to use the “SPORTING GOODS” portion of the mark. Therefore, the Panel finds that, despite the deceptive nature of the resolving website, the domain name itself is not confusingly similar to the Complainant's mark from the perspective of the UDRP.

The Panel's Decision

After evaluating the Complaint and the Respondent's unsubmitted Answer, the Panel notes that, although the content of the website indicates that the Respondent is attempting to impersonate the Complainant, the Disputed Domain Name consists only of ordinary dictionary words, and “SPORTING GOODS” is a generic term for which Dick's does not have exclusive rights. Therefore, the domain name “SportingGS.com” was not confusingly similar to the mark “DICK'S SPORTING GOODS”.

Final Result

Since Dick's failed to prove that the disputed domain name is confusingly similar to its mark, the Panel rejected its claim and refused to transfer the domain name SportingGS.com to the Complainant.

This case demonstrates that while a domain name may be superficially similar to a trademark, the scope of exclusivity of the trademark and the composition of the domain name are key factors in determining confusing similarity under the UDRP framework.