Sears Brands, LLC v. Marketing Energetics Corporation c/o DNS Admin
Claim Number: FA0903001253372
Complainant is Sears
Brands, LLC (“Complainant”), represented by David A. Wheeler, of Greenberg Traurig, LLP, Illinois, USA. Respondent is Marketing Energetics Corporation c/o DNS Admin (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <craftsmanhandyman.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 March 20, 2009; the National Arbitration Forum received a hard copy of the Complaint on March 23, 2009.
On March 20, 2009, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <craftsmanhandyman.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 March 24, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 13, 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 17, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is a leading retailer providing merchandise and related services, including home merchandise, apparel, equipment and tools, and other products and services.
Complainant offers some of its merchandise under the CRAFTSMAN trademark, which Complainant has registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 551,491, issued December 4, 1951).
Respondent does not have permission to use Complainant’s CRAFTSMAN trademark.
Respondent registered the <craftsmanhandyman.com> domain name on or about November 15, 2007.
The disputed domain name resolves to a website that purports to offer services directly competitive with the business of Complainant.
Respondent’s <craftsmanhandyman.com> domain name is confusingly similar to Complainant’s CRAFTSMAN mark.
Respondent does not have any rights or legitimate interests in the domain name <craftsmanhandyman.com>.
Respondent registered and uses the disputed <craftsmanhandyman.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 presented evidence of its registration of
the CRAFTSMAN trademark with the USPTO.
Complainant has therefore sufficiently established its rights in the
CRAFTSMAN mark under Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v.
The disputed <craftsmanhandyman.com> domain
name contains Complainant’s CRAFTSMAN mark in its entirety, merely adding the generic
descriptive term “handyman” and the generic top-level domain “.com.” The term “handyman” relates strongly to
Complainant’s offering of equipment and tools under the CRAFTSMAN mark. Thus the addition of this term to
Complainant’s mark to form the subject domain name tends to heighten the
confusing similarity that results from the inclusion of Complainant’s entire
mark in the domain. See Miller Brewing
[t]he addition of a descriptive term that describes Complainant’s business to Complainant’s registered mark, does not remove the domain from the realm of confusing similarity with regard to Policy ¶ 4(a)(i).
Moreover, the addition of the top-level domain to form the subject domain name is irrelevant for purposes of a Policy ¶ 4(a)(i) analysis because such an element is required in every domain name. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of a domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar to a competing mark).
Therefore, the disputed domain name is confusingly similar to Complainant’s trademark under Policy ¶ 4(a)(i).
Complainant asserts that Respondent lacks rights to and legitimate interests in the disputed domain name. Complainant must make out a prima facie showing in support of its allegations before Respondent acquires the burden of demonstrating its rights or legitimate interests in the disputed domain name. See, for example, Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, the assertion by a complainant that a respondent has no right to or legitimate interest in a contested domain name is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest nonetheless exists).
Complainant has met its burden of presenting a prima facie showing under the requirements of the Policy. In the circumstances, therefore, Respondent’s failure to respond to the allegations of the Complaint permits us to conclude that Respondent has no rights to or interests in the contested domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):
Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).
We elect, however, to examine the record before us in light of the criteria set out in Policy ¶ 4(c) to determine if there is any basis for concluding that Respondent has any such rights or interests.
We begin by noting that Complainant contends, and Respondent does not deny that Respondent is not permitted to use Complainant’s mark. We also note that the pertinent WHOIS information identifies Respondent as “Marketing Energetics Corporation c/o DNS Admin.” Therefore, we conclude that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights or legitimate interests in the <emitmortgage.com> domain name where that respondent was not authorized to register domain names featuring a complainant’s mark and failed to submit evidence that it was commonly known by the disputed domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a 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).
We also observe that there is no dispute as to Complainant’s further allegation that the disputed domain name resolves to a website that purporting to offer services that compete with the business of Complainant. We therefore conclude that Respondent is not making 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 Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003): “Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.” See also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that a respondent was not using contested domain names either for a bona fide offering of goods or services or a legitimate noncommercial or fair use because that respondent used the domain names to divert Internet users to a website that offered services that competed with those offered by that complainant under its marks).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
We have already concluded that Respondent is using the disputed domain name to route Internet users seeking Complainant to a website which competes with the business of Complainant. This constitutes sufficient evidence of bad faith registration and use of the domain name under Policy ¶ 4(b)(iii). See Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004):
Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
See also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that a respondent registered and used disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by employing them to operate websites that competed with the business of a complainant).
Moreover, the uncontested allegations of the Complaint demonstrate that Respondent has created a likelihood of confusion as to Complainant’s possible endorsement of or affiliation with the disputed domain name and resolving website for presumed commercial gain, given Respondent’s use of Complainant’s mark in the confusingly similar disputed domain name. Thus we conclude that Respondent has also engaged in bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv). See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where a respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to that respondent’s website offering competing computer products and services); see also Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that a respondent’s use of the <arizonashuttle.net> domain name, which contained a complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to that respondent’s website offering competing travel services came within the strictures of Policy ¶ 4(b)(iv)).
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 <craftsmanhandyman.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 1, 2009
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