Sterling Jewelers Inc v. Mohd Isnul Hisam Ismail
Claim Number: FA1107001400226
Complainant is Sterling Jewelers Inc (“Complainant”), represented by John J. Cunniff of Hahn Loeser + Parks LLP, Ohio, USA. Respondent is Mohd Isnul Hisam Ismail (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kays-jewelers.org>, registered with GoDaddy.com, Inc.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 25, 2011; the National Arbitration Forum received payment on July 25, 2011.
On July 25, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <kays-jewelers.org> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 July 29, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 18, 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@kays-jewelers.org. Also on July 29, 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 August 24, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 <kays-jewelers.org> domain name is confusingly similar to Complainant’s KAY JEWELERS mark.
2. Respondent does not have any rights or legitimate interests in the <kays-jewelers.org> domain name.
3. Respondent registered and used the <kays-jewelers.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Sterling Jewelers Inc, is in the business of providing jewelry and jewelry store services. Complainant owns the KAY JEWELERS mark and has used the mark since at least 1919. Complainant also registered the <kayjewelers.com> domain name in 1997. Complainant has a registered trademark for its KAY JEWELERS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,222,703 registered February 9, 1999).
Respondent, Mohd Isnul Hisam Ismail, registered the <kays-jewelers.org> domain name on May 9, 2011. The disputed domain name resolves to a website which contains unauthorized information about Complainant’s jewelry services and several links to competing jewelry websites.
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 contends that it has established rights in its KAY JEWELERS mark. Complainant holds a number of trademark registrations for its mark, including one with the USPTO (Reg. No. 2,222,703 registered February 9, 1999). While Respondent is located in Malaysia, Complainant is not required to hold a trademark registration in the country of Respondent as long as it has a registration in some jurisdiction. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). The Panel concludes that Complainant sufficiently demonstrated its rights in the KAY JEWELERS mark through its registration with the USPTO 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 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).
Complainant also submits that Respondent’s <kays-jewelers.org> domain name is confusingly similar to its KAY JEWELERS mark. The disputed domain name simply adds a hyphen to the mark, a single letter “s,” and the generic top-level domain (“gTLD”) “.org.” The Panel finds that minor additions of punctuation, such as a hyphen, and a gTLD do not sufficiently distinguish the disputed domain name from Complainant’s mark. See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). The Panel also holds that adding a single letter does not avoid a finding of confusing similarity. 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).”). Thus, the Panel holds that Respondent’s <kays-jewelers.org> domain name is confusingly similar to Complainant’s KAY JEWELERS mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant asserts that Respondent is lacking rights and legitimate interests in the disputed domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel found that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c). The Panel finds that Complainant has made a prima facie case. However, Respondent failed to submit any response to the Complaint, which the Panel may accept as evidence 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). Before making any determinations, the Panel will look to the record to evaluate whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant claims that Respondent has not been commonly known by the <kay-jewelers.org> domain name and makes no mention of having authorized Respondent to use its KAY JEWELERS mark within the disputed domain name. The WHOIS information identifies Respondent as “Mohd Isnul Hisam Ismail,” which is not similar to the disputed domain name. In light of these factors, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent’s <kay-jewelers.org> domain name resolves to a website that appears to offer goods for sale and information about Complainant’s jewelry business, but all of the featured links are third-party advertisements to businesses that directly compete with Complainant. Respondent likely receives some form of referral or click-through fees from these links. The Panel decides that Respondent’s use of the confusingly similar disputed domain name to host a website with misleading information about Complainant and links to competing jewelry websites 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 Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because the respondent's sole purpose in selecting the domain names was to cause confusion with the complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“The unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”); see also 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
While Complainant does not specifically address the argument, the Panel considers whether Respondent registered and is using the disputed domain name in order to disrupt Complainant’s jewelry business. Respondent is utilizing a confusingly similar disputed domain name, similar to Complainant’s official <kayjewelers.com> domain name, and incorporating Complainant’s KAY JEWELERS mark on the resolving website. Internet users discovering the <kay-jewelers.org> domain name may be directed to one of the featured third-party advertisements and purchase similar jewelry goods from a competitor instead of Complainant. The Panel finds that Respondent’s registration and use of the disputed domain name is disruptive to Complainant’s business and constitutes bad faith according to Policy ¶ 4(b)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Complainant alleges that Respondent’s use of the confusingly similar disputed domain name and Complainant’s KAY JEWELERS mark on the resolving site creates a likelihood of confusion as to Complainant’s association with the website content and endorsement of the third-party advertisements. The Panel infers that Respondent receives click-through fees from these advertisements. Accordingly, the Panel concludes that Respondent registered and is using the <kay-jewelers.org> domain name in order to profit from the confusion among Internet users and that such an operation is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).
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 <kays-jewelers.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: August 24, 2011
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