Sears Brands, LLC v. Terra Serve / Domain Administrator
Claim Number: FA1101001369685
Complainant is Sears Brands, LLC (“Complainant”), represented by David A. Wheeler of Greenberg Traurig, LLP, Illinois, USA. Respondent is Terra Serve / Domain Administrator, Grand Cayman.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <icraftsman.com>, registered with REBEL.COM CORP.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 25, 2011; the National Arbitration Forum received payment on January 25, 2011.
On January 27, 2011, REBEL.COM CORP. confirmed by e-mail to the National Arbitration Forum that the <icraftsman.com> domain name is registered with REBEL.COM CORP. and that Respondent is the current registrant of the name. REBEL.COM CORP. has verified that Respondent is bound by the REBEL.COM CORP. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 1, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 2011 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@icraftsman.com. Also on February 1, 2011, 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.
On February 24, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <icraftsman.com> domain name is confusingly similar to Complainant’s CRAFTSMAN mark.
2. Respondent does not have any rights or legitimate interests in the <icraftsman.com> domain name.
3. Respondent registered and used the <icraftsman.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Sears Brands, LLC, markets and sells home merchandise, equipment and tools under the CRAFTSMAN mark which is registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 551,491 issued December 4, 1951).
Respondent registered the <icraftsman.com> domain name on March 2, 1999. The disputed domain name resolves to a website featuring hyperlinks to the websites of Complainant’s competitors in the distribution and sale of home merchandise and tools.
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.
Complainant has submitted evidence of its registration of the CRAFTSMAN mark with the USPTO (e.g., Reg. No. 551,491 issued December 4, 1951). The Panel finds that Complainant’s submission establishes Complainant’s rights in the mark because proof of registration with a federal trademark authority is sufficient evidence of rights in a mark pursuant to Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant contends that Respondent’s <icraftsman.com> domain name is confusingly similar to the CRAFTSMAN mark. Complainant’s contention is based on Respondent’s incorporation of Complainant’s entire mark with the mere addition of the letter “i” to the beginning of the mark. Complainant also contends that Respondent’s addition of the generic top-level domain (“gTLD”) “.com” is inapposite to a determination of confusing similarity under the Policy. The Panel finds that a domain name which differs by a single letter and contains a gTLD are still safely within the realm of confusing similarity with Complainant’s mark. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel finds Policy ¶ 4(a)(i) has been established.
Complainant asserts that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant must make out a prima facie showing in support of its allegations before Respondent assumes the burden of proving it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c). Complainant has met its burden and Respondent’s failure to respond to the allegations permits the Panel to find that Respondent lacks rights or legitimate interests in the disputed domain name under ¶ 4(a)(ii) of the Policy. 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 Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”). However, the Panel chooses to consider the evidence contained in the record to determine whether Respondent has any rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the disputed domain name. Respondent does not deny this allegation. The WHOIS information contained in the record does not put forth any evidence that Respondent is commonly known by the disputed domain name. Therefore, because the Panel is unable to find any evidence that would support a finding that Respondent is commonly known by the disputed domain name, the Panel determines that Respondent is not commonly known by the <icraftsman.com> domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
Complainant argues that the <icraftsman.com> domain name redirects Internet users to a website that offers services that compete with the business of Complainant. Specifically, Respondent posts hyperlinks that compete with Complainant’s sale of tools and home equipment on the website resolving from the disputed domain name. The Panel finds that Respondent’s competing use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry).
The Panel finds Policy ¶ 4(a)(ii) has been established.
Complainant contends that Respondent is using the disputed domain name and resolving website to route Internet users seeking Complainant and Complainant’s products to a website that competes with Complainant’s business. The Panel finds such use to be sufficient evidence of Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business); see also 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)).
The Panel infers that Respondent receives click-through fees from the hyperlinks posted on the website resolving from the <icraftsman.com> domain name. Respondent has created the likelihood of confusion as the Complainant’s endorsement of, or affiliation with, the disputed domain name and featured hyperlinks. This leads the Panel to conclude that Respondent has engaged in bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iv). See 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); 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 Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <icraftsman.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: March 2, 2011
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