Sears Brands, LLC v. William
Henderson
Claim Number: FA0906001267621
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.
B. Respondent
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
Complainant
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
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.
FINDINGS
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.
DISCUSSION
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.
DECISION
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
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