Sears Brands, LLC v. Ganesh Sekar / Cybernet Slash
Claim Number: FA1103001376389
Complainant is Sears Brands, LLC (“Complainant”), represented by David A. Wheeler of Greenberg Traurig, LLP, Illinois, USA. Respondent is Ganesh Sekar / Cybernet Slash (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <kmartswingsets.info>, <kmarttvstands.info>, <kmartcouponcode.info>, <kmartweeklyad.info>, <kmartcoupons.info>, <kmartcurtains.info>, <kmartstores.info>, <kmartinflatablemattress.info>, <kmartbbguns.info>, <kmartcabintent.info>, <kmartcampingtents.info>, <kmartstorelocator.info>, <kmartkitchencurtains.info>, <kmartshowercurtains.info> and <kmartkidsfurniture.info>, registered with GoDaddy.com Inc. (R171-LRMS).
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 7, 2011; the National Arbitration Forum received payment on March 8, 2011.
On March 8, 2011, GoDaddy.com Inc. (R171-LRMS) confirmed by e-mail to the National Arbitration Forum that the <kmartswingsets.info>, <kmarttvstands.info>, <kmartcouponcode.info>, <kmartweeklyad.info>, <kmartcoupons.info>, <kmartcurtains.info>, <kmartstores.info>, <kmartinflatablemattress.info>, <kmartbbguns.info>, <kmartcabintent.info>, <kmartcampingtents.info>, <kmartstorelocator.info>, <kmartkitchencurtains.info>, <kmartshowercurtains.info> and <kmartkidsfurniture.info> domain names are registered with GoDaddy.com Inc. (R171-LRMS) and that Respondent is the current registrant of the names. GoDaddy.com Inc. (R171-LRMS) has verified that Respondent is bound by the GoDaddy.com Inc. (R171-LRMS) 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 March 10, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 30, 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@kmartswingsets.info, postmaster@kmarttvstands.info, postmaster@kmartcouponcode.info, postmaster@kmartweeklyad.info, postmaster@kmartcoupons.info, postmaster@kmartcurtains.info, postmaster@kmartstores.info, postmaster@kmartinflatablemattress.info, postmaster@kmartbbguns.info, postmaster@kmartcabintent.info, postmaster@kmartcampingtents.info, postmaster@kmartstorelocator.info, postmaster@kmartkitchencurtains.info, postmaster@kmartshowercurtains.info and postmaster@kmartkidsfurniture.info. Also on March 10, 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 April 7, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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, 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. Respondent’s <kmartswingsets.info>, <kmarttvstands.info>, <kmartcouponcode.info>, <kmartweeklyad.info>, <kmartcoupons.info>, <kmartcurtains.info>, <kmartstores.info>, <kmartinflatablemattress.info>, <kmartbbguns.info>, <kmartcabintent.info>, <kmartcampingtents.info>, <kmartstorelocator.info>, <kmartkitchencurtains.info>, <kmartshowercurtains.info> and <kmartkidsfurniture.info> domain names are confusingly similar to Complainant’s KMART mark.
2. Respondent does not have any rights or legitimate interests in the <kmartswingsets.info>, <kmarttvstands.info>, <kmartcouponcode.info>, <kmartweeklyad.info>, <kmartcoupons.info>, <kmartcurtains.info>, <kmartstores.info>, <kmartinflatablemattress.info>, <kmartbbguns.info>, <kmartcabintent.info>, <kmartcampingtents.info>, <kmartstorelocator.info>, <kmartkitchencurtains.info>, <kmartshowercurtains.info> and <kmartkidsfurniture.info> domain names.
3. Respondent registered and used the <kmartswingsets.info>, <kmarttvstands.info>, <kmartcouponcode.info>, <kmartweeklyad.info>, <kmartcoupons.info>, <kmartcurtains.info>, <kmartstores.info>, <kmartinflatablemattress.info>, <kmartbbguns.info>, <kmartcabintent.info>, <kmartcampingtents.info>, <kmartstorelocator.info>, <kmartkitchencurtains.info>, <kmartshowercurtains.info> and <kmartkidsfurniture.info> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Sears Brands, LLC, owns the exclusive rights to the KMART mark which it uses in connection with its large retail business selling products both in stores and online. Complainant holds numerous 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, Ganesh Sekar / Cybernet Slash, registered all of the disputed domain names on February 24, 2011. The disputed domain names resolve to websites offering click-through links.
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.
A complainant may establish rights in a mark through its federal trademark registration, irrespective of respondent’s country of operation. Here, Complainant asserts rights in its KMART mark through its registrations with the USPTO (e.g., Reg. No. 3,093,223 issued May 16, 2006). Thus, the Panel finds that Complainant has sufficiently established rights in its mark pursuant to 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 Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant contends that Respondent’s <kmartswingsets.info>, <kmarttvstands.info>, <kmartcouponcode.info>, <kmartweeklyad.info>, <kmartcoupons.info>, <kmartcurtains.info>, <kmartstores.info>, <kmartinflatablemattress.info>, <kmartbbguns.info>, <kmartcabintent.info>, <kmartcampingtents.info>, <kmartstorelocator.info>, <kmartkitchencurtains.info>, <kmartshowercurtains.info> and <kmartkidsfurniture.info> domain names are confusingly similar to Complainant’s KMART mark. The disputed domain names all contain Complainant’s entire KMART mark, all add descriptive terms (“swing sets,” “tv stands,” “coupon code,” “weekly ad,” “coupons,” “curtains,” “stores,” “inflatable mattress,” “bb guns,” “cabin tent,” “camping tents,” “store locator,” “kitchen curtains,” “shower curtains” and “kids furniture”) and all add the generic top-level domain (“gTLD”) “.info.” The addition of descriptive terms and a gTLD are not adequate distinctions to set a disputed domain name apart from a complainant’s mark. See Constellation Wines U.S., Inc. v. Texas Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (finding that the addition of the descriptive term “wine” to the complainant’s BLACKSTONE mark in the <blackstonewine.com> domain name was insufficient to distinguish the mark from the domain name under 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). Accordingly, the Panel finds that Respondent’s disputed domain names are all confusingly similar to Complainant’s KMART mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) is satisfied.
Once a Complainant makes a prima facie case in support of its allegations, the burden of proof falls on Respondent who must then show rights or legitimate interests pursuant to Policy ¶ 4(a)(i). The Panel finds that Complainant has made a prima facie case. Because Respondent has chosen not to respond to the complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain names. 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 American Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Nevertheless, the Panel will still examine the record to determine whether or not Respondent has rights or legitimate interests under Policy ¶ 4(c).
When there is no evidence in the record to suggest that a respondent has been commonly known by its disputed domain names, the Panel may choose to conclude that the respondent has not sufficiently established its rights or legitimate interests in order to satisfy Policy ¶ 4(c)(ii). Such is the case here because Respondent has not submitted any evidence into the record to show that it has been commonly known by any of the disputed domain names. Moreover, Complainant asserts that Respondent has not been authorized to use its KMART mark and provides WHOIS information identifying the domain name registrant as “Ganesh Sekar / Cybernet Slash.” Therefore, the Panel finds that Respondent does not have rights or legitimate interests under 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).
Respondent uses the disputed domain names to display blog posts relating to some facets of Complainant’s business and blog posts completely unrelated to Complainant. Some of these blog posts contain pay-per-click links that appear to be unrelated to Complainant. The Panel finds that this does 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 Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)).
The Panel finds Policy ¶ 4(a)(ii) is satisfied.
Internet users are likely reach Respondent’s disputed domain names under the false impression that they are reaching an official site of Complainant. Respondent then uses the disputed domain name to provide blogs containing information sometimes relating to facets of Complainant’s business and sometimes completely unrelated to Complainant. Some of the blog posts appear to contain third-party, click-through links, from which Respondent likely profits. The Panel finds that this creation of confusion in an attempt to profit, constitutes evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Association 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)); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that the respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and the complainant’s LIL PUNK mark by using the contested domain name to maintain a website with various links to third-party websites unrelated to Complainant, and that such use for the respondent’s own commercial gain demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel finds Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kmartswingsets.info>, <kmarttvstands.info>, <kmartcouponcode.info>, <kmartweeklyad.info>, <kmartcoupons.info>, <kmartcurtains.info>, <kmartstores.info>, <kmartinflatablemattress.info>, <kmartbbguns.info>, <kmartcabintent.info>, <kmartcampingtents.info>, <kmartstorelocator.info>, <kmartkitchencurtains.info>, <kmartshowercurtains.info> and <kmartkidsfurniture.info> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 11, 2011
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