Sears Brands, LLC v. Domain Administrator
Claim Number: FA0810001229547
Complainant is Sears
Brands, LLC (“Complainant”), represented by David AA. Wheeler of Greenberg Traurig, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <searsoutlets.com>, <searscards.com>, <searsgiftregistry.com>, <searskenmore.com>, <searsoutletstore.com> and <searstires.com>, registered with Moniker Online Services, 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 October 15, 2008; the National Arbitration Forum received a hard copy of the Complaint October 16, 2008.
On October 16, 2008 and October 17, 2008, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <searsoutlets.com>, <searscards.com>, <searsgiftregistry.com>, <searskenmore.com>, <searsoutletstore.com> and <searstires.com> domain names are registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the names. Moniker Online Services, Inc. verified that Respondent is bound by the Moniker Online Services, 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 October 21, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 10, 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@searsoutlets.com, postmaster@searscards.com, postmaster@searsgiftregistry.com, postmaster@searskenmore.com, postmaster@searsoutletstore.com and postmaster@searstires.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 14, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain names that Respondent registered, <searsoutlets.com>, <searscards.com>, <searsgiftregistry.com>, <searskenmore.com>, <searsoutletstore.com> and <searstires.com> are confusingly similar to Complainant’s SEARS mark.
2. Respondent has no rights to or legitimate interests in the <searsoutlets.com>, <searscards.com>, <searsgiftregistry.com>, <searskenmore.com>, <searsoutletstore.com> and <searstires.com> domain names.
3. Respondent registered and used the <searsoutlets.com>, <searscards.com>, <searsgiftregistry.com>, <searskenmore.com>, <searsoutletstore.com> and <searstires.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Sears Brands, LLC, is a wholly-owned subsidiary
of Sears Holding Corp., which, collectively, constitutes a
leading retailer providing merchandise and related services. Complainant owns more than 2,400 branded and
affiliated stores in the
Respondent registered the disputed domain names on their respective dates: <searsoutlets.com> on October 18, 2003, <searscards.com> on July 16, 2003, <searsgiftregistry.com> on August 13, 2003, <searskenmore.com> on August 28, 2003, <searsoutletstore.com> on October 3, 2003, and <searstires.com> on March 13, 2003. Respondent is currently using the disputed domain names to resolve to a website that promotes Complainant’s direct competitors through links and advertisements.
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."
Give 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 demonstrated rights through its trademark
registrations for the SEARS mark with the USPTO. The Panel finds that Complainant therefore
has sufficient rights in the mark under Policy ¶ 4(a)(i). See Miller Brewing
Respondent’s
disputed domain names, <searsoutlets.com>, <searscards.com>,
<searsgiftregistry.com>, <searskenmore.com>, <searsoutletstore.com>
and <searstires.com> include Complainant’s SEARS mark,
while adding generic words and phrases, such as “outlets,” “cards,” “gift
registry,” “store,” “tires,” or “kenmore.”
Complainant asserts, and the Panel finds, that these added words merely
represent components of Complainant’s retail operations and wares. The addition of such descriptive words
actually heightens the potential confusion.
See Chanel, Inc. v. Cologne Zone,
D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain
Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes”
is not a distinguishing feature, and in this case seems to increase the
likelihood of confusion because it is an apt term for Complainant’s
business.”). Finally, the addition of
generic top-level domain “.com” is irrelevant under Policy ¶ 4(a)(i). 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 these
disputed domain names are confusingly similar to Complainant’s mark under
Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain names. Because Complainant made the required prima facie case supporting its allegations, the burden shifts to Respondent to show that it does have rights to or legitimate interests under Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); 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).
Respondent’s disputed domain names divert Internet users to Respondent’s
own websites that confront these users with advertisements and links to those
who would seek to directly compete with Complainant. Respondent presumably benefits from this
venture by receiving referral fees.
Faced with such evidence, the Panel finds that Respondent’s use of the
disputed domain names fails to 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 Wells Fargo & Co. v. Lin
Shun Shing, FA 205699 (Nat. Arb. Forum
Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a
website featuring pop-up advertisements and links to various third-party
websites is neither a bona fide offering of goods or services under Policy
¶ 4(c)(i) nor a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii) because the registrant presumably receives
compensation for each misdirected Internet user); see also Bank of Am. Corp. v.
Nw. Free Cmty. Access, FA
180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's
demonstrated intent to divert Internet users seeking Complainant's website to a
website of Respondent and for Respondent's benefit 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).”).
Respondent points to no evidence in the record, including the WHOIS domain name registration information, to suggest that it is commonly known by the disputed domain names. First, the registrant is listed as “Domain Administrator,” which bears no resemblance to the disputed domain names. Moreover, no inference may be made from the evidence that Respondent was ever licensed to use Complainant’s SEARS mark in any way. The Panel finds that Respondent lacks rights and legitimate interests in the disputed domain names 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 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).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Respondent’s disputed domain names resolve to websites that
prominently feature third-party links to Complainant’s direct competitors. Therefore, the Panel finds that Respondent
has engaged in bad faith registration and use of the disputed domain names
pursuant to Policy ¶ 4(b)(iii) by disrupting
Complainant’s business. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982
(Nat. Arb. Forum Feb.
13, 2007) (concluding that the use of a confusingly similar domain name to
attract Internet users to a directory website containing commercial links to
the websites of a complainant’s competitors represents bad faith registration
and use under Policy ¶ 4(b)(iii)); see also Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent
registered and used the domain name in bad faith, pursuant to Policy ¶
4(b)(iii), because it is operating on behalf of a competitor of Complainant . .
.”).
Respondent registered disputed domain names that are confusingly
similar to Complainant’s mark. An
Internet user seeking Complainant’s well-known operations is likely to perceive
the disputed domain names as
locations for Complainant’s web pages.
Such an Internet user would then attempt to link up to Complainant via these
disputed domain names, but be diverted to Respondent’s websites that display
competitive links for Respondent’s own commercial benefit. Respondent’s placement of such advertisements
on websites that correspond to these disputed domain names creates a
substantial likelihood of confusion as to Complainant’s affiliation and
endorsement of the disputed domain names.
Therefore, the Panel finds that Respondent has engaged in bad faith
registration and use under 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 Kmart
v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the
respondent profits from its diversionary use of the complainant's mark when the
domain name resolves to commercial websites and the respondent fails to contest
the complaint, it may be concluded that the respondent is using the domain name
in bad faith pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that Complainant satisfied the elements of ICANN 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 <searsoutlets.com>, <searscards.com>, <searsgiftregistry.com>, <searskenmore.com>, <searsoutletstore.com> and <searstires.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 28, 2008.
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