Sears Brands, LLC v. Zx Domains a/k/a Sezar Sak
Claim Number: FA0811001234962
Complainant is Sears Brands, LLC (“Complainant”), represented by David
A. Wheeler, of Greenberg Traurig, LLP, Illinois, USA. Respondent is Zx Domains a/k/a Sezar Sak (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <searsrewards.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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On November 21, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 11, 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@searsrewards.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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:
1. Respondent’s <searsrewards.com> domain name is confusingly similar to Complainant’s SEARS mark.
2. Respondent does not have any rights or legitimate interests in the <searsrewards.com> domain name.
3. Respondent registered and used the <searsrewards.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Sears Brands, LLC, owns numerous trademark
registrations for the SEARS mark with the United States Patent and Trademark
Office (“USPTO”) (e.g., Reg. No. 1,563,683 issued
Respondent’s <searsrewards.com> domain name was
registered on
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.
The Panel finds that Complainant has established rights in
the SEARS mark for the purposes of Policy ¶ 4(a)(i) through registration of the
mark with the USPTO. 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 Microsoft Corp. v. Burkes, FA 652743
(Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the
MICROSOFT mark through registration of the mark with the USPTO.”); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154
(WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of
paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in
a country other than that of the respondent’s place of business).
The <searsrewards.com>
domain name contains Complainant’s SEARS mark in its entirety followed by the
generic term “rewards” and the generic top-level domain (“gTLD”) “.com.” First,
the Panel considers the gTLD to be irrelevant to a Policy ¶ 4(a)(i) analysis.
Moreover, the Panel determines that the addition of a generic term such as “rewards”
does not adequately distinguish the disputed domain name. As a consequence, the
Panel finds that the <searsrewards.com> domain name is confusingly
similar to Complainant’s SEARS mark pursuant to Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum
The Panel concludes that Complainant has sufficiently established Policy ¶ 4(a)(i).
Before the Panel may proceed to examine the record under
Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent lacks rights and legitimate
interests in the disputed domain name. The Panel finds that Complainant has met
this threshold and that the burden is accordingly shifted to Respondent to
prove that it has rights or legitimate interests in the disputed domain name. 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 Policy ¶ 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 Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13,
2007) (finding that once a prima facie case has been established by the
complainant under Policy ¶ 4(c), the burden then shifts to the respondent to
demonstrate its rights or legitimate interests in the disputed domain name).
Respondent has failed to reply to the Complaint.
Accordingly, the Panel may presume that Respondent lacks rights and legitimate
interests in the disputed domain name. Nonetheless, the Panel will proceed to
examine the record in consideration of the elements listed under Policy ¶ 4(c).
See
Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum
Respondent is identified in the WHOIS information for the
disputed domain name as “Zx Domains a/k/a Sezar Sak.” Moreover, Complainant
asserts that it has at no time granted permission or otherwise authorized
Respondent to use the SEARS mark in any way. Without any further information,
the Panel finds that Complainant is not commonly known by the <searsrewards.com>
domain name pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v.
Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the
respondent failed to establish rights and legitimate interests in the
<emitmortgage.com> domain name as the respondent was not authorized to
register domain names featuring the complainant’s mark and failed to submit
evidence of that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006)
(concluding that the respondent was not commonly known by the disputed domain
names where the WHOIS information, as well as all other information in the
record, gave no indication that the respondent was commonly known by the
disputed domain names, and the complainant had not authorized the respondent to
register a domain name containing its registered mark).
The disputed domain name resolves to a website displaying a
series of links and advertisements to third-party goods and services that
compete with Complainant. Complainant argues, and the Panel agrees, that
Respondent must commercially benefit from these links and advertisements
through pay-per-click fees. For these reasons, the Panel determines that
Respondent is not making either a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) of the <searsrewards.com>
domain name. See Disney Enters., Inc.
v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the
operation of a pay-per-click website at a confusingly similar domain name was
not 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 Vance
Int’l, Inc. v. Abend, FA 970871
(Nat. Arb. Forum June 8, 2007) (concluding that the operation of a
pay-per-click website at a confusingly similar domain name does not represent a
bona fide offering of goods or
services or a legitimate noncommercial or fair use, regardless of whether or
not the links resolve to competing or unrelated websites or if the respondent
is itself commercially profiting from the click-through fees).
The Panel concludes that Complainant has sufficiently established Policy ¶ 4(a)(ii).
The disputed domain name resolves to links and
advertisements for direct competitors of Complainant. The Panel finds this
sufficient to demonstrate that Respondent registered and is using the <searsrewards.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iii) for the purpose of
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
And finally, as Complainant has contended, the Panel finds
that Respondent is presumably commercially benefiting from its competing use of
the confusing similar disputed domain name through the accrual of pay-per-click
or similar referral fees. Therefore, the Panel considers this to be additional
evidence that Respondent registered and is using the <searsrewards.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See
The Panel concludes that Complainant has sufficiently established 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 <searsrewards.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: December 29, 2008
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