864-220-6769/613 Timms Rd. Piedmont, SC 29673/
Sears Brands, LLC v. Andrey Marusich
Claim Number: FA1008001343618
Complainant is Sears Brands, LLC (“Complainant”), represented by David A. Wheeler of Greenberg Traurig, LLP, Illinois, USA. Respondent is Andrey Marusich (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kmart-pharmacy.net>, registered with ENOM, INC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically August 26, 2010.
On August 27, 2010, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <kmart-pharmacy.net> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. verified that Respondent is bound by the ENOM, INC. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 30, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 20, 2010, by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@kmart-pharmacy.net by e-mail. Also on August 30, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
OnOctober 4, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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" through submission of a Written Notice, as defined in Rule 1. 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:
1. The domain name that Respondent registered, <kmart-pharmacy.net>, is confusingly similar to Complainant’s KMART mark.
2. Respondent has no rights to or legitimate interests in the <kmart-pharmacy.net> domain name.
3. Respondent registered and used the <kmart-pharmacy.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Sears Brands, LLC, owns the KMART family of marks that its affiliate, Kmart, Inc., uses to market and distribute a variety of goods including pharmaceuticals under the KMART mark in more than 1,400 retail locations. Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for its KMART mark (e.g., Reg. No. 3,093,223 issued May 16, 2006).
Respondent, Andrey Marusich, registered the <kmart-pharmacy.net> domain name July 22, 2010. Respondent’s disputed domain name resolves to Respondent’s online pharmacy in competition with Complainant’s pharmaceutical offerings.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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.
The Panel finds that Complainant established rights in its KMART mark under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO (e.g., Reg. No. 3,093,223 issued May 16, 2006). The Panel further finds that it is irrelevant that Complainant does not own a trademark registration within Respondent’s country of Russia 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 KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant urges that Respondent’s <kmart-pharmacy.net> domain name is confusingly similar to Complainant’s KMART mark because the domain name contains Complainant’s mark in its entirety while adding a hyphen and the descriptive term “pharmacy” in addition to the generic top-level domain (“gTLD”) “.net.” The Panel finds that the disputed domain name is confusingly similar to Complainant’s KMART mark under Policy ¶ 4(a)(i). See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant contends that Respondent does not have rights and legitimate interests in the <kmart-pharmacy.net> domain name. Once Complainant makes a prima facie case to support its allegations, the burden shifts to Respondent to prove that it does have such rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. See 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.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant also contends that Respondent is not commonly known by the <kmart-pharmacy.net> domain name. Complainant alleges that Respondent is not authorized or licensed to use Complainant’s KMART mark. The WHOIS information identifies the domain name registrant as “Andrey Marusich,” which Complainant contends is not similar to Respondent’s <kmart-pharmacy.net> domain name. Respondent failed to respond to these allegations and failed to present evidence that would suggest that Respondent is commonly known by the disputed domain name. The Panel therefore finds that Respondent is not commonly known by the <kmart-pharmacy.net> domain name pursuant to 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).
Complainant submits screen-shot evidence to show that Respondent is using the disputed domain name to resolve to an online pharmacy that competes with Complainant’s pharmaceutical offerings. Complainant contends that such use is not a bona fide offering of goods or services or a legitimate noncommercial use of the domain name. The Panel agrees and finds that Respondent’s use of the disputed domain name to market and sell competing pharmaceutical products in competition with Complainant’s offerings of the same is not a bona fide offering of goods or services under a Policy ¶ 4(c)(i) analysis and it is not a legitimate noncommercial or fair use under a Policy ¶ 4(c)(iii) evaluation. See G.D. Searle & Co. v. Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding the respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from the complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i)); see also G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that because the respondent is using the infringing domain name to sell prescription drugs, the panel could infer that the respondent is using the complainant’s mark to attract Internet users to its website for commercial benefit).
The Panel finds that Respondent has no rights to or legitimate interest in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Respondent’s disputed domain name resolves to an online pharmacy that markets and sells pharmaceutical products in competition with Complainant. The Panel finds that such use invariably results in the disruption of Complainant’s business and online pharmacy presence and is therefore evidence to support findings of bad faith registration and use under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
Further, Complainant contends that Respondent is using the <kmart-pharmacy.net> domain name to divert Internet users to Respondent’s competing online pharmacy by creating a likelihood of confusion with the KMART mark as to the source, sponsorship or affiliation of the website for commercial gain. The Panel agrees and finds that Respondent’s use of the disputed domain name to market and sell competing pharmaceutical products is further evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kmart-pharmacy.net> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 18, 2010.
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