Sears Brands, LLC v. Aleksandr Ovyechkin
Claim Number: FA0904001260019
Complainant is Sears Brands, LLC (“Complainant”), represented by Paul
D. McGrady, of Greenberg Traurig, LLP, Illinois, USA. Respondent is Alek Ovyechkin (“Respondent”),
REGISTRAR
The domain name at issue is <searselectronics.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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On April 29, 2009, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <searselectronics.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 May 1, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 21, 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@searselectronics.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 <searselectronics.com> domain name is confusingly similar to Complainant’s SEARS mark.
2. Respondent does not have any rights or legitimate interests in the <searselectronics.com> domain name.
3. Respondent registered and used the <searselectronics.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Sears Brands, LLC, operates a chain of retail stores, which sell a variety of goods and services including electronic goods. Complainant utilizes the SEARS mark in order to promote and operate its business. Complainant has registered its SEARS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,563,683 issued Dec. 17, 1995).
Respondent registered the disputed domain name on July 31, 2007. Respondent’s disputed domain name resolves to a website that displays links to products directly competing with Complainant’s product offerings.
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.
Complainant has provided evidence of the registration of its
SEARS mark with the USPTO. The Panel
finds this registration sufficiently establishes Complainant’s rights in the
mark pursuant to Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v.
Respondent’s disputed domain name contains Complainant’s SEARS mark with the additions of the descriptive term “electronics” and the generic top-level domain “.com.” The Panel finds neither of these alterations sufficiently distinguish the disputed domain name from Complainant’s mark and thus finds Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Nat. Arb. Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights or
legitimate interests in the disputed domain name. Complainant is required to establish a prima facie case in support of its
allegations and then the burden shifts to Respondent to prove it possesses
rights or legitimate interests in the disputed domain name. The Panel finds Complainant has adequately
established a prima facie case. Because Respondent failed to respond to the
Complaint, the Panel may assume Respondent does not possess rights or
legitimate interests in the disputed domain name. American
Express Co. v. Fang Suhendro, FA 129120
(Nat. Arb. Forum
Complainant asserts Respondent is using the disputed domain name to display commercial click-through links to third-party websites offering competing products for sale. The Panel finds Respondent’s use of the disputed domain name is not a bona fide offering of goods under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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 Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute 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)).
Furthermore, Complainant contends Respondent is not commonly
known by the disputed domain name. The
WHOIS information lists Respondent as “Aleksandr
Ovyechkin.” The record provides no evidence supporting the conclusion that Respondent
is or ever has been commonly known by the disputed domain name. Thus, the Panel finds that Respondent is not
commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding
that the respondent does not have rights in a domain name when the respondent
is not known by the mark); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that
without demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends Respondent is using the disputed domain name to disrupt Complainant’s business through the operation of a website that displays links to Complainant’s competitors. The Panel finds Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business); see also 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)).
Furthermore, Complainant contends Respondent has engaged in
its use of the confusingly similar disputed domain name presumably with the
intent to profit from the receipt of referral fees through its creation of a
likelihood of confusion as to Complainant’s affiliation with the disputed
domain name. The Panel presumes Respondent is receiving referral fees for its
use of the confusingly similar disputed domain name. Therefore, the Panel finds
Respondent has engaged in bad faith registration and use pursuant to Policy ¶
4(b)(iv). See
The Panel finds 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 <searselectronics.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: June 10, 2009
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