national arbitration forum

 

DECISION

 

Sears Brands, LLC v. Admin Manager

Claim Number: FA0901001243069

 

PARTIES

Complainant is Sears Brands, LLC (“Complainant”), represented by David A. Wheeler, of Greenberg Traurig, LLP, Illinois, USA.  Respondent is Admin Manager (“Respondent”), Taiwan.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <my-kmart.com>, registered with Wild West Domains, Inc..

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 15, 2009; the National Arbitration Forum received a hard copy of the Complaint on January 16, 2009.

 

On January 16, 2009, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <my-kmart.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name.  Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 January 16, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 5, 2009
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@my-kmart.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On February 9, 2009, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

Complainant owns an extensive family of trademarks and service marks comprised of or featuring the KMART mark. 

 

Kmart, Inc. is wholly-owned subsidiary of Complainant and the third largest retailer in the United States, with approximately $17 billion in revenue for 2008.

 

Complainant also operates an online store at <kmart.com>. 

 

Complainant has numerous registered trademarks with the United States Patent and Trademark Office (“USPTO”) featuring its KMART mark, including Reg. No. 743,912 issued January 15, 1963, and renewed October 26, 2002.

 

Respondent registered the <my-kmart.com> domain name on December 11, 2004. 

 

The disputed domain name previously resolved to a landing site containing links to third-party website. 

 

Currently, the disputed domain does not resolve to an active website.

 

Respondent’s <my-kmart.com> domain name is confusingly similar to Complainant’s KMART trademark.

 

Respondent does not have any rights to or legitimate interests in the <my-kmart.com> domain name.

 

Respondent registered and uses the <my-kmart.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(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.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant’s registration of its mark with the USPTO is sufficient to establish its rights in the KMART mark pursuant to Policy ¶ 4(a)(i).  See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007):

 

As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).

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.” 

 

Respondent’s <my-kmart.com> domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).  The addition of the generic term “my” to the mark, together with the addition of a hyphen and a generic top-level domain, does not differentiate the disputed domain name from Complainant’s mark.  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”); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003):

 

[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).

 

See also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that affixing a gTLD to a contested domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).

 

The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(i). 

 

Rights or Legitimate Interests

 

Complainant must make out a prima facie case in support of its allegations.  Once that is accomplished, the burden shifts to Respondent to prove that it has rights to or legitimate interests in the disputed domain name sufficient for purposes of Policy ¶ 4(a)(ii).  See 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 a complainant, the burden shifts to a respondent to demonstrate its rights to or legitimate interests in a disputed domain name pursuant to Policy ¶ 4(c)); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have rights to or legitimate interests in the domain name).

 

Complainant has established its prima facie case pursuant to Policy ¶ 4(a)(ii), while Respondent, for its part, has not answered the Complaint. We are therefore entitled to presume that Respondent’s failure to respond demonstrates a lack of rights and legitimate interests on Respondent’s part.  See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002):

 

Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.

 

See also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004):

 

Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name.  It also allows the Panel to accept all reasonable allegations set forth…as true.

 

Nonetheless, we elect to examine the available record to determine if there is any basis for concluding that Respondent has rights or legitimate interests in the contested domain name sufficient for purposes of Policy ¶ 4(c). 

 

We begin by noting that there is no dispute as to Complainant’s allegation to the effect that the disputed domain name previously resolved to a landing site displaying links to third-party commercial websites, many of which directly competed with Complainant’s retail business, both in-store and online.  We may presume from the circumstances here presented that Respondent’s website is a pay-per-click site from which Respondent profits by way of referral fees whenever confused Internet users click-through the advertised links on the assumption of an affiliation of the site with Complainant.  Respondent’s use of the disputed domain name in this fashion is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii).  See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website via a contested 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 ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”).

 

We also observe that there is no dispute as to Complainant’s assertion that the disputed domain name does not currently resolve to an active website.  Such inactive use of the disputed domain name is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005):

 

The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy  ¶ 4(c)(iii).

 

See also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that its failure to provide a product or service or to develop a website in association with a contested domain name demonstrates that a respondent has not established any rights to or legitimate interests in the domain name).

 

Finally in this connection, we note that the pertinent WHOIS information for Respondent lists the registrant as “Admin Manager.”  Without further evidence on this point, we are compelled to conclude that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the pertinent WHOIS information, suggesting that that respondent was commonly known by the disputed domain name); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a respondent does not have rights in a domain name where the respondent is not known by the mark in question).

 

The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent use of the disputed domain name to attract confused Internet users to its competing website must disrupt Complainant’s business.  Respondent’s use of the disputed domain name in this manner is therefore evidence of bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(iii).  See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a contested 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 of the domain under Policy ¶ 4(b)(iii)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that a respondent registered and used a disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because that respondent used the domain name to advertise goods and services of a complainant’s competitors, thereby disrupting that complainant’s business).

 

In addition, Respondent’s presumed commercial gain acquired through the described use of the disputed domain name demonstrates bad faith registration and use of the domain by Respondent.  By using Complainant’s entire mark in the disputed domain name, thereby trading on the goodwill Complainant has engendered in its mark, Respondent profits from the confusion of Internet users who click through the advertised links while assuming an association of the related links with Complainant.  This is further evidence of Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iv).  See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006):

 

Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).

 

See also MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that a respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking a complainant’s website to its own website for commercial gain where that respondent likely profited from this diversion scheme).

 

Finally under this head, Respondent’s current inactive use of the <my-kmart.com> domain name also demonstrates bad faith registration and use of the domain pursuant to Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that a respondent’s inactive use of a disputed domain name satisfies the requirements of ¶ 4(a)(iii) of the Policy).

 

For these reasons, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

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 <my-kmart.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.

 

 

 

 

Terry F. Peppard, Panelist

Dated:  February 20, 2009

 

 

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