national arbitration forum

 

DECISION

 

KOHL'S ILLINOIS, INC. v. c/o KPHLS.COM; c/o KOHALS.COM; c/o KOHLSDEPARTMENTSTORE.COM; c/o KHOLS.COM

Claim Number: FA1205001442950

PARTIES

Complainant is KOHL'S ILLINOIS, INC. (“Complainant”), represented by CitizenHawk, Inc., California, USA.  Respondent is c/o KPHLS.COM; c/o KOHALS.COM; c/o KOHLSDEPARTMENTSTORE.COM; c/o KHOLS.COM (“Respondent”), Washington, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <kphls.com>, <kohals.com>, and <kohlsdepartmentstore.com>, registered with NAMESDIRECT, and <khols.com>, registered with DOTREGISTRAR, LLC.

 

PANEL

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.

The Honourable Neil Anthony Brown QC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 8, 2012; the National Arbitration Forum received payment on May 8, 2012.

 

On May 9, 2012, NAMESDIRECT confirmed by e-mail to the National Arbitration Forum that the <kphls.com>, <kohals.com>, and <kohlsdepartmentstore.com> domain names are registered with NAMESDIRECT and that Respondent is the current registrant of the names.  NAMESDIRECT has verified that Respondent is bound by the NAMESDIRECT 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 11, 2012, DOTREGISTRAR confirmed by e-mail to the National Arbitration Forum that the <khols.com> domain name is registered with DOTREGISTRAR, LLC and that Respondent is the current registrant of the name.  DOTREGISTRAR, LLC has verified that Respondent is bound by the ; DOTREGISTRAR, LLC 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 15, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 4, 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@kphls.com, postmaster@kohals.com, postmaster@kohlsdepartmentstore.com, and postmaster@khols.com.  Also on May 15, 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 June 7, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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 nameS be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

1.         Complainant is the owner of the KOHL’S trademark registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,772,009 registered May 18, 1992);

2.         Respondent’s <kphls.com>, <kohals.com>, <kohlsdepartmentstore.com>, and <khols.com> domain names are confusingly similar to Complainant’s KOHL’S mark;

3.         Respondent’s disputed domain names are classic examples of typosquatting;

4. Complainant has not licensed, authorized, or permitted Respondent to register domain names incorporating the KOHL’S mark;

5.         There is no evidence that Respondent is commonly known by the disputed domain name;

6.         The earliest Respondent registered one of the disputed domain names is November 7, 2002;

7.         Respondent resolves the disputed domain names to inactive websites;

8.         Respondent resolved the <khols.com> domain name to a click-through website to achieve commercial gain.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.    Complainant is a long-established and successful company engaged in the department store industry.

2.    Complainant is the owner of the KOHL’S trademark registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,772,009 registered May 18, 1992);

3.   The earliest Respondent registered one of the disputed domain names is November 7, 2002;

4.   Respondent resolves the disputed domain names to inactive websites, but it had previously resolved the <khols.com> domain name to a click-through website to achieve commercial gain.

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."

 

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.”).

 

Preliminary Issue: Multiple Respondents

 

In this matter, which relates to four domain names, Complainant has joined four named entities as Respondents, indirectly asserting that the domain names at issue are controlled by the same person and/or entity, which is operating under several aliases.  Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” In that regard, the Panel notes that the WHOIS information for the registrants of the disputed domain names all include the same address for their administrative and technical contacts. 

           

The Panel finds that there is sufficient evidence on record that the disputed domain names are controlled by the same entity and will thus proceed with the instant proceedings.

 

Identical and/or Confusingly Similar

 

The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant contends that registering the KOHL’S mark with the USPTO (e.g., Reg. No. 1,772,009 registered May 18, 1992) established its rights in the mark.  Complainant submits printouts from the USPTO website to verify its contention regarding the KOHL’S mark.  The Panel notes that the printout indicates that the mark is duly registered and that Complainant is the owner of the registration.  Therefore, the Panel concludes that Complainant established its rights in the KOHL’S mark under Policy ¶ 4(a) (i), regardless of Respondent’s country of residence. 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 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 next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s KOHL’S mark. Complainant contends that Respondent’s <kphls.com>, <kohals.com>, <kohlsdepartmentstore.com>, and <khols.com> domain names are confusingly similar to Complainant’s KOHL’S mark.  Complainant states that the disputed domain names are comprised of its entire mark, while adding, deleting, transposing, and changing single letters within the mark.  The Panel infers that Complainant is referring to the <kphls.com>, <kohals.com>, and <khols.com> domain names, as the <kohlsdepartmentstore.com> domain name adds the descriptive words “department” and “store” to the mark.  The Panel further notes that all of the disputed domain names omit the apostrophe of the mark, while adding the generic top-level domain (“gTLD”) “.com.”  The Panel concludes that Respondent’s disputed domain names are confusingly similar to Complainant’s KOHL’S mark under Policy ¶ 4(a) (i).  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 Wyndham IP Corp. v. LaPorte Holdings, Inc., FA 373545 (Nat. Arb. Forum Jan. 17, 2005) (finding the <wynhdam.com> and <wyandham.com> domain names to be confusingly similar to the complainant’s WYNDHAM mark because the domain names merely transposed letters in the mark); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark).

 

Complainant has thus made out the first of the three elements that it must establish.

 

Rights or Legitimate Interests

 

It is now generally accepted that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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.”).

 

The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:

 

(a)       Respondent has chosen to take Complainant’s KOHL’S  trademark and to use it in its domain names , making only minor spelling changes and in one case adding the descriptive words “department” and “ store”, thus enhancing the confusing similarity that exists between the domain names and the trademark;

 

(b) Respondent has then caused the disputed domain names to resolve to inactive websites, but in the case of the domain name <khols.com> to resolve to a click-through website to achieve commercial gain.

 

(c)        Respondent has engaged in these activities without the consent or approval of Complainant;

 

(d) Complainant also submits that Respondent is not commonly known by the disputed domain names. In that regard, Complainant claims there is no evidence that Respondent is commonly known by the <kphls.com>, <kohals.com>, <kohlsdepartmentstore.com>, and <khols.com> domain names.  The Panel notes that Respondent failed to submit any evidence in support of a finding contrary to Complainant’s claim.  The Panel also notes that the WHOIS information identifies the registrant of the disputed domain names as “c/o KPHLS.COM; c/o KOHALS.COM; c/o KOHLSDEPARTMENTSTORE.COM; c/o KHOLS.COM.”  Therefore, the Panel finds that Respondent is not commonly known by the <kphls.com>, <kohals.com>, <kohlsdepartmentstore.com>, and <khols.com> domain names under Policy ¶ 4(c) (ii).  See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”).

 

(e) Complainant also claims that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names.  Complainant states that the <khols.com> domain name resolved to a click-through website to achieve commercial gain.  The Panel notes that the resolving website offered links to third-party businesses, as well as links to Complainant’s own website.  The Panel finds that Respondent’s previous use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <khols.com> domain name under Policy ¶ 4(c) (i) and Policy ¶ 4(c) (iii), respectively.  See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).

 

(f) Complainant also asserts that Respondent currently resolves the <kphls.com>, <kohals.com>, <kohlsdepartmentstore.com>, and <khols.com> domain names to inactive websites.  Previous panels have held that failing to make an active use of a disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.  See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c) (i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c) (iii)); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a) (ii).”).  The Panel notes that Complainant submits printouts from the resolving websites which indicate that the websites are blank.  Thus, the Panel finds that Respondent’s failure to make an active use of the disputed domain names does not qualify as 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).

 

(g) Complainant also asserts that Respondent engaged in typosquatting when it chose to constitute the disputed domain names in their current form.  The Panel notes that the <kohlsdepartmentstore.com> domain name adds terms to the KOHL’S mark, thereby removing it from typosquatting analysis.  Therefore, the Panel infers that Complainant is referring to typosquatting in the cases of the <kphls.com>, <kohals.com>, and <khols.com> domain names.  Complainant states that the disputed domain names all differ from its KOHL’S mark by a single letter.  The Panel notes that the marks substitute, add, and transpose letters into the domain names.  Respondent has engaged in typosquatting, among other inappropriate conduct and on the basis of that finding the Panel concludes that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii) See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).

 

All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.

 

Complainant has thus made out the second of the three elements that it must establish.

 

Registration and Use in Bad Faith

 

It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

 

Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.

 

First, Complainant alleges that Respondent resolved the <khols.com> domain name to a click-through website to achieve commercial gain.  Complainant states that in 2007 the disputed domain name resolved to a pay-per-click website offering links to third party businesses.  The Panel notes that the printout provided by Complainant to verify the use indicates that the links offered are unrelated to Complainant’s business.  Therefore, as the Panel determines that Respondent attempted to create confusion as to Complainant’s affiliation with the disputed domain name and attempted to profit from that confusion through the unrelated hyperlinks, the Panel concludes that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).  See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).

Secondly, Complainant also alleges that all of the <kphls.com>, <kohals.com>, <kohlsdepartmentstore.com>, and <khols.com> domain names currently resolve to inactive websites.  Complainant submits screenshots from the resolving websites.  See Complainant’s Exhibit H.  The Panel notes that the screenshots provided indicate that the resolving websites are blank.  Therefore, the Panel finds that Respondent’s failure to make an active use of the disputed domain names demonstrates bad faith registration and use under Policy ¶ 4(a) (iii).  See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).

 

Thirdly, the Panel has noted that in some cases Respondent has engaged in typosquatting, which shows the overall nature of Respondent’s modus operandi. The Panel therefore concludes that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(a) (iii).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a) (iii)).

 

Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the KOHL’S mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.

 

Complainant has thus made out the third of the three elements that it must establish.

 

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 <kphls.com>, <kohals.com>, <kohlsdepartmentstore.com>, and <khols.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

The Honourable Neil Anthony Brown QC

Panelist

Dated:  June 7, 2012

 

 

 

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