KOHL'S Illinois, INC. v. Diamond Point Enterprises Limited
Claim Number: FA1203001435989
Complainant is KOHL'S Illinois, INC. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Diamond Point Enterprises Limited (“Respondent”), Antigua and Barbuda.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kolhls.com>, registered with Fabulous.Com Pty Ltd.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 23, 2012; the National Arbitration Forum received payment on March 23, 2012.
On March 25, 2012, Fabulous.Com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <kolhls.com> domain name is registered with Fabulous.Com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.Com Pty Ltd has verified that Respondent is bound by the Fabulous.Com Pty 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 March 30, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 19, 2012 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@kolhls.com. Also on March 30, 2012, 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 April 24, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1) Complainant claims rights in the KOHL’S mark through its numerous registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., 1,772,009 registered May 18, 1993).
2) Complainant uses the KOHL’S mark in its operation of department stores around the United States.
3) Respondent registered the <kolhls.com> domain name on October 1, 2002.
4) The disputed domain name resolves to a website that attempts to extract personal information from Internet users, in a scheme known as “phishing.”
5) Respondent’s registration of the domain name is a classic example of typosquatting.
6) Respondent is not sponsored by or affiliated with Complainant or its business.
7) Respondent is a serial cybersquatter and has been the Respondent in prior UDRP proceedings in which it was ordered to transfer the domain names at issue to the respective complainant’s.
8) Respondent attempted to sell the domain name to the public.
B. Respondent
Respondent did not submit a Response.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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."
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.
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.”).
Complainant asserts that it has rights in the KOHL’S mark through its many registrations with the USPTO (e.g., 1,772,009 registered May 18, 1993). See Exhibit E. In Victoria's Secret Stores Brand Mgmt., Inc. v. Machuszek, FA 945052 (Nat. Arb. Forum May 7, 2007), and Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004), the panels held that registering a mark with the USPTO secures the complainant’s rights in that mark under Policy ¶4(a)(i) . The Panel finds that Complainant established rights in its KOHLS mark under Policy ¶ 4(a)(i) by registering the mark with the USPTO. The Panel also finds that Complainant is not required to register its mark in the country where Respondent resides and operates its business for the purpose of Policy ¶ 4(a)(i). See 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); see also 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).
Complainant contends that the <kolhls.com> domain name is confusingly similar to the KOHLS mark because the domain name adds the letter “l” to the middle of the mark. The panel in Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) stated that the respondent’s domain name differed by only one letter, which was “insufficient to avoid a finding of confusing similarity.” The disputed domain name includes the generic top-level domain (“gTLD”) “.com.” In Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002), the panel determined that the addition of a gTLD is irrelevant when making a Policy ¶ 4(a)(i) analysis. The Panel finds that adding an extra letter and a gTLD to a domain name does not sufficiently alter the mark, rendering the disputed domain name confusingly similar to the KOHL’S mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent is not commonly known by the <kolhls.com> domain name and that Respondent does not have permission to use the mark. Complainant states that the WHOIS record, which identifies the registrant as “DIAMOND POINT ENTERPRISES LIMITED,” does not suggest Respondent is commonly known by the domain name. The Panel finds that the WHOIS information, as well as the lack of other supporting evidence, does not support the conclusion that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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); see also 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).
Complainant argues that Respondent is engaged in a “phishing” scheme, and provides screen shots of the resolving web page, which displays a text box that says “Congratulations! You are the Colorado winner,” and instructs the web page visitor to select a prize in exchange for an email address. Complainant asserts that Respondent’s phishing scheme is not a use that is connected with a bona fide offering of goods or services, and is not a legitimate noncommercial or fair use of the domain name. The Panel concludes that by using the domain name to conduct a scheme to acquire Internet users’ e-mail information, Respondent is not using the disputed domain name in a way demonstrating 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 HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s website, and is used to acquire personal information from Complainant’s potential associates fraudulently” does not fall within the parameters of Policy ¶¶ 4(c)(i) or (iii)).
Complainant asserts that the <kolhls.com> domain name is evidence of Respondent’s typosquatting. Complainant contends that Respondent takes advantage of common typographical errors of its KOHL’S mark, and that typosquatting demonstrates a lack of rights and legitimate interests in the domain name. The panel in IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) stated that the respondent did not have rights and legitimate interests in the domain names due to the fact that it took part in typosquatting by capitalizing from Internet users who mistakenly misspell the complainant’s mark. In LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003), the panel held that registering intentionally misspelled domain names is considered typosquatting, which is evidence that the respondent lacked rights and legitimate interests in the disputed domain names. The Panel finds that the misspelling in the disputed domain name takes advantage of Internet users attempting to access Complainant’s website, and demonstrates that Respondent does not possess rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii).
Complainant has proven this element.
Complainant argues that Respondent is a “serial cybersquatter” who has established a pattern of registering domain names for the purpose of preventing the holder of the mark from registering the domain name for itself. Complainant submits evidence of two other UDRP decisions transferring the disputed domain names from Respondent to the holder of the mark. See Priceline.com, Inc. v. Diamond Point Enters. Ltd., FA 1303915 (Nat. Arb. Forum March 4, 2010); see also Ashley Furniture Indus., Inc. v. Diamond Point Enters. Ltd., FA 1227724 (Nat. Arb. Forum Nov. 12, 2008). Further, Complainant submits evidence of two other domain names held by Respondent that it alleges are typosquatted from the rightful trademark owners. See Exhibit O. The panel in Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005) stated that the respondent registered the domain name to prevent the complainant from registering it and had been found to do so in prior UDRP proceedings, and found that a pattern of such registrations existed. Further, the panel in Sport Supply Group, Inc. v. Lang, D2004-0829 (WIPO Dec. 10, 2004) found that the respondent registered the domain name to prevent the complainant from reflecting its mark in a corresponding domain name, and that a pattern of such conduct was established by two prior adverse decisions under the UDRP against the respondent. The Panel concludes that Respondent registered the <kolhls.com> domain name to prevent Complainant from reflecting its mark in a domain name, and that the two prior UDRP proceedings transferring the domain names from Respondent demonstrate a pattern of bad faith registration and use under Policy ¶ 4(b)(ii).
Complainant argues that Respondent intentionally misleads Internet users who are seeking Complainant’s website by using a confusingly similar disputed domain name. Complainant contends that the domain name resolves to a website that states the visiting Internet user has won a prize and thereafter requires an email address from that user to proceed to its prize. The Panel determines that Respondent registered and is using the domain name with the intent to confuse consumers, and finds that the registration and use was undertaken in bad faith pursuant to 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 MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).
Complainant asserts that Respondent’s registration of the disputed domain name constitutes typosquatting and demonstrates bad faith registration and use. The Panel determines that Respondent’s registration and use of the <kolhls.com> domain name is evidence of bad faith under Policy ¶ 4(a)(iii) because it capitalizes on common spelling errors of Internet users who may be attempting to access Complainant’s official website. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); see also Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy 4 ¶ (a)(iii)).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <kolhls.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: May 4, 2012
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