Sears Brands, LLC v. HappyHours, Inc. c/o Stephen Gilberg
Claim Number: FA0903001254969
Complainant is Sears
Brands, LLC (“Complainant”), represented by David A. Wheeler, of Greenberg Traurig, LLP, Illinois, USA. Respondent is HappyHours, Inc. c/o Stephen
Gilberg (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <kmartwine.com>and <kmartwines.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 30, 2009; the National Arbitration Forum received a hard copy of the Complaint on March 31, 2009.
On March 30, 2009, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <kmartwine.com> and <kmartwines.com> domain names are registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com 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 April 2, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 22, 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@kmartwine.com and postmaster@kmartwines.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 28, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <kmartwine.com> and <kmartwines.com> domain names are confusingly similar to Complainant’s KMART mark.
2. Respondent does not have any rights or legitimate interests in the <kmartwine.com> and <kmartwines.com> domain names.
3. Respondent registered and used the <kmartwine.com> and <kmartwines.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Sears Brands, LLC is an affiliate of Kmart, Inc.; both are wholly-owned subsidiaries of Sears Roebuck & Co. Complainant owns the KMART mark, which has been registered with the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 1,510,355 issued October 25, 1988). The KMART mark is used by Complainant in connection with its 1,400 off-mall retail store operations in forty-nine states. Among the various goods sold within the KMART brand stores (including online through the <kmart.com> domain name), are various wines and related products.
Respondent registered the <kmartwine.com> and <kmartwines.com> domain names on July 20, 2006 and October 23, 2007, respectively. The disputed domain names resolve to parked websites that display pay-per-click links and advertisements for numerous third parties, including Complainant’s competitors.
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’s registration of the KMART
mark with the USPTO adequately demonstrates Complainant’s rights in the mark
under Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v.
The <kmartwine.com> and <kmartwines.com>
domain names contain Complainant’s KMART mark along with the descriptive words
“wine” or “wines,” as well as the generic top-level domain “.com.” The Panel notes that the addition of words
that relate to goods or services sold by a complainant fails to render the
disputed domain names distinct. Rather,
such additions tend to heighten the resulting confusing similarity between the
disputed domain names and the mark because Internet users will likely assume
that the disputed domain names pertain to Complainant in some way. See
Miller Brewing
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has asserted that Respondent lacks rights and legitimate interests in the disputed domain names. Complainant must successfully assert a sufficient prima facie case supporting its allegations before Respondent receives the burden of demonstrating its rights or legitimate interests. The Panel finds that Complainant has met its burden, and therefore Respondent must demonstrate its rights or legitimate interests under Policy ¶ 4(c). 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).”); 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).
Since Respondent has not provided any response in this case,
the sole evidence before the Panel for a Policy ¶ 4(c)(ii)
analysis rests in the Complaint and the WHOIS information. Complainant contends that Respondent lacks
authorization or permission to use Complainant’s mark. Moreover, the WHOIS information lists
Respondent as “HappyHours, Inc. c/o Stephen Gilberg.” There is no evidence by which Respondent can
be said to be commonly known by the either or both of the disputed domain
names. Therefore, the Panel finds that
Respondent lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the
respondent was not commonly known by the <lilpunk.com> domain name as
there was no evidence in the record showing that the respondent was commonly
known by that domain name, including the WHOIS information as well as the
complainant’s assertion that it did not authorize or license the respondent’s
use of its mark in a domain name); see
also
In the instant case, the disputed domain names both resolve
to websites that merely display pay-per-click advertising for Complainant’s
competitors. This common scenario has
been dealt with in numerous occasions before UDRP panels. Most commonly, these parked advertising
ventures, especially when they confront Internet users with such competitive
advertising, are held to constitute diversions.
Consequently, the presumed commercial benefit inherent in the common
receipt of click-through fees solidifies those panels’ findings of a failure to
create a bona fide offering of goods or services pursuant to Policy
¶ 4(c)(i) or a legitimate non-commercial or fair use
pursuant to Policy ¶ 4(c)(iii). See, e.g., ALPITOUR S.p.A. v.
Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the
respondent’s contention of rights and legitimate interests in the
<bravoclub.com> domain name because the respondent was merely using the
domain name to operate a website containing links to various competing
commercial websites, which the panel did not find to be a use in connection
with 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)); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13,
2007) (finding that the respondent was not using the <tesco-finance.com>
domain name in connection with a bona fide offering of goods or services
or a legitimate noncommercial or fair use by maintaining a web page with
misleading links to the complainant’s competitors in the financial services industry). The Panel aligns itself with this weighty
precedent, and therefore finds that Respondent likewise lacks rights and
legitimate interests under Policy ¶¶ 4(c)(i) and
(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The disputed domain names resolve to websites that display
pay-per-click advertising for Complainant’s competitors. This use clearly causes disruption to
Complainant’s business operations, as Internet users seeking Complainant will be
diverted away from their intended destination only to be presented with links
to Complainant’s competition. The Panel
finds this sufficient evidence that Respondent registered and continues to use
the disputed domain names in bad faith under Policy ¶ 4(b)(iii). See Am. Airlines, Inc. v.
Moreover, Respondent has created a likelihood of confusion
as to Complainant’s affiliation with, or sponsorship and endorsement of, the
disputed domain names and corresponding websites. This confusion is presumably for Respondent
commercial benefit via the receipt of click-through referral fees. The Panel finds that Respondent has also
registered and continues to use the disputed domain names in bad faith under
Policy ¶ 4(b)(iv).
See Zee TV USA, Inc. v. Siddiqi, FA
721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent
engaged in bad faith registration and use by using a domain name that was
confusingly similar to the complainant’s mark to offer links to third-party
websites that offered services similar to those offered by the complainant); see also Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA 536190 (Nat. Arb. Forum
Sept. 22, 2005) (“The Panel infers that Respondent receives click-through fees
for diverting Internet users to a competing website. Because Respondent’s domain name is identical
to Complainant’s
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kmartwine.com> and <kmartwines.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: May 12, 2009
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