national arbitration forum

 

DECISION

 

Sears Brands, LLC v. Whois Protection a/k/a Whois Protection Service LLC

Claim Number: FA0910001289282

 

PARTIES

Complainant is Sears Brands, LLC (“Complainant”), represented by David A. Wheeler, of Greenberg Traurig, LLP, Illinois, USA.  Respondent is Whois Protection a/k/a Whois Protection Service LLC (“Respondent”), Grand Cayman. 

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <searsautocenter.com>, registered with Computer Services Langenbach Gmbh d/b/a Joker.com.

 

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.

 

Hon. Karl V. Fink (Ret) as Panelist.

 

PROCEDURAL HISTORY

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 19, 2009, Computer Services Langenbach Gmbh d/b/a Joker.com confirmed by e-mail to the National Arbitration Forum that the <searsautocenter.com> domain name is registered with Computer Services Langenbach Gmbh d/b/a Joker.com and that Respondent is the current registrant of the name.  Computer Services Langenbach Gmbh d/b/a Joker.com has verified that Respondent is bound by the Computer Services Langenbach Gmbh d/b/a Joker.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 October 27, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 16, 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 postmaster@searsautocenter.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On November 18, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret) 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <searsautocenter.com> domain name is confusingly similar to Complainant’s SEARS mark.

 

2.      Respondent does not have any rights or legitimate interests in the <searsautocenter.com> domain name.

 

3.      Respondent registered and used the <searsautocenter.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Sears Brands, LLC, is a leading retailer of home merchandise, apparel, and automotive products through more than 2,400 SEARS stores in the United States and Canada.  Complainant is the owner of the SEARS mark, registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,563,683 issued October 31, 1989).  Complainant is also a leading provider of product and automotive repair services through SEARS-authorized services centers.  Furthermore, Complainant offers a variety of automotive parts and services on its website resolving from the <sears.com> domain name. 

 

Respondent, Whois Protection a/k/a Whois Protection Service LLC, registered the <searsautocenter.com> domain name on January 23, 2005.  The disputed domain name resolves to a website featuring an array of click-through links promoting service and parts-supply centers that are in direct competition with Complainant.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant has established rights in the SEARS mark through its registration of the mark with the USPTO (Reg. No. 1,563,683 issued October 31, 1989).  The Panel also finds that it is not necessary under the Policy for Complainant to have registered its SEARS mark in the country of Respondent’s residence.  See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); see also UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that the complainant had established rights in its asserted marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO). 

 

Respondent’s disputed domain name incorporates Complainant’s SEARS mark in its entirety with the addition of the descriptive phrase “auto center” and the affixation of the generic top-level domain “.com.”  The Panel notes that the descriptive phrase “auto center” has an obvious relationship to Complainant’s automotive services and therefore, does not reduce the confusing similarities between the disputed domain name and Complainant’s mark.  Thus, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s SEARS mark under Policy ¶ 4(a)(i).  See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). 

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).    

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have rights or legitimate interests in the disputed domain name.  Once Complainant presents a prima facie case outlining these allegations, the burden shifts to Respondent to establish it does have rights or legitimate interests in the disputed domain name.  The Panel finds that Complainant has presented a sufficient prima facie case to support its allegations and that Respondent has failed to submit a response in this proceeding.  Therefore, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  However, the Panel will inspect the record and determine whether Respondent has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c).  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).

 

The disputed domain name resolves to a website featuring sponsored click-through links that further resolve to the websites of Complainant’s competitors in the automotive services industry.  The Panel presumes that Respondent is earning click-through fees for each Internet user that is redirected to the sponsored websites.  Thus, the Panel concludes that Respondent’s use of the <searsautocenter.com> domain name is not a use in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii), respectively.  See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process).

Furthermore, Complainant contends that Respondent is not commonly known by the <searsautocenter.com> domain name.  The pertinent WHOIS information does not reflect that Respondent is commonly known by the disputed domain name and the Panel has no other information to rely upon in the record with respect to this element of the Policy.  Therefore, the Panel finds that Respondent is not commonly known by the <searsautocenter.com> domain name under Policy ¶ 4(c)(ii).  See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii). 

 

Registration and Use in Bad Faith

The Panel finds that Respondent’s use of the <searsautocenter.com> domain name and its corresponding website to host competitive third-party advertisements constitutes a disruption of Complainant’s business, and therefore evidences Respondent’s bad faith registration and use under 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)); 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).

Complainant contends that Respondent is using the <searsautocenter.com> domain name, registered on January 23, 2005, to intentionally divert Internet users to Respondent’s website displaying third-party links to competing websites.  The Panel presumes that Respondent is collecting click-through fees and attempting to profit by creating a likelihood of confusion between Complainant’s SEARS mark and the confusingly similar <searsautocenter.com> domain name.  Thus, the Panel finds that Respondent’s use of the disputed domain name is further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii). 

 

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 <searsautocenter.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Karl V. Fink (Ret), Panelist

Dated:  November 30, 2009

 

 

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