Sears Brands, LLC v. William Henderson
Claim Number: FA0906001267621
Complainant is Sears Brands, LLC (“Complainant”), represented by David
A. Wheeler, of Greenberg Traurig, LLP, Illinois, USA. Respondent is William Henderson (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <my-gofer.com>, registered with Godaddy.com, 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 June 10, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 12, 2009.
On June 11, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <my-gofer.com> domain name is registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 June 15,
A timely Response was received and determined to be complete on July 6, 2009.
A timely Additional Submission from the Complainant was received and determined to be complete on July 10, 2009.
A timely Additional Submission from the Respondent was received and determined to be complete on July 15, 2009.
As the said Additional Submissions comply with the Forum’s Supplemental Rule 7, they will be considered by the Panel.
On July 15, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant informs that it is (together with the affiliate company Sears Roebuck & Co) a wholly owned subsidiary of Sears Holdings Corp., and that the Sears group is a leading broadline retailer providing merchandise and related services. The projected group revenues for 2009 are close to USD 47 billion and Sears offers products and services through more than 2,400 Sears-branded and affiliated stores in the U.S. and Canada. In addition to <sears.com>, the Sears group also offers a variety of merchandise and services through a number of well-known speciality on-line catalogs, where the more recent addition is <mygofer.com>.
Complainant argues that the disputed domain name incorporates the Complainant’s trademark MYGOFER in its entirety and that it is confusingly similar to the mark as the only distinction is the inclusion of the generic elements “–” and “.com.” Complainant refers to previous UDRP decisions in support of the above statement.
Complainant states that its trademark rights predate the February 2008 registration of <my-gofer.com>, and that Respondent has no trademark rights or other intellectual property rights to the domain name.
According to the Complainant, the Respondent’s use of the disputed domain name is unauthorized, the Respondent has never operated any bona fide or legitimate business in conjunction with <my-gofer.com>, is not making a protected non-commercial or fair use of the domain name, and is only using the same to generate revenue from optimized pay-per-click pages provided by the Registrar.
Finally, the Complainant states that the Respondent has both registered and is using the disputed domain name in bad faith. Respondent is accused of both constructive and actual knowledge of Complainants trademark registrations – the latter due to the connection between the registered marks and the additional element “-.”
Complainant argues that the mere fact that the Respondent has registered a domain name that incorporates “the famous trademarks of a well-known retailer is alone sufficient to give rise to an inference of bad faith,” and that Respondent uses the domain name to misdirect Internet users seeking information about Complainant's goods and services to websites which offer pay-per-click links, thereby also intentionally attempting to attract Complainant's customers to its web site for financial gain by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation, and/or endorsement of the Respondent's websites or locations.
Respondent denies all of Complainant’s accusations.
The Respondent informs that it was previously a holder of the domain name <mygopher.com> from 1996 to February 2008 (Exhibit 1 of the Response showing Whois information regarding the said domain name), and that upon the sale of the domain name, Respondent registered <my-gopher.com> and <my-gofer.com>, the latter as an alternative spelling. Respondent claims to have no knowledge of the fact that the Complainant was the ultimate buyer of <mygopher.com>, as the offering was made through an agent (Exhibit 4 of the Response is a copy of the letter from the said agent).
Respondent denies that the disputed domain name is identical or confusingly similar to Complainant’s trademark MYGOFER, arguing that the element “-” is not generic but in fact creates a new mark, MY-GOFER.
Respondent refers to Complainant’s statement that the MYGOFER mark is famous and the argument that Respondent has received commercial gain from the disputed domain name, and points out that none of these are supported by any demonstrable evidence. Respondent denies having listed <my-gofer.com> for sale or to have received any compensation for any click-through revenue generated by the site. Respondent further denies to have offered competitive products to the Complainant, by design or via the parked page of the registrar.
The Respondent asserts that he has written business plans (copy provided as Exhibit 6 of the Response) for use of the disputed domain name in a future enterprise, and that <my-gofer.com> was registered in good faith as a variant spelling of <my-gopher.com> and to guard against cybersquatting.
C. Additional Submissions
In the Additional Complaint, the Complainant repeats its arguments, with the following additions:
- Respondents prior use and sale of the <mygopher.com> domain name is not relevant to this case
- Respondent has not provided any evidence that he was ever commonly known by <mygopher.com>, or that he is commonly known by <my-gofer.com>
- Respondent registered the disputed domain name after completing the sale of <mygopher.com>, realizing that the domain name had potential value other than a legitimate or bona fide business use
- Respondent’s hand written notes are not enough to show demonstrable preparation to use
- Complainant denies having argued that MYGOFER is a famous mark, but merely stating that Complainant owns several famous marks, by which the MYGOFER mark is positioned
Respondent once again denies the accusations made by the Complainant, and accuses the Complainant to having “gone so far as to provide “evidence” that goes beyond misleading to be blatantly and obviously false”.
Respondent explains how the automatic “Buying Agent” of the Registrar works, and illustrates the process by producing the same “for sale” offer for some of Complainant’s domain names (and others) as Complainant has provided as evidence for the disputed domain name, thereby – according to the Respondent – contradicting Complainant’s alleged evidence that Respondent has offered <my-gofer.com> for sale.
Respondent asserts that, although he had to sell the <mygopher.com> domain name, he registered the disputed domain name as a replacement as he continued to have legitimate business interests in the domain name and had no reason to believe that his business offering would compete with that of the <mygopher.com> purchaser.
Reverse Domain Name Hijacking
Respondent demands a finding of reverse domain name hijacking against Complainant.
Complainant is the owner of the following
No. 3,559,110 MYGOFER in Class 39 (“personal delivery services, namely, delivery of goods by bicycle, car, truck, and air”), first used in commerce on March 15, 2007, application filed on June 14, 2006 and the mark registered on January 6, 2009; and
No. 3,530,939 MYGOFER in Class 35 (“online retail services featuring general merchandise; retail store services featuring general merchandise”), first used in commerce on March 15, 2007, application filed on April 30, 2008 and the mark registered on November 11, 2008.
Respondent registered the disputed domain name on February 6, 2008.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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 Complainant has established rights in the MYGOFER trademark, through its registration with the United States Patent and Trademark Ofice (“USPTO”), dating back to the date it was filed with the USPTO (Reg. No. 3,559,110, issued January 6, 2009; filed June 14, 2006). See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date); see also Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”).
The relevant part of the disputed domain name is “my-gofer.” See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
As stated by the Complainant, merely "interrupting" the registered
trademark with a hyphen does not make use of the trademark less confusing. Adding a hyphen to a mark fails to
distinguish the domain name from that mark for the purposes of Policy ¶ 4(a)(i). See Health Devices Corp. v.
Although “my-gofer” is not identical to MYGOFER, the Panel concludes that the disputed domain name is confusingly similar with Complainant’s trademark.
Complainant’s assertion that Respondent lacks rights or legitimate interests in the disputed domain name establishes a prima facie case under the Policy. Once a prima facie case has been established, the burden shifts to Respondent to demonstrate that it does have rights or legitimate interests pursuant to Policy ¶ 4(c). See Document Tech., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”).
Respondent is obviously not licensed by Complainant to use and register <my-gofer.com> or similar, nor has the Respondent any other permission from Complainant or any trademark rights of his own.
The remaining question is: In the lack of “rights,” has the Respondent any “legitimate interests?”
Respondent claims that the <my-gofer.com> domain name is parked free with the registrar, GoDaddy, and that Respondent is not responsible for the competing links displayed on the website. However, Respondent bears the ultimate responsibility for the content of the website, including links, because it is Respondent who has authorized the service provider to use the domain name at issue. See Ideal Products, LLC v. Manila Industries, Inc., FA 819490 (Nat. Arb. Forum Nov. 30, 2006) (“Respondent cannot duck its responsibility for the site by saying that others choose the content. Passive holding of a domain name is neither evidence of or against bad faith, and must be evaluated in light of all of the circumstances relating to the domain name.”); see also StaffEx Corp. v. Pamecha, FA 1029545 (Nat. Arb. Forum Aug. 27, 2007) (“Respondent has alleged that the registrar, GoDaddy, has posted these [competing] links for the website associated with the Domain Name. However, the Panel finds this is no excuse and holds Respondent accountable for the content posted to the site that resolves from the Domain Name.”).
The Respondent contends that he held the domain name <mygopher.com> from 1996 to 2008, and that he was commonly known by that name during that time. While the said domain name is not at issue in this proceeding, Respondent – as it is understod by this Panel – is of the opinion that this previous ownership indicates that Respondent is commonly known also by the disputed domain name - <my-gofer.com> being an “alternate address” and a continuity of the business conducted under <mygopher.com>.
The Panel is not
convinced that Respondent was ever known by <mygopher.com> or any similar domain name, trademark or word.
The WHOIS record provided by Respondent (Exhibit 1) shows that the registered
owner of <mygopher.com> was a
company called MyGopher, Inc, at
Respondent further contends that he has bona fide business use intent for the domain name, referring to Policy ¶ 4(c)(i) (“use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services”), and has provided a 2 1/2-paged hand written business plan as Exhibit 6 of the Response.
Policy ¶ 4(c)(i) requires that use or demonstrable preparations to use refer to the domain name at issue. In this respect, the Panel will therefore not consider any alleged use of the <mygopher.com> or preparations to use the <my-gopher.com> domain names.
There is no clear and straightforward UDRP praxis on what is considered sufficient evidence to constitute demonstrable preparations to use. The result will naturally depend on the circumstances of each case and vary from case to case. This Panel has conducted a study of a large number of previous UDRP decisions to determine the accepted level of evidence. The three belowmentioned cases may serve as “representative indications.”
In DigiPoll Ltd. v. Raj Kumar (WIPO Case No.D2004-0939), the Panel ruled against Respondent, because “there is no evidence of a business plan or partners, the proposed technology or how it would function, how the business would be financed, a timetable or, indeed, evidence of a single fact about the business other than the intention to develop it at some indeterminate time in the future.”
In Televisa v. Retevision Interactiva S.A. (WIPO Case No. D2000-0264), the Panel concluded that “Respondent has evidenced that it had made substantial investments, adopted the name "ERESMAS" as its corporate name and as the name of one of its subsidiaries and filed numerous "ERESMAS" trademarks prior to the notification of the Complaint.”
In Safeguard Operations LLC v. Safeguard Storage, FA672431 (Nat. Arb. Forum June 5, 2006), the respondent had undertaken a number of activities in furtherance of its plan to open this business, including purchasing land on which to operate, engaging an architectural firm to design its facility, purchasing advertisements for its business, as well as registering with Michigan authorities for permission to operate its business under the assumed name “Safeguard Storage.”
The hand written notes in the present case do not contain any budget, time table or any other aspects of a considerable and valid business plan. While the notes may well serve as one of many indications of Respondent’s demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, they are certainly not enough to fulfil the requirement of Policy ¶ 4(c)(i), without any other supporting documents.
Considering all the abovementioned facts and circumstances, the Panel concludes that the Respondent has no rights or legitimate interests in <my-gofer.com>, and finds for Complainant under Policy ¶ 4(a)(ii).
As stated above, Policy ¶ 4(a) finally requires that the Complainant also must prove that the domain name has been registered and is being used in bad faith.
In this respect, the Panel notes that the Respondent has acted somewhat peculiar when he registered the disputed domain name, but also that the Complainant has provided a couple of inadequate statements in its efforts to convince the Panel.
At page 6, 2nd paragraph of the Complaint, Complainant argues that “the mere fact that the Respondent has registered a domain name that incorporates the famous trademarks of a well-known retailer is alone sufficient to give rise to an inference of bad faith.” Like Respondent, the Panel can not read this in any other way than a statement that Complainants “trademarks” are to be considered well-known. First, there is no evidence that MYGOFER was a well-known mark at the time of Respondent’s registration of the disputed domain name. In fact, Respondent has shown some documentation proving that the mark as such was in limited use and not well known for a period of time at least. In its Additional Submission, the Complainant has rightly amended the well-known claim. Secondly, Complainant refers to its trademarks (plural), likely citing the two registrations for MYGOFER (shown in Exhibit C of the Complaint). The Panel notes that only one of these registrations, namely No. 3,559,110 MYGOFER in Class 39, is filed before Respondent’s domain name registration/s of February 6, 2008. Although both registrations claim first use in commerce since March 15, 2007, the filing date is important in considering the possibility of bad faith.
The fact remains, however, that the Complainant - at the time Respondent registered <my-gofer.com> - had a pending trademark application for MYGOFER, filed on June 14, 2006 and with a claimed first use in commerce since Matrch 15, 2007.
The Respondent accuses the Complainant to have intentionally hid its identy from the Respondent when Complainant purchased the <mygopher.com> domain name. According to the experience of this Panel, it is not unusual for a trademark owner to buy a domain name through an agent, especially not when the buyer is a well known company, in order to avoid a raise in price once the seller becomes aware of the identity of the buyer.
The fact is that, even if the Respondent did not know the true identity
of the buyer at that time, Respondent was in a situation of having sold
whatever rights he may have had to <mygopher.com> and should have
realized that he could not register two very similar domain names shortly after
without first having checked that the new domain names did not interfere with
the rights of someone else. Independently of Respondents knowledge that <mygopher.com>
now was in the hands of another party, checking the USPTO database for
registered or pending trademarks is a necessary precaution. See
The Panel finds Respondent’s explanation of the reasons behind the registration of the disputed domain name to be farfetched, especially in combination with the very poor alleged evidence of Respondent’s business plans.
The Panel finds it more likely that Respondent, in his need of money (Respondent’s Additional Submission, page 4) realized that the word at issue was of interest to someone, checked the trademark registry and quickly registered a couple of variations, the disputed domain name being one of them, in the hope to get another offer from the trademark owner (Complainant).
Complainant has provided a number of printouts from the website to which <my-gofer.com> is linked. Some of the printouts show links to Complainant’s competitors, others displaying a “Buying Agent” page. The Respondent goes far in his argumentation of proving that the automatic “Buying Agent” of the Registrar has nothing to do with Respondent and that similar “offers” can be made by using the domain names of the Complainant. What lacks in the argumentation of Respondent, is the fact that the “Buying Agent” page can be reached directly from the web site of <my-gofer.com>, whereas in the other examples provided by Respondent, one will have to search on GoDaddy’s web site and not at the sites of the Complainant. Nevertheless, the Panel accept Respondent’s assertion that the disputed domain name has not been offered for sale.
Complainant alleges that Respondent is attempting to disrupt Complainant’s business by displaying links to Complainant’s competitors at Respondent’s confusingly similar domain name. As noted above, the Panel finds Respondent responsible for these links because it is Respondent who has authorized the service provider to use the domain name at issue. Therefore, by redirecting Internet users seeking Complainant’s goods and services to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See 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)).
Referring to all the above circumstances, the Panel concludes that Respondent has registered and used the domain names in bad faith. The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
The Respondent suggests that the Complainant is guilty of Reverse Domain Name Hijacking. Reverse Domain Name Hijacking is defined in paragraph 15 (e) of the Rules as filing the complaint in bad faith, for example in an attempt to harass the domain-name holder or to deprive a registered domain-name holder of a domain name.
There is no evidence of harassment from Complainant, and the accusations and presumptions filed against Respondent are well within the scope of what the Panel finds acceptable from a trademark owner who discovers a domain name that may infringe its trademark rights.
It is true that Complainant first argued that the MYGOFER mark was well-known, and that Complainant provided printouts from Respondent’s web site suggesting an offer for sale, both being considered by this Panel as without merits. The Complaint in itself is however considered to be filed in go0d faith and it is in every case up to the Panel to decide whether the evidences and arguments supplied by both parties will hold. The Panel finds no ground for Respondent’s accusations.
The Panel therefore states that this is not a case of Reverse Domain Name Hijacking.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <my-gofer.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: July 30, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum