National Arbitration Forum
Sears Brands, LLC v.
Claim Number: FA0808001219164
Complainant is Sears Brands, LLC (“Complainant”), represented by Paul D. McGrady, Jr., of Greenberg Traurig, LLP, Illinois, USA. Respondent is Gordana Bujko (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mywishbook.com>, registered with Godaddy.com, Inc.
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.
Hon. Nelson A. Diaz (ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 5, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 6, 2008.
On August 6, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <mywishbook.com> domain name is registered with Godaddy.com, Inc. and that the 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 August 13, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 2, 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on September 2, 2008.
An Additional Submission was received from Complainant on September 8, 2008 and determined to be timely and complete pursuant to Supplemental Rule 7.
An Additional Submission was received from Respondent on September 10, 2008 and determined to be timely and complete pursuant to Supplemental Rule 7.
On September 10, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Nelson A. Diaz as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant, Sears Brands, LLC is the owner of U.S. Reg. No. 1,380,332 for the mark WISH BOOK covering “catalogs” which was registered on January 28, 1986 and has a first use date of 1900 (the “WISH BOOK Mark”). A copy of the registration certificate for the WISH BOOK Mark is attached as Exhibit C. Complainant has used the WISH BOOK mark to market and sell its various goods and services. the following is the relevant portion of the Wikipedia entry for “WISH BOOK”:
“The Sears Wishbook is a very popular Christmas-themed catalog that is released by Sears Holding Corporation every September, and contains toys and other holiday-related merchandise. The wishbook began production in the 1970s, and was entitled Sears Christmas Wishbook from 1976 to 1987. It was then retitled to Sears Wishbook: Holiday 1987 and remained as such until 2006, when it is to be renamed Sears Christmas Wishbook. the wishbook is sent out free of charge to many American postal addresses. . .”
The Offending Domain incorporates Complainant’s WISH BOOK mark in its entirety and is confusingly similar to the WISH BOOK Mark as the only distinction is the inclusion of the generic element “my.” See NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”).
The Respondent has no trademark or other intellectual property rights to the domain name. Respondent has no trademark applications or registrations known to Complainant that incorporate the element WISH BOOK. Respondent's use of the WISH BOOK Mark is unauthorized.
Since Respondent is a resident in the U.S. and contracted with the U.S. based registrar to register the Offending Domain, Respondent has at least constructive knowledge of the WISH BOOK Mark because of Complainant's registration of the WISH BOOK Mark with the USPTO. See Victoria's Cyber Secret Ltd. v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D. Fla. 2001) (noting that “a Principal Register registration of a trademark or service mark is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072); see also Orange Glo Int'l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the U.S.P.T.O., a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof'). Even if Respondent were able to claim lack of knowledge, bad faith can exist when a search of the trademarks registry would reveal the registration rights of a Complaint. See, e.g., Kate Spade, LLC v. Darmstadter Designs, D2001-1384 (WIPO Jan. 3, 2002) (“Had Respondent done trademark search at the time Respondent registered the domain name at issue, Respondent would have received notice.”).
Furthermore, it is obvious Respondent has actual knowledge of the famous WISH BOOK Mark due to the content featured on Respondent's website, which directly competes with Complainant. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002).
As stated above, Respondent uses the Offending Domain to misdirect Internet users seeking Complainant's WISH BOOK catalog featuring Complainant's goods and services to a website which offers a competing online catalog of goods and services. through this commercial use of the Offending Domain in the United States. Respondent intentionally attempted to attract Complainant's customers to Complainant's website for financial gain by creating a likelihood of confusion with Complainant's WISH BOOK Mark as to the source, sponsorship, affiliation, and/or endorsement of Respondent's website or location.
“My Wish Book” is a generic term which is not confusingly similar to “Sears® Wish Book”, but rather invokes images of a personalized web-wide gift registry service which is not unique to or part of the Sears business model.
Complainant’s rights in the Mark are limited in scope due to the fact many third parties also use the Mark WISH BOOK (or variations thereon). Such extensive third party usage demonstrates that the Complainant’s claim of use does not establish secondary meaning. The Lanham Act expressly permits others to use even the registered and incontestable trademark of another where it is shown that the use is a use of a term which is descriptive of and used fairly and in good faith only to describe to users the goods or services of such party. The essential function of a trademark is to exclusively identify the commercial source or origin of products or services. The use of the common phrase “wish book” does not exclusively identify the source of any product or service. A common word, phrase, or other sign can only be removed from the public domain to the extent that a trademark owner is able to maintain exclusive rights over that sign in relation to certain products or services. the trademark has become “generic” through common use, that the mark no longer performs the essential trademark function and the average consumer no longer associates exclusive rights attach to it.
A generic term is not capable of serving the essential trademark function of distinguishing the products or services of a business from the products or services of other businesses, and therefore cannot be afforded any legal protection. This is because there has to be some term which may generally be used by anyone—including other retailers—to refer to a product without using some organization's proprietary trademark. Respondent initially chose to register <mywishbook.com> because the name is comprised of common terms routinely used in everyday language to describe a place to store ones dreams, goals and wishes and that it would generically convey that the site could function as a gift registry. Complainant’s trademark is merely a descriptive mark and is not entitled to protection; (2) Complainant’s claim of use does not establish secondary meaning; (3) the Domain name is not confusingly similar to Complainant’s mark;(4) the domain name is comprised of generic and/or descriptive terms; (5) the Domain was not registered or used in bad faith
It is clear that Respondent's domain name is confusingly similar to a registered trademark in which Complainant has rights, Respondent has no rights or legitimate interest in the domain name, and that Respondent has registered and used the dispute domain name in bad faith. Respondent is not entitled to this common descriptive word.
Complainant has established his rights to the domain name under Policy ¶ 4(a)(i) “confusing similarity,” Policy ¶ 4(a)(ii) “no rights or legitimate interests,” and Policy ¶ 4(a)(iii) “bad faith registration and use.”
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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 asserts rights in the WISH BOOK mark (Reg. No. 1,380, 332 issued Jan. 28, 1986), which was registered with the United States Patent and Trademark Office (“USPTO”). The Panel therefore finds that Complainant has sufficient rights in the mark under Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Enter. Rent-A-Car Co. v. Language Direct, FA 306586 (Nat. Arb. Forum Oct. 25, 2004) (finding that the complainant, who registered the ENTERPRISE RENT-A-CAR mark with the USPTO, successfully established rights in the mark).
Respondent’s <mywishbook.com> domain name incorporates Complainant’s WISH BOOK mark, adds the generic term “my,” and the generic top-level domain “.com.” Previous panels have held that the addition of the generic term “my” fails to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (finding that the “domain name MYSPORTSCENTER.COM registered by Respondent is confusingly similar to Complainant’s SportsCenter mark”); see also NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”). Moreover, the addition of a top-level domain is generally considered irrelevant under the Policy. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent contends that the <mywishbook.com> domain name is comprised of common, descriptive terms and as such cannot be found to be identical to Complainant’s mark. In its Additional Submission, Complainant argues that a USPTO trademark registration is presumed valid for purposes of a Policy ¶ 4(a)(i) analysis. The Panel finds that Respondent’s argument is not relevant to Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).
The Panel is reminded that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent’s WHOIS information lists the registrant as “Gordana Bujko,” and that therefore the Respondent is not commonly known by the disputed domain name. The Panel agrees, based on the record, and finds accordingly under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant asserts in its Complaint and its Additional Submission that Respondent is using the disputed domain name to resolve to a commercial website that offers a competing “wish book catalog” that offers products directly competitive with those under Complainant in its catalog function. The Panel finds that this fails to constitute either a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”).
Complainant in its Complaint and its Additional Submission asserts that Respondent’s use of the allegedly confusingly similar disputed domain name was intentional in that it created a likelihood of confusion for commercial gain as to Complainant’s source, sponsorship, affiliation, and endorsement of Respondent’s disputed domain name and corresponding website. The Panel agrees, and finds that Respondent engaged in bad faith registration and use under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
The Panel finds that it can consider the totality of the circumstances when analyzing potential bad faith registration and use, and that it is not limited to the elements listed under Policy ¶ 4(b). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).
Complainant also argues that Respondent has constructive notice of Complainant’s rights in its long-standing and registered WISH BOOK mark, and/or that Respondent had actual notice given the directly competitive nature of the disputed domain name and corresponding website. The Panel finds that Respondent had either or both actual or constructive notice, and also finds that Respondent engaged in bad faith registration and use under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mywishbook.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Nelson A. Diaz
Dated: September 24, 2008
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