Sears Brands, LLC v. Transure Enterprise Ltd c/o Host Master
Claim Number: FA0910001289248
Complainant is Sears Brands, LLC (“Complainant”), represented by David
A. Wheeler, of Greenberg Traurig, LLP, Illinois, USA. Respondent is Transure Enterprise Ltd c/o Host Master (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <searautocenter.com>, registered with Above, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 13, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 14, 2009.
On October 15, 2009, Above, Inc. confirmed by e-mail to the National Arbitration Forum that the <searautocenter.com> domain name is registered with Above, Inc. and that Respondent is the current registrant of the name. Above, Inc. has verified that Respondent is bound by the Above, 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 October 21, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 10, 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 16, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the SEARS service mark (Reg. No. 1,726,260, issued October 20, 1992) in connection with its marketing of a variety of services, specifically repair of consumer and commercial products, including vehicles.
Complainant has not authorized Respondent’s use of the SEARS service mark.
Respondent is not commonly known by the disputed domain name.
Respondent registered the <searautocenter.com> domain name on May 24, 2008.
The disputed domain name resolves to a website that offers click-through links to third-party websites in competition with the business of Complainant.
Respondent’s <searautocenter.com> domain name is confusingly similar to Complainant’s SEARS service mark.
Respondent does not have any rights to or legitimate interests in the domain name <searautocenter.com>.
Respondent registered and uses the <searautocenter.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a 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.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the disputed domain name; and
iii. the same domain name has been registered and is being used by Respondent in bad faith.
Complainant asserts rights in its SEARS mark through its holding of a trademark registration for the mark with the USPTO. Complainant has thus established rights in the mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007):
As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).
See also Disney Enters., Inc. v. Kudrna, FA 686103
(Nat. Arb. Forum June 2, 2006) (finding that a complainant’s registration of
the DISNEY trademark with the USPTO prior to a respondent’s registration of a
disputed domain name was sufficient to prove that that complainant had rights
in the mark pursuant to Policy ¶ 4(a)(i)); see also Renaissance Hotel Holdings, Inc. v.
Complainant asserts that Respondent’s <searautocenter.com> domain name is confusingly similar to Complainant’s SEARS mark pursuant to Policy ¶ 4(a)(i). The disputed domain name is confusingly similar to Complainant’s SEARS mark because Respondent’s domain name incorporates the dominate features of Complainant’s mark, omitting only the letter “s,” adds the generic terms “auto” and “center” and the generic top-level domain (“gTLD”) “.com.”
The deletion of the letter “s” from Complainant’s mark in
creating the contested domain name does not obviate the confusing similarity between
the domain name and the mark. See
Similarly, Respondent’s addition of generic terms to Complainant’s mark in creating the contested domain name does not avoid a finding of confusing similarity where, as here, the generic terms have an obvious relationship to Complainant’s business. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”); see also Dr. Ing. h.c. F. Porsche AG v. Anderson, D2004-0312 (WIPO July 2, 2004) (finding the <porschesales.com> domain name to be confusingly similar where a respondent added the generic term “sales” to a complainant’s PORSCHE mark).
Likewise, the addition of a gTLD to a registered mark is
irrelevant in distinguishing a disputed domain name from a competing mark. See Jerry Damson, Inc. v.
The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.
See also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights to or legitimate interests in the disputed domain name. Once Complainant makes out a prima facie case in support if its allegations, the burden shifts to Respondent to prove that it has rights to or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Document Techs., 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.
Complainant has established a prima facie case in support of its contentions and Respondent has failed to submit a response to these proceedings. Because Respondent has failed to answer the allegations of the Complaint, we are entitled to conclude that Respondent has no rights to or interests in the contested domain name which are cognizable under the Policy. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond to a complaint filed under the Policy allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nevertheless, we will examine the record before us in light of the considerations set out in Policy ¶ 4(c) to determine if there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name sufficient for purposes of the Policy.
We begin our examination by observing that the record shows that the registrant of the disputed domain name is “Transure Enterprise Ltd.” We are therefore forced to the conclusion that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See, for example, St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a respondent had no rights to or legitimate interests in a disputed domain name where there was no evidence in the record indicating that that respondent was commonly known by the disputed domain name); 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).
We also note that there is no dispute as to complainant’s allegation that the contested domain name resolves to a website featuring click-through links to third-party websites in competition with the business of Complainant. Respondent’s use of the disputed domain name as alleged is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i) nor legitimate noncommercial or fair use of the contested domain pursuant to Policy ¶ 4(c)(iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that a respondent was not using domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use because that respondent used the domains to divert Internet users to a website that offered services competing with those offered by a complainant under its marks); see also Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that a respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”).
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s registration and use of the <searautocenter.com> domain name
to operate a website that offers click-through links to third-party websites in
competition with Complainant, as alleged in the Complaint, constitutes a disruption
of Complainant’s business, and therefore bad faith registration and use of the
disputed domain name pursuant to Policy ¶ 4(b)(iii). See
Respondent registered a domain name
confusingly similar to Complainant's mark to divert Internet users to a
competitor's website. It is a reasonable inference that Respondent's purpose of
registration and use was to either disrupt or create confusion for
Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).
Respondent’s use of the disputed domain name to attract Internet
users to the website that resolves from the disputed domain name, and, we may
presume from the circumstances presented, to profit via click-through fees from
Internet users’ visits to that website by creating a strong likelihood of
confusion with Complainant’s SEARS mark is evidence of bad faith registration
and use of the disputed domain pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v.
Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a
respondent engaged in bad faith registration and use of a domain name by using one
that was confusingly similar to a complainant’s mark to offer links to
third-party websites that offered services similar to those offered by that
complainant); see also Asbury Auto. Group, Inc. v.
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <searautocenter.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 21, 2009
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