national arbitration forum

DECISION

Sears Brands, LLC v. James Smith

Claim Number: FA1211001473818

PARTIES

Complainant is Sears Brands, LLC (“Complainant”), represented by R. Hank Spuhler of McAndrews, Held, and Malloy, Ltd., Illinois, USA.  Respondent is James Smith (“Respondent”), California, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <searsinvestments.com>, registered with 1 & 1 Internet AG.

 

PANEL

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.

     

      Bruce E. O'Connor as Panelist.

 

PROCEDURAL HISTORY

This decision is being rendered in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the National Arbitration Forum’s UDRP Supplemental Rules (the “Supplemental Rules”).

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 30, 2012; the National Arbitration Forum received payment on November 30, 2012.

 

On December 4, 2012, 1 & 1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <searsinvestments.com> domain name is registered with 1 & 1 Internet AG and that Respondent is the current registrant of the name.  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 the Policy.

 

On December 10, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 31, 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@searsinvestments.com.  Also on December 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 December 12, 2012.

 

A timely Additional Submission was received from Complainant on December 17, 2012 and was deemed to be in compliance with Supplemental Rule 7.

 

On December 26, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed

Bruce E. O'Connor 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 "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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant, Sears Brands LLC ("Sears"), owns an extensive family of famous trademarks and service marks worldwide comprising the mark "SEARS," many in connection with financial services, credit card services, and the management and leasing of real estate. Examples of U.S. Trademark Registrations for the SEARS trademarks are:

SEARS, No. 1,529,006, March 7, 1989, for retail store and catalog services;

SEARS, No. 2,764,442, September 16, 2003, for retail department store services;

SEARS, No. 2,916,293, January 4, 2005, for financial services, namely, credit card services;

SEARS TOWER, No. 1,622,845, November 13, 1990, for management and leasing of real estate;

SEARS SOLUTIONS, No. 3,709,172, November 10, 2009, for credit card services; and

SEARS CARD, No. 2,472,234, July 24, 2011, for credit card services.

 

Since 1935, Sears and its network of licensed service providers have used the SEARS trademarks in association with a wide variety of services provided to consumers, including financial services, installation, repair and maintenance services for 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 has multiple trademarks for use in association with financial services, and is the nation's largest provider of home services, with more than 11 million service calls made annually.

 

The disputed domain name <searsinvestments.com> was registered on January 12, 2012. On its face, the disputed domain name purports to be a site for Sears investment services. The domain name literally includes the word "Sears" which is identical to numerous of the Complainant's trademarks. The fact that the domain recites "investments" does not change the fact that it is confusingly similar to numerous SEARS trademarks.

 

The Respondent has no rights or legitimate interests in the disputed domain names. The Complainant has never authorized, either explicitly or implicitly, the Respondent to use any SEARS trademark. To the contrary, the Complainant has ordered the Respondent to cease and desist his unauthorized use of Complainant's trademarks. Nor is the Respondent commonly known as Sears.

 

Furthermore, the Respondent's use of any SEARS trademark is not legitimate fair use. Instead, the Respondent's use of SEARS trademarks and registration of the disputed domain is part of scheme to hold himself out as an officer of the Complainant, and to obtain a loan by exploiting a fictitious and fraudulent association with Sears.

 

The Respondent has registered and used the disputed domain name in bad faith. Citing registration of the domain, the Respondent has held himself out as an officer of the Complainant, and attempted to obtain a loan by virtue of this fictitious and fraudulent position. As an example, on or about October 1, 2012 the Complainant received an email from Merrill Lynch regarding a loan inquiry from the Respondent. In this inquiry, the Respondent listed his employment as Director/Investor at Sears Investments, and provided the email address jsmith@searsinvestments.com.

Using this information, Respondent sought the following: "Interested in: Business Loans & Lines of Credit, Employee Benefit Solutions, Equipment Finance/Leasing, Clearing & Financing, Investment Solutions, Mortgages" "Additional Information about this inquiry: Looking to acquire loan to purchase several pieces of ag property looking to purchase asap"

 

Sears Investments is not an affiliate of the Complainant, and Respondent does not hold the position of officer, director or investor at any affiliate of the Complainant. Before the disputed domain name was taken down by the Registrar, the site automatically directed users to Sears Holdings' (Sears' parent company) website, further evidencing Registrar's bad faith attempt to affiliate itself with Sears.

 

As a further example of Respondent's bad faith, on or about October 9, 2012, the Complainant sent notice letters to both the Respondent (at jsmith@searsinvestments.com) and the Registrar regarding the unauthorized incorporation of SEARS trademarks in connection with the disputed domain name.

 

 

The e-mail to the Respondent was returned as not delivered. On or about October 15, the Registrar acknowledged the impropriety of the disputed domain name, and deactivated the site. At this time, the Registrar also unlocked the Whois information of the Registrant. The disclosed information was troubling. Despite providing contact information for the Respondent, the name provided for the disputed domain name was "Phelan William" and the organization was listed as "Sears Roebuck and Co." Upon investigation, it was discovered the Respondent fraudulently used the name of a current officer for the Complainant, Mr. William Phelan, to register the disputed domain name (notably, incorrectly listing William as the last name and Phelan as the first name).

 

Moreover, on or about October 16, 2012, the Complainant sent a notice letter via e-mail and house address to the Respondent via the information in the unlocked WhoIs notice. Later that day, the Respondent answered, claiming to know "Mr. K. William" (again mixing up the first and last name of a current officer), and held himself out as a current employee of the Complainant. Upon a request to support Respondent's claim to being a current employee, Respondent provided documents that include what purports to be a three-page Employment Agreement between Sears Roebuck and Co. on the one hand, and the Respondent, James Smith, on the other hand. The document is purportedly signed by "Phelan K William." This document is fraudulent and was never signed by Mr. William Phelan, an officer of the Complainant. Notably, the fraudulent employment agreement confuses the first and last name of the officer being impersonated.

 

Additional documents provided by Respondent in response to Complainant’s October 16 request included, most notably, (1) communications between the Registrar and investinme048@live.com (named, Phelan William) regarding an inability to confirm the identification of Phelan William; (2) a document which purports to appoint James Smith as a signing officer and providing authorization to procure loans on behalf of the "Corporation" (definition not included) from Bank of America or any lender James Smith chooses for up to $120,000 that is signed by "Phelan K William"; and (3) a document which purports to be a pay stub from Sears Roebuck and Co. to James Smith. Each of these documents contains misleading representations, and most notably, is a forged document, which purports to empower the Respondent as a signing officer of the Complainant authorized to take out loans on behalf of the organization.

 

Despite multiple demands from Complainant to cease all fraudulent activity and, a finding by the Registrar that the domain was indeed fraudulent, Respondent brazenly took yet further steps to effectuate the fraudulent scheme. Specifically, on or about November 19, 2012, Respondent transferred the disputed domain name to an account similarly owned by Respondent.

 

Notably, a comparison of the account reveals that the Respondent removed as the name "Phelan William" (impersonated officer of the Complainant, incorrectly listing William as the last name and Phelan as the first name), and replaced the field with the Respondent, "James Smith." The address is identical, and the telephone and e-mail were previously known to Complainant as affiliated with the Respondent.

 

Following this misleading transfer, the site was reactivated, and Respondent continued efforts to fraudulently impersonate an officer of the Complainant. Specifically, it is Complainant's understanding that Respondent is attempting to be listed as an officer of the Complainant at the U.S. Securities and Exchange Commission. On or about November 29, 2012, the Registrar was notified of the transfer, immediately deemed the new account fraudulent, and locked the domain to prevent further transfers.

 

Through these disputed domains, and relying upon fraudulent documents and assertions, the Respondent has intentionally held himself out to be affiliated with the Complainant and, exploiting this affiliation, attempted to secure a loan. Respondent has, among other things, created a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's web site or location.

 

B. Respondent

The disputed domain name <searsinvestments.com> can only be reference (sic) by that exact name, if you use any other name you will pull any other site ... i.e. "searsinvestment."

I have provided the above person of reference in this matter Application of Employment by (sic) signed by the SVP, "Sears Roebuck And Co.", which states that I am a Junior Investor for ,"Sears Roebuck and Co.", signed in 2011, Date: given just, actual date of interenship (sic) with, "Sears Investment Inc."

 

I feel the current address <Searsinvestments.com> in no way interfers (sic) with or makes any profit from using the Brand "Sears" this site is and continues to be for the Co. use only I feel I have done nothing more than get a promotion that most never are offered, I have spoken to a outside lawyer hired by Sears Roebuck and Co. I feel that all question conserning (sic) this issue should not be directed at me, for I am an employee Verified. I feel this is an attact (sic) on my character, and I will not accept this type of behavior from someone who has more than enough supporting information about my employment I'm sure he could call him seeing he works there.

 

C. Additional Submissions

1. Complainant

Complainant contends that Respondent has been nonresponsive to Complainant's arguments. Particular emphasis is given to the continuing and alleged fraud of the Respondent on holding himself out as an employee of Sears Roebuck and Co., based on documents that Complainant contends are fraudulent.

 

FINDINGS

The primary factual dispute between the parties deals with the employment status of Respondent. Respondent contends that he is an employee and junior investor in Sears Roebuck and Co. Complainant denies that Respondent is an employee or junior investor, and argues that the document that Respondent relies upon for his association with Complainant is fraudulent.

 

This document has 4 pages, the first of which is a blank page with the handwritten name "Hank." Presumably, this is the person to whom Respondent refers to in his Response. The last 3 pages are a form "Employment Agreement", into whose blanks have been typed the date "09/01/2011", "Sears Roebuck and Co." (as "Employer"),  Respondent's name (as "Employee), "Investor" (as the employment title), "Administer and Manage Accounts" (as "duties"), "74,000" (as "compensation"), and "Illinois" (as "Governing Law"). The agreement is signed by "Phelan K. William" whose name is typed in under "Employee." The employment terms and conditions are generic and boilerplate.

 

On its face, this document is inauthentic. First, a major company such as Complainant or its affiliates does not use a generic form agreement for its employees. Second, the title of "Investor" is not commonly used for employees of a company, but rather for those investing funds in a company. Third, Respondent did not sign the document in his name and there is no place for signature by "Employer." Fourth, Respondent has not established the existence of "Hank" or "Phelan K. William" whose handwritten names appear on the document.

 

Complainant's contentions as to the fraudulent nature of this document are accepted.  The Panel finds that Respondent has not had any employment relationship with Complainant or its affiliates.

The Panel's remaining factual findings are interwoven in the discussion below.

 

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:

 

the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

Respondent has no rights or legitimate interests in respect of the domain name; and

the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

The Panel finds that Complainant has established rights in its SEARS trademarks through proof of its U.S. Trademark Registrations for those trademarks. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).

 

The Panel also finds that the disputed domain name is confusingly similar to the SEARS trademarks, being distinguished only by the descriptive term "investments" and the gTLD ".com" which add no distinctiveness to the disputed domain name. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(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).

 

The contention of Respondent regarding this element of the Policy has been considered but is not understood.

 

The Panel finds that Complainant has met its burden of proof under paragraph 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists three circumstances in particular, without limitation, that demonstrate rights or legitimate interest of a domain name registrant to a domain name for the purposes of paragraph 4(a)(ii) of the Policy:

      (i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or

      (ii) the Respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or

      (iii) the Respondent is making a legitimate non‑commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Since the WHOIS information simply lists Respondent as “James Smith” and Respondent has not established any other name under which he has done or is doing business, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).

 

The Panel has found that the employment agreement between Complainant and Respondent is fraudulent. Also, Respondent has not contested the contentions of Complainant that Respondent has used a document that purports to appoint “James Smith” as a signing officer for Complainant and provides authorization for Respondent to procure loans on behalf of Complainant for up to $120,000. Further, Respondent has not contested Complainant's contention that the disputed domain name resolved to the website of Complainant's parent in furtherance of the alleged fraud. 

 

The Panel finds that Respondent has used such materials to fraudulently pass himself off as Complainant or its affiliates, and as such Respondent has not used the disputed domain name for 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).  See Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . ”).

 

The Panel finds that Complainant has met its burden of proof under paragraph 4(a)(ii) of the Policy.

 

Registration and Use in Bad Faith

The circumstances of paragraph 4(b) of the Policy are illustrative but not exhaustive of the circumstances under which bad faith registration and use under Policy paragraph 4(a)(iii) can be established.

 

Paragraph 4(b) reads:

[T]he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

         i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

         (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

         (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

         (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

 

In each of the circumstances listed in Policy paragraph 4(b), or otherwise, the Complainant must establish that Respondent intentionally and actively registered and used the domain name at issue for the purpose of causing injury to the Complainant. And, Respondent must have known or should have known of Complainant's mark.

 

Lack of rights or legitimate interests under Policy paragraph 4(a)(ii) does not automatically translate into a finding of bad faith under Policy paragraph 4(a)(iii). Proof of Policy paragraph 4(a)(iii) generally requires more than assertions of bad faith.

 

The circumstances of Policy paragraphs 4(b)(i), 4(b)(ii), and 4(b)(iii) appear to be inapposite for the resolution of this dispute.

 

But, the circumstances here are analogous to those prohibited by Policy paragraph 4(b)(iv). The disputed domain name was registered in 2012, long after Complainant acquired rights in its SEARS trademarks. Respondent clearly knew of Complainant prior to his domain name registration, because he contends that he was an employee of Complainant or an affiliate in 2011. After the domain name registration, Respondent falsely held himself out as an employee of Complainant or its affiliate, through the use of the disputed domain name and through written communications.  And, these actions appear to be solely for his personal benefit in securing a loan. Finally, Respondent's use of the disputed domain name resolved to the authorized website of Complainant's parent.

 

Respondent's only justification for his actions is the employment agreement, which the Panel has found to be fraudulent.

 

The Panel finds that Respondent has registered and is using the disputed domain name in bad faith in order to profit from passing himself off as an employee of or otherwise associated with Complainant or its affiliate. See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed.  Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”); see also MySpace, Inc. v. Gomez, D2007-1231 (WIPO Oct. 17, 2007) (finding bad faith when "Respondent has been using the disputed domain name to link to the Complainant’s own website. Inherent in that conduct is the risk that the Respondent may at any time cause Internet traffic to re-direct to a website that is not that of, or associated with, the Complainant.").

 

The Panel finds that Complainant has met its burden of proof under paragraph 4(a)(iii) of the Policy.

 

DECISION

Complainant having established all three elements required under the Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <searsinvestments.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Bruce E. O'Connor, Panelist

Dated:  January 3, 2013