national arbitration forum

 

DECISION

 

Kohl’s Illinois, Inc. v. Above.com Domain Privacy

Claim Number: FA1211001472932

PARTIES

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.

 

PANEL

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.

 

PROCEDURAL HISTORY

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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

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.

i.

 

 

 

 

 

 

 

 

 

 

ii.

 

 

 

 

 

 

 

 

 

iii.

 

 

 

 

 

 

 

 

 

 

 

iv.

 

 

 

 

 

 

 

 

 

 

 

 

v.

By virtue of its federal trademark and/or service mark registrations, Complainant is the owner of Complainant's Mark(s).  See, e.g., United Way of America v. Alex Zingaus, NAF Claim No. FA0707001036202 ("Panels have long recognized Complainant's registration of a mark with a trademark authority is sufficient to confer rights in the mark pursuant to Policy 4(a)(i)").  As in other cases, it is also important to note that it is irrelevant for the purposes of Policy ¶4(a)(i) whether Complainant registered the mark in the country where Respondent operates or resides. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a complainant can demonstrate rights in a mark in some jurisdiction).

When comparing the Disputed Domain Name(s) to the Complainant's Mark(s), the relevant comparison to be made is between only the second-level portion of the Disputed Domain(s) Name and the Complainant's Mark(s). Rollerblade, Inc. v. McCrady, WIPO Case No. D2000-0429 (finding that the top-level domain, such as ".net" or ".com", does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., NAF Claim No. FA0304000153545 ("[t]he addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.")

The Disputed Domain Name(s) are confusingly similar to Complainant's Mark(s) because they differ by only a single character from Complainant's Mark(s), or because they differ by only the juxtaposition of two characters when compared to Complainant's Mark(s). For clarification, the Disputed Domain Name(s) contains either:

[i.] the addition of one extra character, or...
[ii.] the removal of one character, or...
[iii.] one character which is incorrect, or...
[iv.] two juxtaposed characters

 

as compared to Complainant's Mark(s).

 

The Disputed Domain Name(s) are, simply put, a classic example of "typosquatting." The practice of typosquatting is designed to take advantage of Internet users' typographical errors, which means the names must be confusingly similar by design. See Reuters Ltd. v. Global Net 2000, Inc., WIPO Case No. D2000-0441 (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); Caterpillar Inc. v. Center for Ban on Drugs, NAF Claim No. FA0603000661437 ("the omission of a single letter from Complainant's mark does not adequately distinguish the Disputed Domain Name from the mark"); and Victoria's Secret v. Zuccarini, NAF Claim No. FA0010000095762 (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant's marks).

 

Clearly, Respondent’s use and registration of the Disputed Domain Name(s) are likely to cause confusion with Complainant’s Marks.  Accordingly, Complainant submits that the Disputed Domain Name(s) are confusingly similar to Complainant’s Marks in violation of Policy 4(a)(i).

[b.]

Respondent has no rights or legitimate interests in respect of the Disputed Domain Name(s) for the following reasons:

i.

 

 

 

 

 

ii.

iii.

Complainant is unaware of any evidence to establish that Respondent is commonly known as a business, or in any other manner, by the Disputed Domain Name(s). See Policy, ¶4(c)(ii). See also, WHOIS record for the Disputed Domain Name(s). Where, as here, "the WHOIS information suggests Respondent is known as" an entity other than the trademark associated with Complainant, and Complainant has not "licensed, authorized, or permitted Respondent to register domain names incorporating Complainant's . . . mark," a Panel should find that the Respondent is not commonly known by the Disputed Domain Name. United Way of America v. Alex Zingaus, NAF Claim No. FA0707001036202.

Respondent is not sponsored by or legitimately affiliated with Complainant in any way.

Complainant has not given Respondent permission to use Complainant's Mark(s) in a domain name.

 

iv.

 

 

 

 

 

 

 

 

 

 

 

 

 

v.

 

 

 

 

 

 

 

 

 

 

 

vi.

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

vii.

 

 

 

 

viii.

 

 

ix.

 

 

 

x.

A "Cease and Desist" letter was sent to Respondent for all the Disputed Domain Name(s) between December 6, 2011 and September 19, 2012. The letters provided notice of Complainant’s Marks and informed Respondent that it was infringing on Complainant's intellectual property rights.  Complainant demanded that Respondent immediately cease and desist all use of the Disputed Domain Name(s) to avoid further infringement of Complainant’s Marks.   To date, no reply has been received from Respondent. 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, WIPO Case No. D2000-0009 (WIPO Feb. 29, 2000("In the absence of a response, it is appropriate to accept as true all allegations of the Complaint."). Also in WIPO case ACCOR v. Pham Manh Ha, Case No. D2007-1855, the panel found that the evidentiary burden therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in that name.

 

Respondent has ignored Complainant's attempts to resolve the dispute outside of this administrative proceeding. Complainant notes that if the owner of the Disputed Domain Name(s) fails to respond to this Complaint, it is presumed that the owner has no rights or legitimate interests in the Disputed Domain Name(s). See Mattel, Inc. v. RaveClub Berlin, FA106115 (Nat. Arb. Forum May 8, 2002), citing Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents' failure to respond can be construed as an admission that they have no legitimate interest in the domain names). Further, Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) states that when "the complainant has made a prima facie showing, the burden of production shifts to the respondent to show by providing concrete evidence that it has rights to or legitimate interest in the domain name at issue."

 

Respondent is using (some or all of) the Disputed Domain Name(s) to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant's business. Presumably, Respondent receives pay-per-click fees from these linked websites. As such, Respondent is not using the Disputed Domain Name(s) to provide a bona fide offering of goods or services as allowed under Policy; 4(c)(i), nor a legitimate noncommercial or fair use as allowed under Policy; 4(c)(iii). See 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent's use of the 24hrsfitness.comgt, 24-hourfitness.com.gt and 24hoursfitness.com.gt, domain names to redirect Internet users to a website featuring advertisements and links to Complainant's competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent's website, which is blank but for links to other websites, is not a legitimate use of the domain names).

 

The earliest date on which Respondent registered the Disputed Domain Name(s) was January 24, 2003.  This is significantly after Complainant's first use of KOHL’S in commerce on August 31, 1962, as specified in the relevant registration with the USPTO.

 

The earliest date on which Respondent registered the Disputed Domain Name(s) was January 24, 2003, which is significantly after Complainant's registration of the Mark with the USPTO on May 18, 1993.

The earliest date which Respondent registered the Disputed Domain Name(s) was
January 24, 2003, which is significantly after Complainant's registration of the domain <KOHLS.COM> on June 11, 1998.

The foregoing facts lead to an overwhelming presumption that Respondent has no legitimate interest in and cannot possibly meet its burden of establishing such an interest in the KOHL’S mark.

 

 

[c.]

The Disputed Domain Name(s) should be considered as having been registered and being used in bad faith for the following reasons:

i.

 

 

 


ii.

 

 

 

 

 

 

 

 

 

 

 

iii.

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

iv.

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

v.

 

 

 

 

 

 

 

The Policy expressly details specific circumstances which, “if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.”  See Policy 4(b).  While any one of these express circumstances, if found by the Panel, would suffice to establish Respondent’s bad faith, several are present in this case.

 

Respondent's typosquatting behavior is, in and of itself, evidence of bad faith. See Canadian Tire Corp. v. domain adm'r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent created a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or location'.. . through Respondent's persistent practice of 'typosquatting'"); see also Nat'l Ass'n of Prof'l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) ("Typosquatting ... is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.").

 

Respondent’s bad faith is further shown by the Respondent using the Disputed Domain Name(s) website in connection with generating revenue as a “click through” website by using the Complainant’s registered trademark(s) and providing links to the services and products offered by the Complainant to take advantage of Complainant’s well known mark to achieve a wrongful competitive advantage and to commercially gain. In WIPO Decision D2008-1470, AIDA Cruises German Branch of Societá di Crociere Mercurio S.r.l., v. Caribbean Online International Ltd. / BelgiumDomains “the Panel finds that the Respondent registered and is using the disputed domain name for the purposes of commercial gain by offering links to other companies’ websites related to cruises and travels, in the form of a “click through” website. In similar cases, many prior panel decisions have recognised [sic] that the registration of domain names to be used in a “click-through” website has to be considered as an evidence of bad faith (see, e.g. Abercrombie & Fitch Trading Co. v. Digi Real Estate Foundation., WIPO Case No. D2007-0440; Early Times Distillers Company v. IP Admin / DNAV ASSOCS, WIPO Case No. D2007-1812; HBOS Plc v. Whois Protection, WIPO Case No. D2007-1605)”.

 

To further stress the above, Respondent’s setting up of a “click through” website for which it likely receives revenue for each misdirected Internet user obviously demonstrates Respondent’s bad faith.  The Respondent has registered and used the Disputed Domain Name(s) in bad faith pursuant to Policy ¶4(b)(iv) by using the Disputed Domain Name(s) to attract and mislead consumers for its own profit.  See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.  Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant). See also Meadowbrook, L.L.C. d/b/a The Land of Nod v. Venkateshwara Distributor Private Limited, Claim Number: FA1112001419361 and Charlotte Russe Merchandising, Inc. v. Private Registrations Aktien Gesellschaft / Domain Admin, Claim Number: FA1204001439309, where the same behavior of bad faith is demonstrated and agreed by the panel, pursuant to Policy ¶4(b)(iv).

In addition to the above, the Respondent’s advertised pay-per-click links displayed on the resolving websites promotes products that compete with Complainant. These links therefore divert potential customers away from Complainant to third-party websites, which disrupts Complainant’s business. The Panel should find that this effort to divert consumers and disrupt Complainant’s business is evidence of bad faith registration and use under Policy ¶4(b)(iii). See Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶4(b)(iii)).

 

vi.

 

 

 

 

 

 

vii.

 

 

 

 

 

viii.

 

 

 

 

 

 

ix.

 

Respondent has caused the website(s) reachable by (some or all of) the Disputed Domain
Name(s) to display Complainant's Mark(s) spelled correctly (even though the domain
name(s) is a misspelled version of the same mark(s)). This serves as further evidence
of bad faith intent because it removes any doubt as to whether or not the misspelling was intentionally designed to improperly capitalize on Complainant's famous Mark(s).

Respondent has caused the websites reachable by (some or all of) the Disputed Domain Name(s) to display content and/or keywords directly related to Complainant's business. This serves as further evidence of bad faith intent because it removes any doubt as to whether or not the misspelling was intentionally designed to improperly capitalize on Complainant's famous Mark and its related business.

 

Respondent's use of apparently falsified and/or incomplete WHOIS contact information demonstrates a desire to avoid being held accountable, which serves as further evidence of bad faith intent. See, e.g., Time Warner Inc. v. AOLMEMBERS.COM et al., NAF Claim No. FA0701000881337 ("fictitious or false WHOIS information about both the registrant's name and physical address... raises the presumption of bad faith registration and use").

For all of these reasons, it is clear that Respondent registered and is using the Disputed Domain Name(s) in bad faith. 

 

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).

 

FINDINGS

(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.

 

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 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.”).

 

Identical and/or Confusingly Similar

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. 

 

Rights or Legitimate Interests

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. 

 

Registration and Use in Bad Faith

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. 

 

DECISION

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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