Kohl’s Illinois, Inc. v. Above.com Domain Privacy
Claim Number: FA1211001472932
Complainant is Kohl’s Illinois, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <akohls.com>, <jkohls.com>, <kihls.com>, <kiohls.com>, <kjohls.com>, <kofls.com>, <koghls.com>, <kohjls.com>, <kohkls.com>, <kohlds.com>, <kohlf.com>, <kohlso.com>, <kohlw.com>, <kohlys.com>, <kohyls.com>, <kokhls.com>, and <wkohls.com>, registered with Above.Com Pty LTD.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 27, 2012; the National Arbitration Forum received payment on November 27, 2012.
On November 27, 2012, Above.Com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <akohls.com>, <jkohls.com>, <kihls.com>, <kiohls.com>, <kjohls.com>, <kofls.com>, <koghls.com>, <kohjls.com>, <kohkls.com>, <kohlds.com>, <kohlf.com>, <kohlso.com>, <kohlw.com>, <kohlys.com>, <kohyls.com>, <kokhls.com>, and <wkohls.com> domain names are registered with Above.Com Pty LTD. and that Respondent is the current registrant of the names. Above.Com Pty LTD. has verified that Respondent is bound by the Above.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 November 28, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 18, 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@akohls.com, postmaster@jkohls.com, postmaster@kihls.com, postmaster@kiohls.com, postmaster@kjohls.com, postmaster@kofls.com, postmaster@koghls.com, postmaster@kohjls.com, postmaster@kohkls.com, postmaster@kohlds.com, postmaster@kohlf.com, postmaster@kohlso.com, postmaster@kohlw.com, postmaster@kohlys.com, postmaster@kohyls.com, postmaster@kokhls.com, and postmaster@wkohls.com. Also on November 28, 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 December 28, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 names be transferred from Respondent to Complainant.
A. Complainant
Based in Menomonee Falls, Wisconsin, Kohl’s Illinois, Inc. (NYSE: KSS) is a family-focused, value-oriented specialty department store offering moderately priced, exclusive and national brand apparel, shoes, accessories, beauty and home products in an exciting shopping environment. With a commitment to environmental leadership, Kohl’s operates 1,146 stores in 49 states. Kohl’s enjoys widespread consumer recognition and spends millions of dollars annually in advertisement and promotion of the Marks on the Internet through its website located at <KOHLS.COM>.
Kohl’s differentiates itself from the competition through innovative marketing and expansion of media channels, as well as a relentless focus on hassle-free returns, no exclusions, exciting sales events, and discounts like KOHL’S CASH. In support of the communities it serves, Kohl’s has raised more than $208 million for children’s initiatives nationwide through its KOHL’S CARES cause merchandise program, which operates under Kohl's Cares, LLC, a wholly-owned subsidiary of Kohl's Department Stores, Inc. Since 1998, Kohl’s has been listed on the S&P 500. In 2010, Kohl’s was listed at #135 in the Fortune 500. Additionally, Kohl’s has received numerous awards including the following representative examples:
2011
America's Most Reputable Company, Forbes, 2011
2010
National
Top 50 Green Companies (#2), Green Power Partnership, 2010
2009
Best
Place to Launch a Career, BusinessWeek, 2009
Top 200 World's Most Reputable Companies, Forbes, 2009
Barron's 500, Barron's, 2009
Top Intern Employers, CollegeGrad, 2009
Top Entry Level Employers, CollegeGrad, 2009
Top Master's Employers, CollegeGrad, 2009
Top 500 Green Companies, Newsweek, 2009
Kohl’s is the owner of the famous KOHL’S trademark and trade name, among many other valuable intellectual property rights. These rights include U.S. Trademark Registration Nos. 1,772,009 (KOHL’S), 2,292,684 (KOHL’S logo), and 2,047,904 (KOHL’S), among many others. Kohl’s has used the KOHL’S mark in commerce since at least as early as 1962 in connection with retail store services.
In addition, Kohl’s has used its distinctive KOHL’S logo since at least as early as 1996. Through its long and continuous use of its registered Marks, Kohl’s has developed strong and incontestable federal trademark rights.
Additionally, the overall look and feel of Kohl’s gift cards and coupons has become distinctive and is easily identified by consumers. Kohl’s prominently uses the Marks, its distinctive coupons, and promotional materials in its stores, at <KOHLS.COM>, and in all advertising and promotional pieces.
Given that
Kohl’s spends millions of dollars each month on advertising, Kohl’s has
developed tremendous recognition and goodwill in the KOHL’S name and its
distinctive gift cards. Kohl’s federal registrations for the Marks have not
been abandoned, cancelled, or revoked.
Based on its federal trademark registrations and extensive use, Kohl’s owns the
exclusive right to use the Marks in connection with retail department store services.
[a.] |
The Disputed Domain Name(s) are nearly identical and confusingly
similar to Complainant's Marks.
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[b.] |
Respondent has no rights or legitimate interests in respect of
the Disputed Domain Name(s) for the following reasons:
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[c.] |
The Disputed Domain Name(s) should be considered as having been
registered and being used in bad faith for the following reasons:
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B. Respondent
Respondent failed to submit a Response in this proceeding. However, the owner of kohlys.com, koghls.com, kohjls.com and kohlf.com agreed in an email to the case administrator to transfer these four domain names (which is less than the 17 domain names at issue in this proceeding).
(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.
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 Complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(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 (other than the partial consent to transfer in an email previously mentioned), 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 Kohl’s Illinois, Inc. claims it is a family-focused, value-oriented specialty department store offering moderately priced, exclusive and national brand apparel, shoes, accessories, beauty and home products in an “exciting shopping environment.” Complainant claims to enjoy widespread consumer recognition and spends millions of dollars annually in advertisement and promotion of the marks on the Internet through its website located at <kohls.com>. Complainant claims to own (and shows evidence of) trademark registrations with the United States Patent & Trademark Office (“USPTO”) for the KOHL’S mark (e.g., Reg. No. 1,772,009, registered May 18, 1993) and for the KOHL’S DEPARTMENT STORES mark (Reg. No. 2,606,690, registered August 13, 2002). Although Respondent appears to reside in Australia, Policy ¶4(a)(i) only requires Complainant to establish its rights in the marks in some jurisdiction and not Respondent’s jurisdiction. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds Complainant’s registration of its marks with the USPTO is sufficient to establish rights in the marks under Policy ¶4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶4(a)(i)).
Complainant claims Respondent’s <akohls.com>, <jkohls.com>, <kihls.com>, <kiohls.com>, <kjohls.com>, <kofls.com>, <koghls.com>, <kohjls.com>, <kohkls.com>, <kohlds.com>, <kohlf.com>, <kohlso.com>, <kohlw.com>, <kohlys.com>, <kohyls.com>, <kokhls.com>, and <wkohls.com> domain names are confusingly similar to Complainant’s mark because they differ by only a single character from Complainant’s mark. Respondent’s disputed domain names contain Complainant’s KOHL’S mark and either add an additional letter or replace a letter in Complainant’s mark with another letter. The Panel finds Respondent’s wide and varied misspellings of Complainant’s mark do not adequately distinguish Respondent’s disputed domain names from Complainant’s mark under Policy ¶4(a)(i). See Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark). Respondent’s disputed domain names remove the apostrophe in Complainant’s KOHL’S mark and add the generic top-level domain (“gTLD”) “.com.” The removal of an apostrophe (which is not permitted character for domain names) and addition of a gTLD (a TLD is a required element in a domain name) does not eliminate confusing similarity under 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 Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). Therefore, the Panel finds Respondent’s <akohls.com>, <jkohls.com>, <kihls.com>, <kiohls.com>, <kjohls.com>, <kofls.com>, <koghls.com>, <kohjls.com>, <kohkls.com>, <kohlds.com>, <kohlf.com>, <kohlso.com>, <kohlw.com>, <kohlys.com>, <kohyls.com>, <kokhls.com>, and <wkohls.com> domain names are confusingly similar to Complainant’s KOHL’S mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent is not commonly known by the disputed domain name. The WHOIS information identifies “Above.com Domain Privacy” as the registrant of the disputed domain names. Complainant claims it has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant’s mark. Complainant claims Respondent is not sponsored by or legitimately affiliated with Complainant in any way. Respondent has not provided additional information showing Respondent is commonly known by the disputed domain name. Accordingly, the Panel finds Respondent is not 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).
Complainant claims Respondent is using some or all of the disputed domain names to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Respondent presumably receives “pay-per-click” fees for displaying these links. Based upon the screenshots provided, Respondent’s disputed domain names also seem to resolve to websites featuring links to Complainant’s website, websites of Complainant’s competitors, and other unrelated websites. The Panel finds Respondent’s use of the disputed domain names solely to feature links to Complainant, Complainant’s competitors, and other unrelated websites, is not a bona fide offering of services or goods under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶4(c)(i)).
In addition, Respondent is the holds legal title for the beneficial owner of these domain names in a bare trust. Respondent does not conduct any business at all (other than being a trustee under these circumstances). This means Respondent has acquired no rights to these domain names by definition. Likewise, the undisclosed beneficial owner cannot acquire any rights because the beneficial owner is not disclosing its identity.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant argues Respondent is using the disputed domain name to advertise “pay-per-click” links displayed on the resolving websites promote products competing with Complainant, diverting potential customers away from Complainant to third-party websites and disrupting Complainant’s business. The Panel notes Respondent’s disputed domain names connect to websites featuring links to Complainant’s website, websites of Complainant’s competitors, and other unrelated websites. When Respondent’s web sites mention the Kohl’s mark, the fact it is a registered mark is clearly indicated by the ® symbol, meaning Respondent has actual notice of Complainant’s mark and the fact it is a registered mark. The Panel finds Respondent’s use of the disputed domain names to link to Complainant’s competitors and other unrelated websites constitutes bad faith registration and use under Policy ¶4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶4(b)(iii).”).
Complainant argues Respondent is using the disputed domain name website in connection with generating revenue as a “click through” website, which attracts and misleads consumers for its own profit. Complainant contends Respondent is using Complainant’s registered trademark and providing links to services and products offered by Complainant to take advantage of Complainant’s well-known mark to achieve a wrongful competitive advantage and to commercially gain. The Panel concurs and finds Respondent’s use of the disputed domain names to redirect Internet users for its own commercial gain evidences bad faith use and registration under Policy ¶4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).
Respondent registered the domain names using a privacy service. In the commercial context, this raises the rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut this presumption.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <akohls.com>, <jkohls.com>, <kihls.com>, <kiohls.com>, <kjohls.com>, <kofls.com>, <koghls.com>, <kohjls.com>, <kohkls.com>, <kohlds.com>, <kohlf.com>, <kohlso.com>, <kohlw.com>, <kohlys.com>, <kohyls.com>, <kokhls.com>, and <wkohls.com> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, January 2, 2013
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