Sears Brands, LLC and Kmart of Michigan, Inc. v. Domain Administration Limited a/k/a William Vaughan
Claim Number: FA0804001177524
Complainant is Sears Brands, LLC and Kmart of Michigan, Inc. (“Complainant”), represented by Paul
D. McGrady of Greenberg Traurig, LLP, Illinois, USA. Respondent is Domain Administration Limited a/k/a William
Vaughan (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <shopkmart.com>, registered with Enom, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically April 11, 2008; the National Arbitration Forum received a hard copy of the Complaint April 15, 2008.
On April 14, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <shopkmart.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. verified that Respondent is bound by the Enom, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On May
1, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 21, 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@shopkmart.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 29, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <shopkmart.com>, is confusingly similar to Complainant’s K MART mark.
2. Respondent has no rights to or legitimate interests in the <shopkmart.com> domain name.
3. Respondent registered and used the <shopkmart.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant operates full-line and specialty retail stores
in the
Respondent registered the <shopkmart.com> domain name November 11, 2001. The disputed domain name resolves to a website that features links to websites offering both Complainant’s goods and services, and those sold by Complainant’s competitors.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 established rights in the K MART mark for
purposes of Policy ¶ 4(a)(i) through its trademark
registration with the USPTO. See 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.”); see also Men’s
Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002)
(“Under
Complainant contends that
Respondent’s <shopkmart.com> domain name is confusingly similar to its K MART mark. The <shopkmart.com> domain name differs from Complainant’s mark in three ways:
(1) the generic term “shop” has been added to the beginning of the mark; (2)
the space between the letter “K” and the word “MART” has been removed; and (3)
the generic top-level domain (“gTLD”) “.com” has been added. Neither the addition of a generic term,
removal of a space, nor addition of a gTLD distinguish
a domain name from a complainant’s mark sufficiently to reduce or eliminate the
likelihood of confusion. Therefore, the
Panel finds that these changes do not minimize or eliminate the resulting
likelihood of confusion with Complainant’s mark and so Respondent’s disputed
domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶
4(a)(i). See L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept.
14, 2000) (finding that combining the generic word “shop” with the
complainant’s registered mark “llbean” does not circumvent the complainant’s
rights in the mark nor avoid the confusing similarity aspect of the ICANN
Policy); see
also Surface Prot. Indus., Inc. v. Webposters, D2000-1613
(WIPO Feb. 5, 2001) (finding the domain name <mannbrothers.com>
confusingly similar to the complainant’s MANN BROTHERS mark “so as to likely
confuse Internet users who may believe they are doing business with Complainant
or with an entity whose services are endorsed by, sponsored by, or affiliated
with Complainant; hence, satisfying the confusing similarity requirement”); see also Isleworth
Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) ( “[I]t is a well established principle that generic
top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks all rights and legitimate interests in the <shopkmart.com> domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights and legitimate interests in the disputed domain name. Complainant has made a prima facie case under Policy ¶ 4(a)(ii). 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. 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 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).
Complainant contends that Respondent is not commonly known
by the <shopkmart.com>
domain name and that Complainant has never given
Respondent permission to use or license for the K MART mark. The WHOIS record for the disputed domain name
lists Respondent as “Domain Administration
Limited a/k/a William Vaughan.”
This evidence, along with the fact that Respondent has failed to show
any evidence contrary to Complainant’s contentions, compels the Panel to find
that Respondent is not commonly known as <shopkmart.com>
pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name
under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration
information, Respondent is not commonly known by the [<awvacations.com>]
domain name.”); see
also RMO, Inc. v. Burbridge,
FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly
known by the domain name prior to registration of the domain name to
prevail").
Respondent maintains a website at the <shopkmart.com> domain name that features links to websites offering Complainant’s goods and services along with those sold by Complainant’s competitors. The Panel finds that this use of the <shopkmart.com> domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent is using the disputed
domain name to divert Internet customers from Complainant’s website to Respondent’s
website that resolves from the disputed domain name, through the confusion
caused by the similarity between the K MART mark and the <shopkmart.com> domain name. The Panel finds that Respondent’s use of the
disputed domain name disrupts Complainant’s business, and is evidence of
registration and use in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant also contends that Respondent is gaining
commercial benefit through this diversion, by receiving click-through fees each
time a misguided Internet visitor clicks on the links on the web page. The Panel finds that this is an intentional
use of the disputed domain name for commercial gain through a likelihood of
confusion with Complainant’s mark, and pursuant to Policy ¶ 4(b)(iv), this use is also evidence of registration and use in
bad faith. See Bank of Am. Corp. v.
The Panel finds that Complainant 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 <shopkmart.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 12, 2008.
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