national arbitration forum

 

DECISION

 

Sears Brands, LLC v. Melissa Hirsh

Claim Number: FA0801001126641

 

PARTIES

Complainant is Sears Brands, LLC (“Complainant”) represented by Paul D. McGrady, of Greenberg Traurig, LLP, Illinois, USA.  Respondent is Melissa Hirsh (“Respondent”), Illinois, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <searscentrearena.com>, registered with Godaddy.com, Inc.

 

PANEL

The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

 

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 8, 2008; the National Arbitration Forum received a hard copy of the Complaint on January 9, 2008.

 

On January 8, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <searscentrearena.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name.  Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On January 15, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 4, 2008 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 postmaster@searscentrearena.com by e-mail.

 

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

 

On February 11, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <searscentrearena.com> domain name is confusingly similar to Complainant’s SEARS CENTRE mark.

 

2.      Respondent does not have any rights or legitimate interests in the <searscentrearena.com> domain name.

 

3.      Respondent registered and used the <searscentrearena.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Sears Brands LLC, and its affiliate Sears, Roebuck and Co., are wholly owned subsidiaries of Sears Holding Corporation.  Sears is a leading retailer providing a wide range of products and related services.  Complainant uses the SEARS CENTRE mark in connection with its partly owned sports arena, the Sears Centre.  The Sears Centre is an 11,000 seat multi-purpose family entertainment, cultural and sports center.  Complainant owns a registration for the SEARS CENTRE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,269,333 filed February 1, 2005, issued July 24, 2007).

 

Respondent registered the <searscentrearena.com> domain name on March 9, 2006.  Respondent’s disputed domain name resolves to the <bestseatusa.com> domain name, where Respondent offers tickets for sale at competing venues.  Respondent also offered to sell the disputed domain name to Complainant for $50,000.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant asserts rights in the SEARS CENTRE mark through registration with the USPTO and Complainant’s long standing use of the SEARS CENTRE mark.  Even though Respondent registered the <searscentrearena.com> domain name on March 9, 2006, before the USPTO issued registration for Complainant’s SEARS CENTRE mark on July 24, 2007, the Panel holds that the effective date for Complainant’s federal rights is the filing date on February 1, 2005.  See Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).  Therefore, Complainant’s registration of the SEARS CENTRE mark establish rights in the mark for purposes of Policy ¶ 4(a)(i).  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).

 

Complainant contends that Respondent’s <searscentrearena.com> domain name is confusingly similar to Complainant’s SEARS CENTRE mark.  Respondent’s disputed domain name contains Complainant’s mark in its entirety, adds a generic term which describes Complainant’s business and adds the generic top-level domain (“gTLD”) “.com.”  The same circumstances as in the instant case occurred in Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000), where the panel held that the respondent’s disputed domain name was confusingly similar to the complainant’s mark because the disputed domain name was a combination of the complainant’s mark and a generic term with an obvious relationship to the complainant’s business.  In the instant case, the Panel also finds that the addition of a gTLD is irrelevant when distinguishing a disputed domain name from a mark.  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).  Accordingly, the Panel finds in the instant case, Respondent’s <searscentrearena.com> domain name is confusingly similar to Complainant’s SEARS CENTRE mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant asserts that Respondent lacks all rights and legitimate interests in the <searscentrearena.com> domain name.  When Complainant makes a prima facie case in support of its allegations, the burden is shifted to Respondent to prove that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  The Panel finds that in this case, Complainant has established a prima facie case.  See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also 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).

 

Due to Respondent’s failure to respond to the Complaint, the Panel assumes that Respondent does not have rights or legitimate interests in the disputed domain name.  See CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the respondent’s failure to produce requested documentation supports a finding for the complainant); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name.  It also allows the Panel to accept all reasonable allegations set forth…as true.”).  However, the Panel chooses to examine the evidence for applicable Policy ¶ 4(c) elements before making a final determination with regards to Respondent’s rights and legitimate interests.

 

Complainant contends that Respondent is neither commonly known by the <searscentrearena.com> domain name, nor licensed to register domain names using the SEARS CENTRE mark.  The Respondent’s WHOIS information identifies Respondent as “Melissa Hirsh,” which provides no evidence that Respondent is commonly known by the disputed domain name.  Therefore, the Panel finds that without any evidence of being commonly known by the <searscentrearena.com> domain name, Respondent lacks all rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).

 

Complainant contends that Respondent is using the <searscentrearena.com> domain name in order to attract Internet users to the associated website containing offers for the sale of tickets to venues in direct competition with Complainant.  The Panel finds that intentionally diverting Internet users to a competing website by using a confusingly similar domain name is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); 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).

 

Complainant asserts that Respondent offered to transfer the <searscentrearena.com> domain name to Complainant for $50,000.  The Panel finds that Respondent offering to sell the disputed domain name is further evidence that Respondent lacks all rights and legitimate interests in the disputed domain name.  See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Respondent’s use of the <searscentrearena.com> domain name to offer tickets to venues in direct competition to Complainant is evidence of bad faith.  The Panel finds that a registered domain name used primarily to disrupt the business prospects of a competitor is an illustration of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business).

 

Respondent’s use of the <searscentrearena.com> domain name in order to intentionally attract Internet users to its website by creating a strong possiblity of confusion with Complainant’s SEARS CENTRE mark and offering ticket sales at competing venues is futher evidence of bad faith.  The Panel infers that Respondent receives click-through fees for diverting Internet users to such websites.  Therefore, pursuant to Policy ¶ 4(b)(iv), the Panel finds such use of the disputed domain name constitutes bad faith registration and use.  See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).

 

In addition, Complainant asserts that Respondent offered to sell the <searscentrearena.com> domain name to Complainant for $50,000.  The Panel holds that Repondent’s offer to sell the disputed domain name for an amount in excess of the out-of-pocket expenses for the registration of the domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(i).  See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)); see also Campmor, Inc. v. GearPro.com, FA 197972 (Nat. Arb. Forum Nov. 5, 2003) (“Respondent registered the disputed domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i).”).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <searscentrearena.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  February 18, 2008

 

 

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