Sears Brands, LLC v. Desert Air Engineering / Robert Krueger
Claim Number: FA1105001387438
Complainant is Sears Brands, LLC (“Complainant”), represented by David A. Wheeler of Greenberg Traurig, LLP, Illinois, USA. Respondent is Desert Air Engineering / Robert Krueger (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue is <kmartpal.com>, registered with LAUNCHPAD, 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 5, 2011; the National Arbitration Forum received payment on May 6, 2011.
On May 9, 2011, LAUNCHPAD, INC. confirmed by e-mail to the National Arbitration Forum that the <kmartpal.com> domain name is registered with LAUNCHPAD, INC. and that Respondent is the current registrant of the name. LAUNCHPAD, INC. has verified that Respondent is bound by the LAUNCHPAD, 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 May 10, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 31, 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@kmartpal.com. Also on May 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 June 1, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <kmartpal.com> domain name is confusingly similar to Complainant’s KMART mark.
2. Respondent does not have any rights or legitimate interests in the <kmartpal.com> domain name.
3. Respondent registered and used the <kmartpal.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Sears Brands, LLC, owns the KMART mark and uses the mark in connection with its retail stores located throughout the United States, Puerto Rico, Guam, and the U.S. Virgin Islands, and with its online retail website at <kmart.com>. In its stores, Complainant offers a wide range of home merchandise, apparel, and automotive products and services, among other things. Complainant holds a number of trademark registrations for its KMART mark with the United States Patent and Trademark Office (e.g., Reg. No. 3,141,789 issued Sept. 12, 2006).
Respondent, Desert Air Engineering / Robert Krueger, registered the <kmartpal.com> domain name on April 20, 2011. This disputed domain name resolves to an auction site, which promotes goods and services similar to those offered in Complainant’s retail stores.
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 argues that it has established rights in the KMART mark. Previously, panels have decided that a complainant is able to establish rights in a mark through trademark registration with a federal authority. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”) Here, Complainant holds a number of trademark registrations for its KMART mark with the USPTO (e.g., Reg. No. 3,141,789 issued Sept. 12, 2006). The Panel finds that Complainant has demonstrated its rights in the KMART mark through its trademark registration with the USPTO, pursuant to Policy ¶ 4(a)(i).
Complainant also asserts that Respondent’s <kmartpal.com> domain name is confusingly similar to its KMART mark. Incorporating the KMART mark entirely, the disputed domain name only differs by adding the generic term “pal” and the generic top-level domain (“gTLD”) “.com.” Adding generic terms to words of a mark does not sufficiently differentiate the disputed domain name from Complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). The Panel finds that the addition of a gTLD does not factor into a Policy ¶ 4(a)(i) analysis. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Therefore, the Panel concludes that Respondent’s <kmartpal.com> domain name is confusingly similar to Complainant’s KMART mark according to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant contends that Respondent lacks rights and legitimate interests in the <kmartpal.com> domain name. In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel decided that 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.” Here, Complainant has made a prima facie showing in support of its allegations. Given Respondent’s non-submission of a response to the Complaint, the Panel may assume that Respondent has no rights or legitimate interests under Policy ¶ 4(a)(ii). See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). However, the Panel chooses to first look to the record to see whether Respondent has rights or legitimate interests under Policy ¶ 4(c) before coming to any conclusions.
Complainant maintains that Respondent is not commonly known by the <kmartpal.com> domain name. The WHOIS information identifies Respondent as “Desert Air Engineering / Robert Krueger,” which is not similar to the disputed domain name. Complainant also maintains that Respondent has no trademark applications or registrations known to Complainant that incorporate the “kmart” element and that Respondent’s use of the KMART mark is unauthorized. The Panel concludes that Respondent is not commonly known by the disputed domain, under Policy ¶ 4(c)(ii), as there is no affirmative evidence in the record that provides a basis for finding that Respondent is commonly known by <kmartpal.com>. 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 Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent’s <kmartpal.com> domain name resolves to an auction website which offers for sale products and services similar to those offered in Complainant’s retail stores. Respondent likely profits from sales made on its website. The Panel finds that Respondent’s use of a confusingly similar disputed domain name to operate an auction website selling any number of items that compete with Complainant’s business online is 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). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Complainant argues that Respondent’s disputed domain name disrupts its business. Respondent’s <kmartpal.com> domain name resolves to an auction website. Internet users intending to purchase various goods or services from Complainant’s online retail store may find Respondent’s website instead and purchase similar goods or services from Respondent as a result. The Panel finds that Respondent’s registration and use of the disputed domain name does disrupt Complainant’s retail business and is evidence of bad faith 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 Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
The Panel infers that Respondent likely profits from its operation of an auction website and the sale of goods and services from the site. Respondent’s <kmartpal.com> domain name utilizes Complainant’s KMART mark and creates a likelihood of confusion as to Complainant’s sponsorship of or affiliation with the website and goods and services offered. Respondent tries to capitalize off this confusion through sale profits. The Panel concludes that such registration and use of the confusingly similar domain name for this purpose constitutes bad faith under 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 Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kmartpal.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: June 14, 2011
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