Sears Brands, LLC v. Digital Media Prospects Pty Ltd
Claim Number: FA1109001407113
Complainant is Sears Brands, LLC (“Complainant”), represented by David A. Wheeler of Greenberg Traurig, LLP, Illinois, USA. Respondent is Digital Media Prospects Pty Ltd (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sears-feedback.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 12, 2011; the National Arbitration Forum received payment on September 13, 2011.
On September 13, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <sears-feedback.com> 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 September 15, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 5, 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@sears-feedback.com. Also on September 15, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 October 12, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant markets merchandise and related services under its SEARS mark in both physical stores and online with the <sears.com> domain name.
Complainant holds registrations on file with the United States Patent and Trademark Office (“USPTO”) for its SEARS service mark (including Reg. No. 2,982,911, registered August 9, 2005).
Respondent registered the disputed <sears-feedback.com> domain name on July 29, 2011.
The disputed domain name resolves to a website that provides information and hyperlinks to Complainant’s feedback program.
The resolving website also contains hyperlinks to generic survey websites that are unrelated to Complainant.
Respondent’s <sears-feedback.com> domain name is confusingly similar to Complainant’s SEARS mark.
Respondent has no trademark or other intellectual property rights in the SEARS service mark.
Respondent’s use of the SEARS service mark is unauthorized.
Respondent is not commonly known by the disputed domain name.
Respondent does not have any rights to or legitimate interests in the <sears-feedback.com> domain name.
Respondent registered and uses the disputed <sears-feedback.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has rights in its SEARS service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USTPO. See Enter. Rent-A-Car Co. v. Language Direct, FA 306586 (Nat. Arb. Forum Oct. 25, 2004), and UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007), both holding that a trademark registration with the USPTO was sufficient to establish rights in the mark under the Policy.
This is so without regard to whether Complainant has registered its mark in a jurisdiction other than that of Respondent’s residence. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007), and Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007), both finding that under Policy ¶ 4(a)(i) a complainant is not required to own hold a mark registration in the country where a respondent resides or operates so long as that complainant owns a trademark registration with a national trademark authority.
Respondent’s <sears-feedback.com> domain name contains Complainant’s entire SEARS mark, with the mere addition of a hyphen, the generic term “feedback,” which relates to an aspect of Complainant’s business, and the generic top-level domain (“gTLD”) “.com.” These alterations of the mark in forming the disputed domain name do not distinguish the domain from the mark so as to avoid a finding of confusing similarity. See Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000), and Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003), both panels finding that the addition of a hyphen to the mark of another failed to differentiate the resulting domain name from the mark from which it derived.
See also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001), and Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001), both panels holding that the addition of a generic term to the mark of another in forming a domain name did not remove the domain name from the realm of confusing similarity.
Further see Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002), and Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003), both panels concluding that the addition of a gTLD was irrelevant to a Policy ¶ 4(a)(i) analysis.
The Panel therefore finds that Respondent’s <sears-feedback.com> domain name is confusingly similar to Complainant’s SEARS mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have any rights to or legitimate interests in the <sears-feedback.com> domain name. Once Complainant makes out a prima facie showing on this point, the burden shifts to Respondent to demonstrate that it has such rights or interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), holding that the burden shifts to a respondent to prove that it does have rights to or legitimate interests in a contested domain name where a complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii).
Complainant has made out a sufficient prima facie case under this head of the Policy. Therefore, and because Respondent has failed to respond to the allegations of the Complaint, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000), where a panel held that a respondent’s failure to respond to a UDRP Complaint allowed it to infer that that respondent did not have rights to or legitimate interests in a disputed domain name.
Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny, that Respondent has no trademark or other intellectual property rights in Complainant’s SEARS service mark, that Respondent’s use of the SEARS mark is unauthorized, and that Respondent is not commonly known by the disputed domain name. Moreover, the WHOIS information for the <sears-feedback.com> domain name identifies the registrant of the disputed domain name only as “Digital Media Prospects Pty Ltd,” which does not resemble the domain name. On this record, we therefore conclude that Respondent has failed to demonstrate that it has been commonly known by the disputed domain name so as to have rights to or legitimate interests in the domain under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), and St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007), the panels finding that a respondent was not commonly known by a disputed domain name where the pertinent WHOIS information and the evidence in the record gave no indication to that effect.
We next observe that Complainant asserts, without objection from Respondent, that Respondent’s <sears-feedback.com> domain name resolves to a website that provides information and hyperlinks to Complainant’s feedback program, and also contains hyperlinks to generic survey websites that are unrelated to Complainant. In the circumstances here presented, we may comfortably presume that Respondent receives click-through fees from the operation of the resolving website. This use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of a disputed domain name under Policy ¶ 4(c)(iii). See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007), and WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003), each of the panels finding in parallel circumstances that a respondent was not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of a disputed domain name under Policy ¶ 4(c)(iii).
The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s use of the <sears-feedback.com> domain name, which is confusingly similar to Complainant’s SEARS service mark, as alleged in the Complaint, and presumably for profit, evidences bad faith registration and use of the domain within the meaning of Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006), and Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), each of the panels determining that a respondent registered and used in bad faith a disputed domain name which was confusingly similar to the mark of another, where that respondent used the domain to host unrelated hyperlinks and likely profited in the process.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <sears-feedback.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 20, 2011
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