Sears Brands, LLC v. Rahul Rahul
Claim Number: FA0904001256909
Complainant is Sears Brands, LLC (“Complainant”), represented by David
A. Wheeler of Greenberg Traurig, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <searssurvey.com>, registered with Red Register, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically April 9, 2009; the National Arbitration Forum received a hard copy of the Complaint April 9, 2009.
On April 22, 2009, Red Register, Inc. confirmed by e-mail to the National Arbitration Forum that the <searssurvey.com> domain name is registered with Red Register, Inc. and that Respondent is the current registrant of the name. Red Register, Inc. verified that Respondent is bound by the Red Register, Inc. registration agreement and thereby has 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 27, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 18, 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@searssurvey.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 22, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <searssurvey.com>, is confusingly similar to Complainant’s SEARS mark.
2. Respondent has no rights to or legitimate interests in the <searssurvey.com> domain name.
3. Respondent registered and used the <searssurvey.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a broadline retailer providing merchandise
and related services under the SEARS mark, which Complainant registered with
the United States Patent and Trademark Office (“USPTO”) October 26, 1995 (Reg.
No. 1,529,006). Complainant has more
than 2,400 SEARS-branded and affiliated stores in the
Respondent registered the <searssurvey.com> domain name February 23, 2007. The disputed domain name redirects to the <bonuspromooffer.com> website, which promotes the sale of an alleged virus protection program that is actually harmful to those who download it.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 established rights in the
SEARS mark for purposes of Policy ¶ 4(a)(i) through
its trademark registration with the USPTO.
See 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 Morgan Stanley v. Fitz-James, FA
571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of
the evidence that the complainant had registered its mark with national
trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights
in the mark for purposes of Policy ¶ 4(a)(i).”).
Complainant contends that
Respondent’s disputed <searssurvey.com>
domain name is confusingly similar to its
SEARS mark. The <searssurvey.com> domain name differs from Complainant’s mark in two ways:
(1) the descriptive term “survey” has been added to the end of the mark; and
(2) the generic top-level domain (“gTLD”) “.com” has been added. The Panel finds that the addition of a
descriptive term does not sufficiently distinguish a domain name from an
incorporated mark for the purposes of Policy ¶ 4(a)(i). See
Google Inc. v. Xtraplus Corp., D2001-0125
(WIPO Apr. 16, 2001) (finding that the respondent’s domain names were
confusingly similar to Complainant’s GOOGLE mark where the respondent merely
added common terms such as “buy” or “gear” to the end). The Panel also
finds that the addition of a gTLD also does not reduce the likelihood of
confusion between the domain name and the mark because every domain name must
contain a gTLD. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409
(WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary
descriptive word . . . nor the suffix ‘.com’ detract from
the overall impression of the dominant part of the name in each case, namely
the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied). Because the likelihood that Internet visitors
will confuse the disputed domain name with Complainant’s mark is not eliminated
or diminished by these changes, the Panel finds that Respondent’s disputed
domain name is not sufficiently distinguished from Complainant’s mark pursuant
to Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i) by showing that the domain is confusingly similar to Complainant’s protected mark.
Complainant contends that Respondent lacks all rights and legitimate interests in the <searssurvey.com> domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights and legitimate interests in the disputed domain name. The Panel finds that Complainant made a prima facie case under Policy ¶ 4(a)(ii). 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 Wild West Domains, Inc. v. Jung, D2004-0243 (WIPO May 18, 2004) (“It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest in the Domain Name . . . . It is incumbent on Respondent to contribute to the fact-finding and if contrary to that, it rather incurs in default, there is nothing that the Panel could do to discuss in its benefit.”).
Complainant contends that Respondent is not commonly known
by the <searssurvey.com>
domain name and Complainant set out that it has never authorized Respondent to
use the SEARS mark in any way. Respondent has been identified as “Rahul Rahul,” and nothing else in the WHOIS
record for the disputed domain name suggests that Respondent has ever been
commonly known by any variant on the SEARS mark. Because Respondent is not identified as any
variant on the SEARS mark and has failed to show any evidence contrary to
Complainant’s contentions, the Panel finds that Respondent is not commonly
known by the <searssurvey.com> domain name pursuant
to Policy ¶ 4(c)(ii). See 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.”); see also Instron Corp. v.
Kaner, FA 768859
(Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not
commonly known by the <shoredurometer.com> and <shoredurometers.com>
domain names because the WHOIS information listed Andrew Kaner c/o Electromatic
a/k/a Electromatic Equip't as the registrant of the disputed domain names and
there was no other evidence in the record to suggest that the respondent was
commonly known by the domain names in dispute).
Respondent redirects Internet visitors who use the <searssurvey.com> domain name to a website that purports to offer anti-virus software, but which actually tricks the unsuspecting visitor to the site into downloading harmful software. The Panel finds that the use of the <searssurvey.com> domain name to impose harmful software, or “malware,” upon unwitting Internet users is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Google Inc. v. Gridasov, FA 474816 (Nat. Arb. Forum July 5, 2005) (finding the respondent’s use of the disputed domain name, which attempted to download malicious computer software onto Internet users’ computers, 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 Dell Inc. v. Versata Software, Inc., FA 1246916, (Nat. Arb. Forum Apr. 10, 2009) (finding that the respondent was using the disputed domain name to resolve to a website that attempted to download malware onto Internet users’ computers, which 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)).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii) to show that Respondent has no has rights to or legitimate interests in the domain name containing Complainant’s protected mark.
Complainant also contends that Respondent is gaining
commercially through this diversion, through Respondent’s receipt of fees or
other revenue derived from the use of malware.
Because Respondent has intentionally used the disputed domain name for
commercial gain through a likelihood of confusion with Complainant’s mark, and
has done so in a particularly malicious way, the Panel finds that, pursuant to
Policy ¶ 4(b)(iv), Respondent’s use of the disputed
domain name is also evidence of registration and use in bad faith. See
24/7 Real Media Inc. v. Schultz, D2009-0043
(WIPO March 5, 2009) (finding the respondent’s use of a website to distribute
malware was an attempt to attract Internet users to its website or other online
location for commercial gain, by creating a likelihood of confusion with the
complainant’s mark.); see also Dell Inc. v. Versata Software, Inc., FA 1246916, (Nat. Arb. Forum Apr. 10, 2009) (finding
that the respondent’s use of the disputed domain name to introduce
malware onto Internet users’ computers is presumably an attempt by the
respondent to profit from the confusingly similar disputed domain name through
the receipt of fees for engaging in this behavior or the use of information
gained from the malware software to obtain some form of revenue and is thus
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii) to show bad faith registration and use.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <searssurvey.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 5, 2009.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum