Sears Brands, LLC v. Stephane Pacaud
Claim Number: FA0810001231868
Complainant is Sears Brands, LLC (“Complainant”), represented by David
A. Wheeler, of Greenberg Traurig, LLP, Illinois, USA. Respondent is Stephane Pacaud (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <searscatalogue.com>, registered with Enom, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 30, 2008; the National Arbitration Forum received a hard copy of the Complaint on November 3, 2008.
On October 31, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <searscatalogue.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 November 4, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 24, 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 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.
On December 3, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is a broad-line retailer providing merchandising and related services.
Complainant registered the SEARS trademark with the United States Patent and Trademark Office (“USPTO”) on December 17, 1995 (Reg. No. 1,563,683).
Complainant has used the SEARS mark continuously in commerce since at least 1931.
Complainant has more than 2,400 stores in the
Respondent is not commonly known by the <searscatalogue.com> domain name, nor has Respondent ever been the owner or licensee of the SEARS mark.
Respondent registered the <searscatalogue.com> domain name on December 2, 2006.
The disputed domain name resolves to a website that features links to third-party websites which compete with Complainant’s business.
Respondent gains commercially through its disruption of Complainant’s business, by means of “click-through” fees that Respondent receives from the third-party websites.
Respondent’s <searscatalogue.com> domain name is confusingly similar to Complainant’s SEARS mark.
Respondent does not have any rights to or legitimate interests in the domain name <searscatalogue.com>.
Respondent registered and uses the <searscatalogue.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in the SEARS trademark for purposes of Policy ¶ 4(a)(i) through its trademark registration with the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004): “Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”
Complainant contends that Respondent’s <searscatalogue.com> domain name is confusingly similar to its SEARS trademark. The <searscatalogue.com> domain name differs from Complainant’s mark only in that the descriptive term “catalogue” and the generic top-level domain (“gTLD”) “.com” have been added. The addition of a descriptive term that relates directly to a complainant’s business (as “catalogue” does to Complainant’s business) does not sufficiently distinguish a domain name from an incorporated mark for purposes of Policy ¶ 4(a)(i), nor does the addition of a gTLD, because every domain name must contain a top-level-domain. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to a complainant’s AIG mark failed to differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to that complainant’s business); see also Teleplace, Inc. v. De Oliveira, FA 95835 (Nat. Arb. Forum Dec. 4, 2000) (finding that the domain names <teleplace.org>, <tele-place.com>, and <theteleplace.com> are confusingly similar to a complainant’s TELEPLACE trademark).
Therefore, these changes do not eliminate the resulting likelihood of confusion between the domain name and the competing mark. As a result, Respondent’s domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks rights to and legitimate interests in the <searscatalogue.com> domain name. Under Policy ¶ 4(a)(ii), once a complainant makes out a prima facie case against a respondent, that respondent has the burden of showing evidence that it does have rights to or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a complainant asserts that a respondent has no rights or legitimate interests with respect to a domain name, the burden shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Complainant has made out a prima facie case sufficient for purposes of Policy ¶ 4(a)(ii), while Respondent, for its part, has failed to respond to the Complaint. In these circumstances, we are permitted to conclude that Respondent has rights or interests cognizable under the Policy. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):
[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.
Nonetheless, we will examine the record before us to determine if there is any basis for concluding that Respondent has rights or interests in the disputed domain name sufficient to satisfy any of the criteria set out in Policy ¶ 4(c).
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent is not commonly known by the <searscatalogue.com> domain name, nor has Respondent ever been the owner or licensee of the SEARS mark. We also take note of the fact that the pertinent WHOIS record for the disputed domain name lists Respondent as “Stephane Pacaud.” These facts compel us to conclude that Respondent is not commonly known as <searscatalogue.com> pursuant to Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected); see also 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.”
We next observe that there is no dispute as to Complainant’s allegation to the effect that Respondent maintains a website at the <searscatalogue.com> domain name that redirects Internet visitors to a website which competes with Complainant’s business. This use of the <searscatalogue.com> domain name 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). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that a respondent’s use of a disputed domain name to redirect Internet users to a financial services website, which competed with the business of a complainant, was not a bona fide offering of goods or services); 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.”
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that the similarity between its SEARS trademark and the <searscatalogue.com> domain name causes confused Internet visitors to be diverted from Complainant’s website to Respondent’s website resolving from the disputed domain name. Complainant also contends that Respondent, a competitor of Complainant, intended to cause this confusion as a means of disrupting Complainant’s business.
Respondent does not contest these allegations. We therefore accept them and conclude from them that Respondent has registered and uses the disputed domain name in bad faith within the meaning of Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where a respondent’s sites pass users through to that respondent’s competing business). See also Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where a respondent and a complainant were in the same line of business in the same market area). Further see Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between a complainant and a respondent, that respondent likely registered and used a contested domain name in bad faith with the intent to disrupt that complainant's business and create user confusion).
Complainant also contends that Respondent gains commercially through its disruption of Complainant’s business, through the “click-through” fees that Respondent receives from the third-party websites. Again Respondent does not deny this allegation. We therefore conclude that Respondent’s conduct constitutes an intentional use of the disputed domain name for commercial gain through a likelihood of confusion with Complainant’s mark. Pursuant to Policy ¶ 4(b)(iv), this use is further evidence of registration and use of the disputed domain name in bad faith. See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where a respondent used a domain name, for commercial gain, to attract users to a business competitor of a complainant); see also 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.”
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <searscatalogue.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 17, 2008
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