national arbitration forum

 

DECISION

 

Sears Brands, LLC v. Willie Coam / Germanium Inc.

Claim Number: FA1101001369839

 

PARTIES

Complainant is Sears Brands, LLC (“Complainant”), represented by Davud A. Wheeler of Greenberg Traurig, LLP, Illinois, USA.  Respondent is Willie Coam / Germanium Inc. (“Respondent”), New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ikmart.com>, registered with 000DOM.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

 Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 27, 2011; the National Arbitration Forum received payment on January 28, 2011.

 

On January 27, 2011, 000DOM confirmed by e-mail to the National Arbitration Forum that the <ikmart.com> domain name is registered with 000DOM and that Respondent is the current registrant of the names.  000DOM has verified that Respondent is bound by the 000DOM 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 January 31, 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@ikmart.com.  Also on January 31, 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.

 

A timely Response was received and determined to be complete on February 7, 2011.

 

On February 8, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.    Complainant

Complainant contends as follows:

Sears Brands, LLC and its affiliates Kmart, Inc., Sears Roebuck & Co., are wholly-owned subsidiaries of Sears Holdings Corporation. Sears operates a total of 1,327 Kmart stores across 49 states, Guam, Puerto Rico, and the U.S. Virgin Islands. Kmart consists of 1,292 discount stores, averaging 93,000 square feet, and 35 Super Centers, averaging 168,000 square feet. In addition to brick-and-mortar-store sales, Kmart offers its customer extensive online shopping options for their purchases via <kmart.com>. 

 

Kmart's owner, Sears, is a leading retailer providing merchandise and related services. The  at-issue domain name incorporates Complainant's KMART Mark  in its entirety and is confusingly similar to the KMART Mark.  The only distinction between the Offending Domain and the KMART Mark is the inclusion of the generic element "i" at the beginning of the at-issue domain name.  Slight alterations to a trademark, such as adding the letter "i" or "e" to the front of a domain name that includes an entire trademark does not significantly distinguish the domain name from the mark and renders it confusingly similar to the mark.

 

The Respondent has no trademark or other intellectual property rights to the "Kmart" name or the at-issue domain name.  Respondent has no trademark applications or registrations known to Complainant that incorporate the element KMART.  Respondent is not commonly known as "ikmart" or "ikmart.com."

 

Respondent does not operate a bona fide or legitimate business in conjunction with the domain name, and is not making a protected non-commercial or fair use of the Offending Domain. Respondent uses the Offending Domain to re-direct Internet users to a domain name auction website. The registrant of the domain name undoubtedly generates click-through revenue from the infringing use of the KMART mark by providing links to third-party websites and hosting click-through advertising.  Such competing use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.

 

Respondent has at least constructive knowledge of the KMART Marks because of Complainant's registration of the KMART Marks with the United States Patent and Trademark Office. Respondent is attempting to sell the domain name through an online auction. Respondent has listed the disputed domain name for sale on a website, <domainshop.com>.  Respondent's actions in promoting the sale of the disputed domain name constitute bad faith use and registration. 

 

The mere fact that the Respondent has registered domain names which incorporate the famous trademarks of a well-known retailer is alone sufficient to give rise to an inference of bad faith. Analogous  activities by cyber-squatters  operating in other industries were considered to rise to the level of  "opportunistic bad  faith." 

 

Respondent uses the at-issue domain name to misdirect Internet users seeking information about Complainant's goods and services.  Through this commercial use of the domain name in the United States, Respondent intentionally attempted to attract Complainant's customers to the Respondent's web site for financial gain by creating a likelihood of confusion with the Complainant's KMART Marks as to the source, sponsorship,  affiliation, and/or endorsement of the Respondent's websites or locations.  Finally, Respondent's current use of the <ikmart.com> domain name also demonstrates bad faith registration and use of the domain pursuant to Policy ¶4(a)(iii).

 

Respondent's conduct is squarely within the illustration of bad faith set forth in Paragraphs 4(b)(i)-(iv) of the UDRP Policy. The Respondent’s activities constitute bad faith and unfair attempts to capitalize on the fame and reputation for superior quality associated with the KMART Marks in order to generate profits at the expense of Complainant.

 

B. Respondent

Respondent consents to the transfer of the domain name to the Complainant. Respondent requests that the Panel forgo the usual UDRP analysis of the three Policy ¶4(a) elements and simply make an order for the transfer of the domain name to Complainant.

 

FINDINGS

Complainant’s factual claims are taken as true.

 

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."

 

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.

 

In the instant dispute Respondent consents to transfer the <ikmart.com> domain name to Complainant.  After the instant proceeding commenced, registrar 000DOM placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain name while this proceeding is still pending.  Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the domain name in question to Complainant. Respondent asks the Panel to forego traditional UDRP analysis and order an immediate transfer of the <ikmart.com> domain name.  See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”). Complainant filed no additional submission subsequent to Response and thus does not expressly oppose the relief sought by Respondent.

 

An alternative approach where a Respondent consents to transfer is that the Panel may decide that the Complainant has not implicitly consented to the transfer of a disputed domain name unless a Panel’s issues a decision based on the merits. This approach recognizes that “consenting-to-transfer” may be but one way for cybersquatters to avoid adverse findings against them.  In Graebel Van Lines, Inc. v. Texas International Property Associates, FA 1195954 (Nat. Arb. Forum July 17, 2008), the panel stated:

Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy.  However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.

A court or other dispute resolution body’s power to order a Complainant’s requested relief after the opposing party consents to such relief arguably qualifies as a “principal of law” under Rule ¶15(a), thereby UDRP panels are empowered to grant relief by transferring a domain name notwithstanding the Panel’s decision is not rendered on the merits.  However, where appropriate a decision based on the merits is preferable.

 

In the instant dispute, Respondent fails to challenge or even summarily deny the aversions made in the Complaint. Indeed, Respondent requests that the Panel transfer the domain name.  Respondent thereby admits, by its silence and readiness to transfer the domain name, that each of the Complainant’s claims and arguments under paragraph 4(a) is well taken. Furthermore, a review of the record indicates that Complainant sets out sufficient evidence to allow a transfer of the domain name under Policy ¶4(a).

 

Therefore, the Panel concludes, without additional discussion and with deference to Respondent’s unopposed request that the Panel forgo the usual analysis of paragraph 4(a) issues, that Complainant’s contentions and arguments urged in its Complainant and reported above are well-taken; that the at-issue domain name is identical or confusingly similar to a trademark in which the Complainant has rights; that the Respondent has no rights or interests in respect of the domain name; and that the at-issue domain name was registered and is being used by the Respondent in bad faith.

 

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

Paul M. DeCicco, Panelist

Dated:  February 21, 2011

 

 

 

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