Sears Brands, LLC v. Barry Lange
Claim Number: FA1102001372829
Complainant is Sears Brands, LLC (“Complainant”), represented by David A. Wheeler of Greenberg Traurig, LLP, Illinois, USA. Respondent is Barry Lange (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <craftsman.tv>, registered with MONIKER ONLINE SERVICES, INC.
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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 14, 2011; the National Arbitration Forum received payment on February 15, 2011.
On February 16, 2011, MONIKER ONLINE SERVICES, INC. confirmed by e-mail to the National Arbitration Forum that the <craftsman.tv> domain name is registered with MONIKER ONLINE SERVICES, INC. and that Respondent is the current registrant of the name. MONIKER ONLINE SERVICES, INC. has verified that Respondent is bound by the MONIKER ONLINE SERVICES, INC. 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 16, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 8, 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@craftsman.tv. Also on February 16, 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 March 2, 2011.
On March 8, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Trademark/Service Mark Information (ICANN Rule 3(b)(viii)):
The Complainant, Sears Brands, LLC, owns an extensive family of famous trademarks and service marks comprised of or featuring the element “CRAFTSMAN,” some of which were first used in commerce as far back as 1935, and federal registrations that date back to 1985 (collectively the “CRAFTSMAN Marks”).
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds (ICANN Rule 3(b)(ix)):
Complainant Sears and Its Marks
Sears is a leading broadline retailer providing merchandise and related services. With revenues in 2010 of more than $44 billion, Sears offers its wide range of home merchandise, apparel, equipment and tools, and automotive products and services through approximately 3,900 Sears-branded and affiliated stores in the U.S. and Canada, which includes approximately 870 full-line and 1,100 specialty stores in the U.S. Key proprietary brands include Craftsman, DieHard and Kenmore, and a broad apparel offering, including such well-known labels as Lands' End, Jaclyn Smith, Joe Boxer, Apostrophe and Covington brands. It also has the Country Living collection, which is offered by Sears and Kmart. In addition to <craftsman.com>, Sears also offers a variety of merchandise and services through <sears.com>, <kmart.com>, <landsend.com>, and specialty catalogs. Sears is the only retailer where consumers can find each of the Craftsman, Kenmore, DieHard and Lands' End brands together --among the most trusted and preferred brands in the U.S. The company is one of the world’s largest provider of power tools, hand tools, lawn and garden tools, and storage and garage tools. Sears also spends a considerable amount of advertising dollars and product development in connection with its home improvement and home repair services, in connection with the Craftsman brand. Moreover, Sears’ web-based advertisement and retail channels often place the “Craftsman” brand along side Sears and its other brands.
The facts of this case establish that each of the three elements set forth in Rule 4(a) of the UDRP Policy are satisfied, namely:
The Offending Domain is Confusingly Similar to the Marks In Which the Complainant Has Rights
The Offending Domain incorporates Complainant’s CRAFTSMAN mark in its entirety and is confusingly similar to the CRAFTSMAN Marks as the only distinction is the inclusion of the country-code top-level domain “.tv.” The addition of a country-code top-level domain such as “.tv” is irrelevant for the purposes of a Policy ¶4(a)(i) analysis. See 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); see also Clairol Inc. v. Fux, D2001-0006 (WIPO May 7, 2001) (finding the domain name <clairol.tv> identical to complainant’s CLAIROL marks). As stated above, Sears’ CRAFTSMAN mark is used in conjunction with Sears’ home improvement and repair product lines. Further, the CRAFTSMAN mark is used in connection with an Internet-based marketing channel operated by Complainant, namely <craftsman.com>. See Nike, Inc. v. shopkorea, FA 496892 (Nat. Arb. Forum Aug. 2, 2005) (citing Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2000) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name)). Under United States law, the points of comparison for a word mark are appearance, sound, and meaning or connotation. See In re Microsoft Corp., 68 U.S.P.Q.2d 1195 (Trademark Tr. & App. Bd. Sept. 11, 2003). Other relevant foreign jurisdictions engage in a similar analysis regarding the confusing similarity of marks. See, e.g., Lloyd Schuhfabrik Meyer & Co. GmbH v. Klijsen Handel BV, 1999 E.C.J 587, 1999 2 CMLR 1343 (focusing trademark infringement analysis on the similarity between the marks’ appearance, sound and meaning).
Respondent Has No Rights or Legitimate Interests In the Domain Names
The Respondent has no trademark or other intellectual property rights to the Craftsman name or the Offending Domain. Respondent has no trademark applications or registrations known to Complainant that incorporate the element CRAFTSMAN. Respondent (Barry Lange a/k/a costal_domains@yahoo.com) is not commonly known as “craftsman” or “craftsman.tv.” Respondent’s use of the CRAFTSMAN mark as displayed on its website is unauthorized and constitutes trademark infringement.
Respondent does not operate a bona fide or legitimate business in conjunction with the Offending Domain, and is not making a protected non-commercial or fair use of the Offending Domain. See Citigroup Inc. v. Horoshiy, Inc. a/k/a Horoshiy, FA 290633 (Nat. Arb. Forum Aug. 11, 2004) (“Respondent’s use of domain names that are confusingly similar to Complainant’s CITIBANK marks to redirect Internet users interested in Complainant’s products to a commercial website that offers a search engine and products and services that compare with those offered by Complainant is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶4(c)(iii)”). A domain name registrant’s failure to actively use a disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶4(c)(i) or ¶4(c)(iii). See The Napoleon Hill Found. v. Steve Paris, FA 1360937 (Nat. Arb. Forum Jan. 10, 2011); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶4(a)(ii).”).
The Domain Name Was Registered and Used In Bad Faith
The UDRP Policy sets forth some examples of the circumstances that evidence bad faith registration and use of a domain name. These examples are found in Paragraphs 4(b)(i)-(iv) of the Policy, which provide:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name;
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct;
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The registrant of the Offending Domain name undoubtedly generates click-through revenue from the infringing use of the CRAFTSMAN mark by providing Google Ad Networks generated links to construction-related websites, even if not in direct competition with Complainant’s products and services. Such competing use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. To profit from click-through fees generated at an identical offending domain name when Internet users use the displayed links constitutes bad faith registration and use pursuant to Policy ¶4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶4(b)(iv)); see also The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶4(b)(iv)).
(1) The Domain Name Was Registered in Bad Faith
Respondent has at least constructive knowledge of the CRAFTSMAN Marks because of Complainant’s registration of the CRAFTSMAN Marks with the United States Patent and Trademark Office (“U.S.P.T.O.”). See Victoria’s Cyber Secret Ltd. v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D. Fla. 2001) (noting that “a Principal Register registration of a trademark or service mark is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072); Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the U.S.P.T.O., a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”). Even if Respondent were able to claim lack of knowledge, bad faith can exist when a search of the trademarks registry would reveal the registration rights of a Complainant. See, e.g., Kate Spade, LLC v. Darmstadter Designs, D2001-1384 (WIPO Jan. 3, 2002) (“Had Respondent done a trademark search at the time Respondent registered the domain name at issue, Respondent would have received notice of Complainant's pending application for registration. … It is fair to apply United States principles of constructive notice to this situation”).
Moreover, 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. See, e.g., Northwest Airlines, Inc., v Mario Koch, FA 95688 (Nat. Arb. Forum Oct. 27, 2000) ("The selection of a domain name which entirely incorporates the name of the world’s fourth largest airline could not have been done in good faith"). Further, “the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all circumstances of the case, it can be said that the Respondent is acting in bad faith.” See Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003, (WIPO Feb. 4, 2000) (“[a] remedy can be obtained under the Uniform Policy only if those circumstances show that the Respondent’s passive holding amounts to acting in bad faith”).
The Respondent has registered more than 90 domain names. Significantly, this list contains infringing registrations that include, <craftsman.tv> and <corvetteleasing.com>, as examples. Analogous activities by cyber-squatters operating in other industries were considered to rise to the level of “opportunistic bad faith.” See Singapore Airlines Ltd. v. P & P Servicios de Communicacion, D2000-0643 (WIPO Sept. 11, 2000) (holding that "the domain name singaporeairlines.com is so obviously connected with a well-known airline that its very registration and use by someone with no connection with the airline suggests opportunistic bad faith. Indeed, it is hard to imagine a more blatant exercise in ‘cyber-squatting’").
(2) The Domain Name Was Used In Bad Faith
As stated above, Respondent uses the Offending Domain to misdirect Internet users seeking information about Complainant’s goods and services. Through this commercial use of the Offending Domain 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 CRAFTSMAN Marks as to the source, sponsorship, affiliation, and/or endorsement of the Respondent’s websites or locations. See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding respondent acted in bad faith by attracting Internet users to a website that competes with complainant’s business); Computerized Sec. Sys., Inc. d/b/a SAFLOK v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that Respondent’s use of the SAFLOCK.COM domain name to offer goods competing with complainant’s illustrates respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy 4(b)(iv)).
The registrant of the Offending Domain name undoubtedly generates click-through revenue from the infringing use of the CRAFTSMAN mark by providing Google Ad Networks generated links to construction-related websites, even if not in direct competition with Complainant’s products and services. Such competing use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. To profit from click-through fees generated at an identical offending domain name when Internet users use the displayed links constitutes bad faith registration and use pursuant to Policy ¶4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶4(b)(iv)); see also The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶4(b)(iv)).
Respondent’s conduct is squarely within the illustration of bad faith set forth in Paragraphs 4(b)(i)-(iv) of the UDRP Policy. The above activities constitute bad faith and unfair attempts to capitalize on the fame and reputation for superior quality associated with the CRAFTSMAN Marks in order to generate profits at the expense of Complainant.
B. Respondent
Respondent acknowledges that Complainant has federal trademark rights in the trademark CRAFTSMAN. Respondent is not commonly known as <craftsman.tv> and does not have trademark rights in the domain name. Respondent further acknowledges that the <craftsman.tv> domain name is confusingly similar to the CRAFTSMAN trademark and any intended use of the <craftsman.tv> domain name would create a likelihood of confusion with the Purchaser’s CRAFTSMAN marks as to the source, sponsorship, affiliation, and/or endorsement of the Sellers intended websites. And, that such intended use would constitute bad-faith registration and use under ICANN Policy. Respondent, therefore, consents to the transfer of the domain name to the Complainant. In light of the above, Respondent requests that the Panel forego the usual UDRP analysis of the three issues set out in the Complaint and simply make an order for the transfer of the domain name to Complainant.
The proposed course as set forth above was followed in Boehringer Ingelheim Int’l GmbH v. modern Ltd-Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003). It was also followed in 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.”), and also in Citigroup Inc. v. Citibank, N.A., FA 1011822 (Nat. Arb. Forum July 23, 2007) (“Given the parties’ common consent to transfer, as well as the absence of an arbitral mandate to engage in an UDRP analysis, the Panel therefore orders Respondent to transfer the disputed domain name <nikkociti.com> to Complainant, forthwith.”).
Complainant, Sears Brands, LLC, offers a range of home merchandise, apparel, equipment and tools, and automotive products and services. In addition, Complainant sells power tools, hand tools, lawn and garden tools, and storage and garage tools. Complainant uses the CRAFTSMAN mark in connection with these products. Complainant claims rights in the CRAFTSMAN mark through its registrations of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,913,075 issued December 21, 2004).
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.
Respondent consents to transfer the <craftsman.tv> domain name to Complainant. However, after the initiation of this proceeding, MONIKER ONLINE SERVICES, INC. placed a hold on Respondent’s account. Therefore, Respondent cannot transfer the disputed domain name while this proceeding is still pending. As a result, the Panel finds when a respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the domain name in question to Complainant, the Panel may decide to forego the traditional UDRP analysis and order an immediate transfer of the <craftsman.tv> 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.”).
This case does not have such issues of public interest that the reasoned and considered request of the parties should be disregarded.
Having established by consent of the parties all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <craftsman.tv> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: March 8, 2011
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