Sears Brands, LLC v. Domain Asset Holdings
Claim Number: FA0912001298052
Complainant is Sears Brands, LLC (“Complainant”), represented by David A. Wheeler, of Greenberg Traurig, LLP,
Illinois, USA. Respondent is Domain Asset Holdings (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <northwestterritories.com> (hereinafter: “the Domain Name”), registered with Domaindiscover.
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.
Hugues G. Richard, as Panelist.
submitted a Complaint to the National Arbitration Forum electronically on
On December 11, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 31, 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 email@example.com by e-mail.
A deficient Response was received in electronic format only on
Respondent submitted a response to Complainant’s additional submission
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant, Sears Brands, LLC, is the owner of an extensive family of
famous trademarks and service marks comprised of elements such as the KMART
Mark, as well as specific brand-related registered trademarks such as the
Sears Brands, LLC and its affiliates Kmart Inc., and Sears, Roebuck & Co., are wholly-owned subsidiaries of Sears Holding Corporation.
The Domain Name is confusingly
similar to Complainant’s
Respondent has no rights or legitimate interests in respect of the
Domain Name, it has no trademark or other intellectual property rights to the
Domain Name and Respondent’s use of the
Respondent registered the Domain Name in bad faith. Respondent at least
had constructive knowledge of the
Respondent is also using the Domain Name in bad faith as Respondent uses the Domain Name to misdirect Internet users seeking information about Complainant’s good and services to a website that offers click-through advertising programs.
Respondent has been in the business of buying and selling domain names for two years.
Respondent asserts it received the notification of proceedings in a
post office box which was not visited regularly during the holiday season and
that the mail was only retrieved on
In light of the facts presented and in the interest of reaching a fair and informed decision, Respondent requests that the Panel exercise its discretion and consider the submitted Response.
Respondent’s Domain Name is a geographic term identifying a federal
Respondent acquired the Domain Name as part of a portfolio of domain names consisting of geographic identifiers.
As with Respondent’s other domain names available for sale, the Domain Name is currently “parked” and the website associated with the Domain Name primarily includes links to travel services as a way of showing potential buyers the versatility of the Domain Name. Respondent’s practice of “parking” the Domain Name is consistent with its treatment of other domain names in its inventory and is not an illegitimate practice. Respondent’s acquisition, ownership and offering for sale of the Domain Name all constitute ordinary and legitimate activities of Respondent.
Respondent asserts that it has registered and is using the Domain Name in good faith as it has not engaged in any of the behaviors associated with the bad faith use or registration of the Domain Name listed in the Policy and was not even aware of Complainant’s mark until it received the Complaint.
C. Additional Submissions of Complainant
Respondent’s Response is deficient and should not be considered by the
Panel. Respondent cannot justify exceptional circumstances warranting an
extension of time to file a Response as the Complaint was not delivered to a
post office box, as the Respondent claims, but directly to Respondent’s address
where a Receptionist/front desk representative signed for the FedEx delivery on
Respondent’s use of the Domain Name, coupled with the fact that the Domain Name contains Complainant’s entire mark, albeit with “pluralization”, meets the standard of confusingly similar set forth in countless UDRP decisions.
Respondent failed to contest the argument that it has no rights or legitimate business interest in the Domain Name. Numerous UDRP decisions hold that the use of click-through fees on a website is not a bona fide offering of goods or services and does not constitute a legitimate non commercial or fair use of the Domain Name. Respondent’s lack of legitimacy and bona fide use is further supported by the fact that links on Respondent’s “parked” page serve to divert Internet users to competitors’ goods.
Respondent also failed to provide evidence that it is commonly known by the Domain Name.
Finally, Respondent’s use of the Domain Name to sell camping products or tents by linking to Kmart’s competitors websites, not only creates a likelihood of confusion, but will mislead consumers as to sponsorship, affiliation and endorsement as to the source of goods.
D. Additional Submissions of Respondent
Respondent justified exceptional circumstances warranting an extension of time to file a Response.
The address where the Complaint was delivered is a post office box, in
a Parcel Plus location. Although a representative from Parcel Plus presumably
signed for the Complaint’s delivery on
The registration of a geographic term for particular goods or services does not render other legitimate uses of that term confusing with the registered trademark.
Links to third parties websites provided at <northwestterritories.com>, some of which are sites offering camping equipment does not constitute evidence of bad faith given the common geographic meaning of the term “Northwest Territories” and the popularity of camping, hiking, and other outdoor activities in that region.
The links on Respondent’s website were not selected by Respondent or by any human being, but by a computer algorithm seeking to provide sites likely to be of interest to consumers seeking information related to the terms in the Domain Name, as the domain is currently “parked”.
The mere fact that Respondent has elected to utilize the domain name to generate Pay-Per-Click revenue does not amount to a conclusion that the Domain Name is used in bad faith.
The Panel finds that Complainant has successfully established that the Domain Name is identical or confusingly similar to a Trademark or service mark in which Complainant has rights under Policy 4(a)(i), but failed to establish that Respondent has no rights or legitimate interests in respect of the Domain Name under Policy 4(a)(ii). Having reached this conclusion, the Panel declines to discuss the last element of the Policy.
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.”
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.
Before entering the discussion whether Complainant satisfied the
elements required under the Policy in order to request the Domain Name to be
transferred, we must deal with the issue of the deficient Response provided by
Respondent. The Response was received after the Response deadline of
In the present case, given the procedural nature of the breach, and the difference of opinion regarding the circumstances of the delay and the request for extension of time, the Panel decided to exercise its discretion and to consider the Response despite its lack of compliance with the Rules, as the Panel feels that it should make an informed decision based on all the relevant facts presented by the parties.
Besides, the Panel would like to stress that its decision regarding this particular issue did not impact on the outcome of the dispute. Had the Panel decided not to consider the deficient Response provided by Respondent, it would have come to the exact same conclusion regarding the transfer of the Domain Name.
it owns brands of products, such as the
Complainant alleges the disputed Domain Name replaces the letter “y” with the letters “ies” to make the mark plural. The Panel finds the addition and removal of letters to Complainant’s mark fails to sufficiently distinguish the disputed domain name from Complainant’s mark. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks).
Furthermore, the addition of a gTLD is irrelevant under a Policy ¶ 4(a)(i) analysis. See Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”).
Panel concludes that Respondent’s <northwestterritories.com>
domain name is confusingly similar to Complainant’s
As it has been decided on numerous occasions, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii). The burden then shifts to Respondent to show that it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interests in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”)
Complainant asserts that
Respondent’s website at <northwestterritories.com>
features links and advertisements to goods and services unrelated to
Complainant. Respondent does not deny
this. However, in the present case, the elements contained in the contentious
domain name are common terms as they relate to a region of
the present case, Complainant asserts that numerous links on Respondent’s
website are directly related to goods associated to Complainant’s
Therefore, the Panel concludes that Respondent’s does have a legitimate interests in respect of the Domain Name pursuant to Policy ¶ 4(a)(ii).
Having found that
Complainant has not satisfied Policy ¶ 4(a)(ii), the
Panel declines to analyze this last element of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd.,
FA 116765 (Nat. Arb. Forum
Sept. 20, 2002) (finding that because the complainant must prove all three
elements under the Policy, the complainant’s failure to prove one of the
elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard
Protected, FA 836538 (Nat. Arb.
Having failed to establish the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Hugues G. Richard, Panelist
Dated: January 22, 2010
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