Sears Brands, LLC v. Anek Chabthaisong
Claim Number: FA0907001274202
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 <searsoutlet.us>, registered with Godaddy.com, Inc.
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
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 16, 2009; the Forum received a hard copy of the Complaint on July 17, 2009.
On July 16, 2009, Godaddy.com, Inc. confirmed by e-mail to the Forum that the <searsoutlet.us> domain name is registered with Godaddy.com, Inc. and that 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 the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On July 21, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 10, 2009 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 17, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A Crary as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the 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.
1. Respondent’s <searsoutlet.us> domain name is confusingly similar to Complainant’s SEARS mark.
2. Respondent does not have any rights or legitimate interests in the <searsoutlet.us> domain name.
3. Respondent registered and used the <searsoutlet.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant offers a wide range of home
merchandise, apparel, and automotive products and services, all of which
Complainant promotes under the SEARS mark, which Complainant registered with
the United States Patent and Trademark Office (“USPTO”) on September 16, 2003
(Reg. No. 2,764,442). Complainant has
used the SEARS mark continuously in commerce since at least as early as 1894,
and now has more than 2,400 stores throughout the
Respondent registered the <searsoutlet.us> domain name on June 12, 2009. The disputed domain name resolves to a website that features an affiliate program with Amazon.com.
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 the Complainant's undisputed representations pursuant to Paragraphs 5(f), 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 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; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Identical and/or Confusingly Similar
Complainant registered its SEARS
mark with the USPTO on September 16, 2003 (Reg. No. 2,764,442). The Panel
finds that Complainant has established rights in the SEARS mark for purposes of
Policy ¶ 4(a)(i) through its trademark registration
with the USPTO.
Respondent’s <searsoutlet.us> domain name is confusingly similar to Complainant’s SEARS mark. The <searsoutlet.us> domain name differs from Complainant’s mark in two ways: (1) the term “outlet” has been added to the end of the mark; and (2) the country code top-level domain (ccTLD) “.us” has been added to the mark. The Panel finds that adding a descriptive term cannot sufficiently distinguish a domain name from a mark for the purposes of Policy ¶ 4(a)(i). See Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under UDRP ¶ 4(a)(i)); see also Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark). The Panel likewise finds that the addition of a ccTLD also cannot distinguish a domain name from a mark. See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name). Therefore, the Panel finds that the <searsoutlet.us> domain name is not sufficiently distinguished from Complainant’s SEARS mark, and so the Panel finds that Respondent’s <searsoutlet.us> domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the disputed domain name. Under Policy ¶ 4(a)(ii), if the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under 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 Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).
The Panel finds no evidence in the record to support the proposition that Respondent owns any service marks or trademarks that reflect the <searsoutlet.us> domain name. The Panel therefore finds that Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to UDRP ¶ 4(c)(i)).
Complainant contends that Respondent is not commonly known by the disputed domain name, nor has it ever been the owner or licensee of the SEARS mark. The WHOIS record for the disputed domain name lists Respondent as “Anek Chabthaisong.” Respondent has failed to show any evidence of ever being commonly known by the disputed domain name or by any other variant on the SEARS mark, and so the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(iii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights or legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant also contends that Respondent
is using the disputed domain
name to host a website that features an
affiliate program with Amazon.com, and that Respondent is collecting
“click-through” fees because of this association. The Panel finds that
Respondent’s use of the disputed
domain name to profit from directing Internet users to another company’s
website, without authorization to use Complainant’s mark, is neither a bona fide offering of goods or services
under Policy ¶ 4(c)(ii) nor a legitimate noncommercial
or fair use under Policy ¶ 4(c)(iv). See Constellation
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is gaining commercially, in the form of click-through fees, from the diversion of Internet users to Amazon.com. The Panel finds that Respondent is intentionally using the confusingly similar disputed domain name for commercial gain by creating a likelihood of confusion with Complainant’s mark, and that this use is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the respondent violated UDRP ¶ 4(b)(iv) because the respondent admittedly used the complainant’s well-known mark to attract users to the respondent's website); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <searsoutlet.us> domain name be TRANSFERRED from Respondent to Complainant.
James A Crary, Panelist
Dated: August 24, 2009
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