Sears Brands, LLC v. OX5 Consulting L.L.C.
Claim Number: FA0708001069934
Complainant is Sears Brands, LLC (“Complainant”), represented by Paul
D. McGrady, of Greenberg Traurig, LLP, 77 West Wacker
Drive, Suite 2500, Chicago, IL 60601.
Respondent is OX5 Consulting L.L.C. (“Respondent”), 3500,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <searscontractsales.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf, (Ret.) as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On September 4, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 24, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <searscontractsales.com> domain name is confusingly similar to Complainant’s SEARS mark.
2. Respondent does not have any rights or legitimate interests in the <searscontractsales.com> domain name.
3. Respondent registered and used the <searscontractsales.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has continuously used the SEARS mark in
connection with a broad line of retail services since at least 1894. Complainant currently holds numerous
registrations of the SEARS mark with the United States Patent and Trademark
Office (“USPTO”) (Reg. No. 78,315,317 issued
Respondent’s <searscontractsales.com> domain
name was registered on
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant has sufficiently established its rights in the
SEARS mark under Policy ¶ 4(a)(i) through registration
with the USPTO. See
Respondent’s <searscontractsales.com> domain
name includes Complainant’s SEARS mark in its entirety. It also includes the generic top-level domain
name (“gTLD”) “.com,” and the generic terms “contract sales,” omitting any
space between words. The terms “contract
sales” are descriptive of many of the business in which Complainant engages in
under its SEARS mark. It is well
established that the addition of a gTLD and the omission of spaces in a domain
name are irrelevant to a Policy ¶ 4(a)(i). Moreover, the inclusion of generic, descriptive
terms with a mark will not negate a finding of confusing similarity. As such, the Panel concludes that
Respondent’s disputed domain name is confusingly similar to Complainant’s
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
The Panel finds that Complainant has established a prima facie case and that the burden shifts to Respondent to establish that it does have rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Respondent has not submitted a Response to the
Complaint. The Panel presumes then that
Respondent has no rights or legitimate interests in the disputed domain name,
but will nonetheless consider all of the available evidence in consideration of
the factors listed under Policy ¶ 4(c). See G.D.
Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(Respondent’s failure to respond means that Respondent has not presented any
circumstances that would promote its rights or legitimate interests in the
subject domain name under Policy ¶ 4(a)(ii).”); see also Am.
Express Co. v. Fang Suhendro, FA 129120
(Nat. Arb. Forum
Nowhere in Respondent’s WHOIS information or anywhere in the record does it indicate that Respondent is or has been ever commonly known by the <searscontractsales.com> domain name. Moreover, Respondent has not sought nor has it been granted permission to use Complainant’s SEARS mark. Consequently, the Panel finds that Respondent it not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent’s <searscontractsales.com> domain name contains Complainant’s SEARS mark in its entirety and resolves to a web page featuring links to competitors of Complainant. The Panel finds that this is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate non commercial or fair use pursuant to Policy ¶ 4(c)(iii). See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s <searscontractsales.com> domain
name resolves to a web page featuring links to third-parties who compete with
Complainant. The Panel finds that this
diversionary use of the disputed domain is for the purpose of disrupting
Complainant’s business. As such, the
Panel finds that Respondent registered and is using the <searscontractsales.com>
domain name is bad faith pursuant to Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum
Respondent’s <searscontractsales.com> domain name features links to third-party competitors of Complainant. The Panel presumes that these links financially benefit Respondent through the use of click-through fees. Therefore, the Panel finds this to be further evidence that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <searscontractsales.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf, (Ret.), Panelist
Dated: October 10, 2007
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