national arbitration forum

 

DECISION

 

Sears Brands, LLC v. Private Person / Bob R Rex

Claim Number: FA1110001412955

 

PARTIES

Complainant is Sears Brands, LLC (“Complainant”), represented by David A. Wheeler of Greenberg Traurig, LLP, Illinois, USA.  Respondent is Private Person / Bob R Rex (“Respondent”), Alabama, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <sears-holding.com>, registered with UK2 GROUP LTD.

 

PANEL

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.

 

Judge Harold Kalina (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 25, 2011; the National Arbitration Forum received payment on October 26, 2011.

 

On October 25, 2011, UK2 GROUP LTD. confirmed by e-mail to the National Arbitration Forum that the <sears-holding.com> domain name is registered with UK2 GROUP LTD. and that Respondent is the current registrant of the name.  UK2 GROUP LTD. has verified that Respondent is bound by the UK2 GROUP LTD. 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 October 26, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 15, 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-holding.com.  Also on October 26, 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 November 21, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <sears-holding.com> domain name is confusingly similar to Complainant’s SEARS mark.

 

2.    Respondent does not have any rights or legitimate interests in the <sears-holding.com> domain name.

 

3.    Respondent registered and used the <sears-holding.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Sears Brands, LLC, is a large retailer of a wide variety of products and services, from home merchandise to automotive products and pharmacy services.  Complainant owns multiple federal trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the SEARS mark (e.g., Reg. No. 1,726,260 registered October 20, 1992).  Complainant uses the mark as its brand name for all retail store fronts.

 

Respondent, Private Person / Bob R Rex, registered the disputed domain name on September 5, 2011.  The disputed domain name resolves to a website offering an online pharmacy.   

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant argues that it has established its rights in the SEARS mark by registering it with the USPTO (e.g., Reg. No. 1,726,260 registered October 20, 1992).  Complainant has submitted sufficient evidence in the form of registration certificates to verify that the mark is duly registered and that it is the owner of the registration.  Therefore, the Panel finds that Complainant has established its rights in the SEARS mark under Policy ¶ 4(a)(i).  See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).

 

Complainant also argues that Respondent’s <sears-holding.com> domain name is confusingly similar to its SEARS mark.  The disputed domain name includes the entire mark, merely adding the generic top-level domain “.com,” the generic term “holding,” and a hyphen.  The Panel finds that the additions of a gTLD, a generic term, and a hyphen do not sufficiently differentiate the disputed domain name from Complainant’s SEARS mark under Policy ¶ 4(a)(i), thereby making the two confusingly similar.  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 Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark).

 

The Panel finds that Complainant has established Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

The Panel finds that Complainant has made a prima facie case indicating that Respondent lacks rights or legitimate interests in the disputed domain name effectively shifting the burden of proof to Respondent.  See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding 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)).  Respondent has failed to file a Response in this matter which allows this Panel to accept the allegations made by Complainant and assume that Respondent lacks rights or legitimate interests in the disputed domain name.  See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).  Nonetheless, the Panel will still examine the entire record before making a determination regarding Respondent rights or legitimate interests in the disputed domain name in accordance with the factors listed in Policy ¶ 4(c). 

Complainant contends that Respondent is not commonly known by the disputed domain name.  Respondent has not offered any evidence to support a finding that it is commonly known by the disputed domain name.  The WHOIS information identifies the registrant of the disputed domain name as “Private Person/ Bob R Rex.”  Based upon the evidence on record and the WHOIS information, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); 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).

 

Complainant also contends that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.  Complainant has submitted evidence which indicates that Respondent offers an online pharmacy from the website to which the disputed domain name resolves.  Complainant states that this use competes directly with retail pharmacy services and products it legitimately offers from its own stores. The Panel finds that Respondent’s competing use of the disputed domain name does not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii).  See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).

 

The Panel finds that Complainant has established Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant alleges that the disputed domain name disrupts its business providing affirmative evidence of Respondent’s bad faith registration and use.  The disputed domain name resolves to a website that acts as an online pharmacy selling drugs to Internet users that arrive there.  Complainant offers pharmacy products and services under its marks, which makes Respondent’s website a competitor.  Internet users may arrive at Respondent’s website and purchase pharmaceutical products from Respondent instead of Complainant.  The Panel finds that this use does in fact disrupt Complainant’s business and indicates that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii).  See 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); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business).

 

Complainant also alleges that Respondent registered and is using the disputed domain name for its own commercial gain constituting bad faith registration and use.  As mentioned above, Respondent’s disputed domain name resolves to a website that acts as an online pharmacy.  Internet users may purchase pharmaceutical products from this website, which also displays Complainant’s mark prominently.  Respondent ostensibly generates revenue from the sale of those products.  Therefore, Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv) due to the commercial nature of the website and Respondent’s attempts to generate revenue from the confusion created by the disputed domain name.  See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant).

 

The Panel finds that Complainant has established Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <sears-holding.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Judge Harold Kalina (Ret.), Panelist

Dated:  December 1, 2011

 

 

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