Sears Brands, LLC v. Henry Wasserman
Claim Number: FA1208001456915
Complainant is Sears Brands, LLC (“Complainant”), represented by Christopher V. Carani of McAndrews, Held, and Malloy, Ltd., Illinois, USA. Respondent is Henry Wasserman (“Respondent”), represented by Andrew Vasserman of Vasserman & Associates LLP, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The seven domain names at issue are <sears-appliance.com>, <sears-repair.com>, <searsapplaincerepairservice.com>, <searsappliancerepairservice.com>, <searsappliancerepair.biz>, <searsappliancerepair.info>, and <searsappliancerepair.org>, registered with 1&1 Internet Ag.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Linda M. Byrne as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 7, 2012; the National Arbitration Forum received payment on August 7, 2012.
On August 8, 2012, 1&1 Internet Ag confirmed by e-mail to the National Arbitration Forum that the <sears-appliance.com>, <sears-repair.com>, <searsapplaincerepairservice.com>, <searsappliancerepairservice.com>, <searsappliancerepair.biz>, <searsappliancerepair.info>, and <searsappliancerepair.org> domain names are registered with 1&1 Internet Ag and that Respondent is the current registrant of the names. 1&1 Internet Ag has verified that Respondent is bound by the 1&1 Internet Ag 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 August 10, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 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@sears-appliance.com, postmaster@sears-repair.com, postmaster@searsapplaincerepairservice.com, postmaster@searsappliancerepairservice.com, postmaster@searsappliancerepair.biz, postmaster@searsappliancerepair.info, and postmaster@searsappliancerepair.org. Also on August 10, 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 September 4, 2012.
On September 10, 2012, the National Arbitration Forum received an Additional Submission from the Complainant. The Forum did not consider the Additional Submission timely because the Forum did not receive the fee until September 11, 2012. On September 14, 2012, Respondent also filed an Additional Submission.
On September 11, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Linda M. Byrne 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.
Complainant requests that the seven domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant alleges that since 1935, Sears and its network of licensed service providers have used the SEARS mark in association with the installation, repair and maintenance of “household appliances, home improvement, heating and cooling systems, security systems, lawn and garden equipment, office equipment, home electronics equipment, power tools, sporting goods, doors, windows, siding and roofing, as well as plumbing services and carpet, upholstery and air duct cleaning services. Sears is the national largest provider of home service, with more than 11 million service calls made annually.”
Complainant alleges that Respondent has no rights or legitimate interest with respect to the word “Sears” in the seven domain names. As evidence of bad faith, Complainant asserts that “Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites by creating a likelihood of confusion with the Complainant’s mark…” According to Complainant, “Not only do the URLs of the websites intentionally mislead consumers, the Respondent’s websites also use numerous business names that also are intended to mislead consumers that the Respondent is a Sears® business. Such names include Sears Appliance Repair, Sears Repair, Sears Kenmore Appliance Repair, Search Appliance Services Company of the USA, Search Repair of America, and Sears Kenmore Appliance Repair of America.” The Complainant also alleges that, “Each of the websites apparently uses monetization schemes by providing advertisements to legitimate Sears businesses and that the sites incorrectly state that the corresponding entities are accredited by the Better Business Bureau.”
On June 26, 2012, Complainant sent a cease and desist letter to Respondent, requesting that the Respondent voluntarily stop using the SEARS and KENMORE trademarks, including the use of these terms in domain names. The record contains no response to this letter from Respondent.
B. Respondent
Respondent alleges that the seven domain names are not confusingly similar to Complainant’s SEARS trademark. Respondent states, “Respondent’s company (Authorized Appliance Repair) is a Sears/ServiceLive authorized service provider/member…and, through the use of these domain names, Respondent is merely representing to the public that his company offers repair services for Sears appliances as an authorized Sears/ServiceLive service provider/member and is not claiming to be Sears. In addition, Respondent’s middle name is Sears, and he, therefore, has the right to use his name as part of his business’s public profile.”
Respondent also argues that he is “making a legitimate and fair use of the domain names in question, without the intent to mislead or divert consumers or to tarnish the trademark or service marks in question. Rather, Respondent is merely representing to the public that his company offers repair services for Sears appliances.”
C. Additional Submissions
Complainant argues that Respondent has not proven that it is an authorized Search/ServiceLive service provider (e.g., by submitting a contract to that effect). Even if this status were proven, Complainant argues that the ServiceLive standard agreement prohibits the use of “ServiceLive’s name, trademarks, service marks or commercial symbols or logos…in any manner…” In any event, Complainant argues that “ServiceLive has terminated its relationship with [Authorized Appliance Repair], Respondent, and Respondent’s attorney…” Complainant noted that Respondent owns over 100 domain names, some of which contain the trademarks of third parties such as MAYTAG and GE. Complainant also points out that Respondent never provides evidence that he actually uses his alleged middle name “Sears.”
In his Additional Submission, Respondent argues that the disputed domain names are not confusingly similar to the Complainant’s SEARS trademark because Respondent is promoting his repair services for appliances sold by Complainant. Respondent also argues that he is an authorized service provider of Complainant, referring to a copy of an unsigned ServiceLive agreement that is attached to the Response. Respondent also argues that nowhere in the ServiceLive agreement does it state that Respondent is prohibited from using the SEARS trademark. Furthermore, Respondent argues that it is not attempting to trade on the goodwill of Complainant’s SEARS trademark, and the Respondent only represents to the public that he repairs appliances sold by Complainant. Respondent argues that ServiceLive terminated its agreement with Respondent in bad faith and after receipt of the Response in this UDRP proceeding. Finally, Respondent submits that its registration of domain names that include SEARS (and other trademarks owned by third parties) does not indicate that Respondent engaged in a pattern of improper conduct.
Complainant owns an extensive family of trademarks and services marks for the mark SEARS in connection with appliances, appliance repair and appliance retail services.
ServiceLive, Inc., an affiliate of Complainant, is an online marketplace where home owners can find prescreened professionals to assist with home repair projects. Respondent was evidently affiliated with ServiceLive, but ServiceLive terminated its relationship with Respondent and his company, Authorized Appliance Repair at some date after the date of the Response to the UDRP Complaint. The record contains no evidence that Respondent actually provides repair services for SEARS products. Respondent was never directly affiliated with Complainant and is no longer affiliated with ServiceLive.
The seven websites corresponding to the seven domain names are all very similar if not identical to each other. The headline at the top of the home page is “Sears Repair,” above a photo of several types of appliances. The text states in part, “We provide professional repair on Kenmore Washer, Kenmore Dryer…Kenmore Dishwasher, and all other makes and models. Our technicians are trained to work on all Sears Appliances. Our factory trained Sears service experts will handle your sears [sic] repair.”
Another page of the website states, “For the most reliable appliance repair services, call the experts at Sears Appliance Service Company of the USA. Sears Appliance Repair services all major brands of appliances including Kenmore, GE, Amana, Frigidaire, and many more… No repair is too complex for the skilled technicians at Sears Appliance Repair...” The seven websites contain several such references to the company affiliated with the website, i.e., a company called “Sears Appliance Repair.” The websites do not contain any prominent display of the name of Respondent’s company, Authorized Appliance Repair. The record contains no evidence that Respondent is authorized to operate under the names “Sears Appliance Repair” or “Sears Appliance Service Company.”
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.
This Panel concludes that Complainant has sufficiently demonstrated its rights in the SEARS mark under Policy ¶ 4(a)(i) by virtue of its registration of SEARS with the U.S. Patent and Trademark Office. These U.S. registrations evidence Complainant’s use of the SEARS trademark since 1935. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
The Panel finds that the Respondent’s <sears-appliance.com>, <sears-repair.com>, <searsapplaincerepairservice.com>, <searsappliancerepairservice.com>, <searsappliancerepair.biz>, <searsappliancerepair.info>, and <searsappliancerepair.org> domain names are confusingly similar to Complainant’s mark. Respondent includes the SEARS mark in all of the disputed domain names, and the disputed domain names also contain generic terms that describe Complainant’s business, such as “repair,” “appliance,” and service.” See Caterpillar Inc. v. Quin, D2000-0314 (WIPO) (June 12, 2000) (finding that the domain names, <caterpillarparts.com> and <caterpillarspares.com>, were confusingly similar to the complainant’s CATERPILLAR mark); Whirlpool Props., Inc. v. Ace Appliances Parts and Service, FA 109386 (Nat. Arb. Forum May 24, 2002) (holding that the addition of the term “parts” to the complainant’s WHIRLPOOL and KITCHENAID marks failed to properly distinguish the <whirlpoolparts.com> and <kitchenaidparts.com> domain names from the complainant’s Whirlpool and Kitchenaid marks).
Additionally, the disputed domain names contain generic top-level domains (“gTLDs”), which do not sufficiently distinguish Respondent’s domain names from Complainant’s trademarks. Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (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). Therefore, the addition of descriptive terms and gTLDs to Complainant’s SEARS mark is not sufficient to prevent likelihood of confusion with the SEARS trademark under Policy ¶ 4(a)(i).
Accordingly, the Panel finds that Respondent’s domain names are confusingly similar to Complainant’s SEARS trademark.
The Panel finds that the WHOIS information for the Respondent lists “Henry Wasserman” as the registrant of the disputed domain names, which is not similar to any of the domain names. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (respondent was not commonly known by the <lilpunk.com> domain name, as shown by WHOIS information, coupled with complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent argues that its use of the SEARS trademark was authorized by Complainant, by virtue of Respondent’s affiliation with ServiceLive, Complainant’s authorized repair service provider. In support of this argument, the Response attaches ServiceLive’s standard Provider Agreement (with no
evidence that it was executed by Respondent and ServiceLive). The Response also attaches two web pages that Andrew Vasserman (not Respondent) has been “ServiceLive Approved.” The date of these ServiceLive web pages is August 30, 2012, which is several months after Complainant sent a cease and desist letter to Respondent, and several weeks after the Complaint was filed. (Andrew Vasserman is Respondent’s attorney.)
In order for Respondent to prove rights or legitimate interests in the domain names, the Respondent’s bona fide offering of goods or services must have been provided before any notice to Respondent of the dispute. In this case, Respondent’s proof of his attorney’s status as a ServiceLive member is dated August 30, 2012, which is well after Respondent received notice from Complainant that his use of the SEARS trademark in domain names was unauthorized, and well after the date of the UDRP Complaint involving the seven domain names.
In view of the above, this Panel concludes that Respondent is not authorized by, endorsed by, sponsored by, or affiliated with Complainant as of the relevant time period. Respondent has not provided sufficient evidence of bona fide repair services on behalf of Complainant that would rise to the level of rights or legitimate interests in the domain names. See G.D. Searle & Co. v. Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002) (respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from the complainant did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i)).
Respondent’s seven websites make reference to the trademarks of third parties, such as MAYTAG. However, the Respondent does not make a bona fide use of the domain names by using third party trademarks and by possibly offering services that compete with Complainant. See Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (respondent’s “advertising of legal services and sale of law-related books under [the complainant's] name is not a bona fide offering of goods and services because [the respondent] is using a mark confusingly similar to the [complainant's] to sell competing goods”).
In summary, this Panel concludes that Respondent is not making 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).
Respondent has not proven his authorization to use Complainant’s SEARS mark. To the contrary, Respondent knows he is not authorized to do so because Complainant contacted Respondent. Despite Complainant’s cease and desist letter, Respondent chose to continue using the SEARS trademark extensively on its websites in order to appear to be affiliated with Complainant. Respondent used “SEARS” as part of the seven domain names, and also promoted himself as “Sears Appliance Repair” and “Sears Appliance Service Company,” evidently without authorization. As such, Respondent is diverting business originally intended for Complainant. See Cf. Vrensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO April 22, 2003).
In view of the above, this Panel finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
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-appliance.com>, <sears-repair.com>, <searsapplaincerepairservice.com>, <searsappliancerepairservice.com>, <searsappliancerepair.biz>, <searsappliancerepair.info>, and <searsappliancerepair.org> domain names be TRANSFERRED from Respondent to Complainant.
Linda M. Byrne, Panelist
Dated: September 25, 2012
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