Kohls Illinois, Inc. v. Fox Business Systems / KansasNet
Claim Number: FA1206001447358
Complainant is Kohl's Illinois, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Fox Business Systems / KansasNet (“Respondent”), represented by James Lund, Kansas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kols.com>, registered with Tucows.com Co.
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.
Charles A. Kuechenmeister, Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 5, 2012; the National Arbitration Forum received payment on June 5, 2012.
On June 8, 2012, Tucows.com Co. confirmed by e-mail to the National Arbitration Forum that the <kols.com> domain name is registered with Tucows.com Co. and that Respondent is the current registrant of the name. Tucows.com Co. has verified that Respondent is bound by the Tucows.com Co. 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 June 12, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 2, 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@kols.com. Also on June 12, 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.
A timely Response was received and determined to be complete on June 28, 2012.
A timely Additional Submission was received from Complainant on July 3, 2012 and determined to be in conformity with the Forum’s Supplemental Rule 7.
On July 6, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Charles A. Kuechenmeister as Panelist.
A timely Additional Submission was received from Respondent on July 6, 2012 and determined to be in conformity with the Forum’s Supplemental Rule 7.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
The Panel makes the findings and determinations set forth below with respect to the Domain Name.
Complainant has established its rights in KOHL’S mark for the purposes of Policy ¶ 4(a) by registering it with the USPTO, Reg. No. 1,772,009 registered May 18, 1993 for retail grocery store services, and Reg. No. 2,047,904 registered March 25, 1997 for retail department store services. 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, Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
The Domain Name is confusingly similar to the KOHL’S mark. It removes the letter “h” and the apostrophe from Complainant’s mark, while adding the generic top-level domain (“gTLD”) “.com.” Based upon these observations, the Panel finds that the <kols.com> domain name is confusingly similar to the KOHL’S mark pursuant to Policy ¶ 4(a)(i). See LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that the omission of an apostrophe did not significantly distinguish the domain name from the mark); see also Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Based upon the foregoing, the Panel finds that the Domain Names are confusingly similar to the KOHL’S Mark for the purposes of Policy ¶ 4(a)(i), and that Complainant has substantial and demonstrated rights in that mark.
If a complainant makes a prima facie case that the respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii), 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 interest 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, 2 006) (“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 asserts that Respondent’s lack of rights or legitimate interests in the Domain Name is demonstrated by several circumstances present in this case: (1) Respondent has not been licensed or permitted to use the KOHL’S Mark or any domain names incorporating that mark, (2) Respondent is not commonly known by the Domain Name or any variation thereof, and (3) Respondent’s practice at one time of using the Domain Name to resolve to a website furnishing links to Complainant and other companies that directly compete with Complainant is not a bona fide offering of goods and services. On these facts it appears that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the Domain Name. It is thus incumbent upon Respondent to demonstrate that it does.
Respondent’s principal contention in this regard is that prior to notice of any dispute over the Domain Name it made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services. The evidence of such preparations consists primarily of Respondent’s assertions that over the years it engaged a series of web designers to develop a website resolving from the Domain Name that was to be a “self-managed/automated subscriber portal for various online product offerings including Internet access services, online data backups, web and application hosting, etc., under the name “Kansas Online Systems.” Respondent described the project as a “pretty ambitious goal,” and it must have been, as none of the web designers actually finished the project, each scrapping it “in favor of a newer/better core design.” For a period of at least one year before the Complaint was filed herein there appears to have been little if any attention given to the project, as Respondent was unaware during that time that the Domain Name was resolving to a parked site containing links to other commercial websites.
Although the evidence presented by Respondent is thin, the Panel is nevertheless persuaded that prior to any notice of the dispute Respondent did in fact engage in demonstrable preparations, at least in the 10 or 11 years immediately following its registration of the Domain Name, to use the name in connection with a bona fide offering of goods and services within the meaning of Policy ¶ 4(c)(i). As detailed above, there is no evidence of more recent preparations by Respondent to use the Domain Name for such purposes, but this does not negate the preparations Respondent made earlier, and Respondent states that it intends to finish development of the site. Policy ¶ 4(c)(i) is silent as to the effect of any possible lessening, discontinuance or abandonment of preparations to use a disputed domain name in connection with a bona fide offering of goods and services. The Panel can envision circumstances in which a respondent could be found to have lessened, discontinued or abandoned actual preparations to use a domain name for such purposes to the extent that it could lose the benefit of earlier work under Policy ¶ 4(c)(i), but those circumstances are not yet evident in this case.
Based upon the foregoing, the Panel concludes that the Respondent has demonstrated that it has rights and legitimate interests in respect of the Domain Name.
In light of the Panel’s finding and determination with respect to the Rights or Legitimate Interests element of the Complaint, the Panel declines to review or comment upon the allegations regarding bad faith. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining elements unnecessary).
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <kols.com> domain name REMAIN WITH Respondent.
Charles A. Kuechenmeister, Panelist
Dated: July 18, 2012
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