Sears Brands, LLC v. Cho Min Ho
Claim Number: FA0905001261778
Complainant is Sears Brands, LLC (“Complainant”), represented by David
A. Wheeler, of Greenberg Traurig, LLP, Illinois, USA. Respondent is Cho Min Ho (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <searsapplianceoutlet.com>, registered with Korea Information Certificate Authority, Inc. d/b/a Domainca.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
James A Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 8, 2009; the National Arbitration Forum received a hard copy of the Complaint on May 11, 2009. The Complaint was submitted in both Korean and English.
On May 10, 2009, Korea Information Certificate Authority, Inc. d/b/a Domainca.com confirmed by e-mail to the National Arbitration Forum that the <searsapplianceoutlet.com> domain name is registered with Korea Information Certificate Authority, Inc. d/b/a Domainca.com and that Respondent is the current registrant of the name. Korea Information Certificate Authority, Inc. d/b/a Domainca.com has verified that Respondent is bound by the Korea Information Certificate Authority, Inc. d/b/a Domainca.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 May 19, 2009, a Korean language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 8, 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 15,2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed\ James A. Crary 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <searsapplianceoutlet.com> domain name is confusingly similar to Complainant’s SEARS mark.
2. Respondent does not have any rights or legitimate interests in the <searsapplianceoutlet.com> domain name.
3. Respondent registered and used the <searsapplianceoutlet.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Sears Brands, LLC, is a wholly-owned subsidiary
of Sears Holding Management Corporation, which comprises a leading broadline
retail operation for merchandise and related services. Complainant offers under its SEARS mark a
wide range of such products and services through over 2,400 branded and
affiliated stores in
Respondent registered the <searsapplianceoutlet.com> domain name on November 9, 2005. The disputed domain name resolves to a website that features click-through advertising for 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 SEARS
mark with the USPTO adequately demonstrates Complainant’s rights in the mark
under Policy ¶ 4(a)(i). See AOL LLC v. Interrante, FA 681239
(Nat. Arb. Forum May 23, 2006) (finding that where the complainant had
submitted evidence of its registration with the USPTO, “such evidence
establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Reebok Int’l Ltd. v.
contains the SEARS mark with the following changes: (1) the generic terms
“appliance” and “outlet” are included; and (2) the generic top-level domain
“.com” has been added. The Panel finds
that these alterations do no sufficiently distinguish the disputed domain name
from the mark, and that the disputed domain name is therefore confusingly
similar to the mark under Policy ¶ 4(a)(i). See Jerry Damson, Inc. v.
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 name. Because Complainant has set forth a sufficient prima facie case, Respondent bears the burden of demonstrating that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See 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); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”).
Complainant has denied any authorization on behalf of Respondent to use its SEARS mark in any form. Moreover, the WHOIS information lists Respondent as “Ali Aziz.” The Panel therefore finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent is using the disputed domain name to resolve to a website that includes click-through links for Complainant’s director competitors. The Panel presumes this activity was undertaken to acquire commercial benefit via click-through referral fees. The Panel finds that this does 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). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar 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 Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain name resolves to a website that promotes Complainant’s direct competitors with hyperlinks and advertisements. This use disrupts Complainant’s business as it encourages Internet users to do business with Complainant’s competitors. The Panel therefore finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
The Panel also finds that Respondent’s confusingly similar
disputed domain name, which resolves to a commercial website promoting
Complainant’s competitors, creates a likelihood of confusion as to
Complainant’s affiliation and endorsement of the disputed domain and
corresponding website, which constitutes bad faith registration and use under
Policy ¶ 4(b)(iv).
See Asbury Auto. Group, Inc. v.
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 <searsapplianceoutlet.com> domain name be TRANSFERRED from Respondent to Complainant.
James A Crary, Panelist
Dated: June 29, 2009
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