Kohl's Illinois, Inc. v. Domcharme Group / Jean Lucas / lohls.com / Elias Skander
Claim Number: FA1212001474698
Complainant is Kohl's Illinois, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Domcharme Group / Jean Lucas / lohls.com / Elias Skander (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <kohhls.com>, <kohks.com>, <kohlas.com>, <kohlsa.com>, <kohlz.com>, <kophls.com>, and <lohls.com>, registered with eNom, Inc.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 6, 2012; the National Arbitration Forum received payment on December 6, 2012.
On December 7, 2012, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <kohhls.com>, <kohks.com>, <kohlas.com>, <kohlsa.com>, <kohlz.com>, <kophls.com>, and <lohls.com> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 December 18, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 7, 2013 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@kohhls.com, postmaster@kohks.com, postmaster@kohlas.com, postmaster@kohlsa.com, postmaster@kohlz.com, postmaster@kophls.com, and postmaster@lohls.com. Also on December 18, 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 January 11, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that the domain names are all owned by the same entity, as cross-referencing the patterns and commonalities of each of the domain names suggests that one individual owns and operates them all.
The Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and thus chooses to proceed with the instant proceedings.
Complainant makes the following assertions:
1. Complainant owns trademark registrations for the KOHL’S trademark through the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,772,009 registered May 18, 1993). See Exhibit E.
2. Complainant uses its KOHL’S mark in business as a specialty department store offering moderately priced national brand apparel, shoes, accessories, beauty, and home products. Complainant operates stores in forty-nine states and has created significant customer recognition by substantially advertising and promoting the KOHL’S mark. Complainant’s company uses innovative marketing strategies and proactive customer service to differentiate itself from its competition.
3. Respondent registered the <kohhls.com>, <kohks.com>, <kohlas.com>, <kohlsa.com>, <kohlz.com>, <kophls.com>, and <lohls.com> domain names on January 9, 2003, and maintains webpages in association with the disputed domain names that link Internet users with Complainant’s own website through Complainant’s affiliate program, with the exception of the <kohhls.com> and <lohls.com> domain names, which resolve to an inactive website.
4. Respondent is aware of Complainant’s rights in the KOHL’S mark, because Respondent is a member of Complainant’s affiliate program.
5. The <kohhls.com>, <kohks.com>, <kohlas.com>, <kohlsa.com>, <kohlz.com>, <kophls.com>, and <lohls.com> domain names are all confusingly similar to Complainant’s KOHL’S mark and represent typosquatting by Respondent. Respondent has no rights or legitimate interests in any of the disputed domain names due to its use of the domain names to redirect either to Complainant’s website or to no website at all.
6. Respondent registered and uses the disputed domain names in bad faith, as shown by its typosquatting, and its use of the resolving websites to link to Complainant’s website or to an inactive site.
Respondent failed to submit a Response in this proceeding.
1. Respondent’s <kohhls.com>, <kohks.com>, <kohlas.com>, <kohlsa.com>, <kohlz.com>, <kophls.com> and <lohls.com> domain names are confusingly similar to Complainant’s KOHL’S mark.
2. Respondent does not have any rights or legitimate interests in the <kohhls.com>, <kohks.com>, <kohlas.com>, <kohlsa.com>, <kohlz.com>, <kophls.com> and <lohls.com> domain names.
3. Respondent registered or used the <kohhls.com>, <kohks.com>, <kohlas.com>, <kohlsa.com>, <kohlz.com>, <kophls.com> and <lohls.com> domain names 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 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.
In view of Respondent's failure to submit a response, 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 claims to own rights in the KOHL’S mark through its USPTO trademark registration (Reg. No. 1,772,009 registered May 18, 1993). The panel in Metro. Life Ins. Co. v. Glu, FA 874496 (Nat. Arb. Forum Feb. 13, 2007), found that the complainant had rights in its mark as a result of registering the mark with the United States trademark authority. The Panel likewise finds that Complainant’s rights in its KOHL’S mark is secured by its USPTO registration, pursuant to Policy ¶ 4(a)(i). The Panel further finds that Complainant is not required to register its mark in the country of Respondent’s operation and residence under Policy ¶ 4(a)(i). 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; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant argues that the <kohhls.com>, <kohks.com>, <kohlas.com>, <kohlsa.com>, <kohlz.com>, <kophls.com>, and <lohls.com> domain names are confusingly similar to Complainant’s KOHL’S mark due to the inclusion of the generic top-level domain (“gTLD”) “.com” to each of the domain names, as well as a misspelled version of Complainant’s KOHL’S mark as the sole substance of the second-level portion of the domain name. The Panel also notes that each disputed domain name removes the apostrophe from Complainant’s mark. The Panel finds that by using a misspelling of the mark by replacing, removing, or adding a letter to the mark, as well as removing punctuation and adding a gTLD, each of the disputed domain names is confusingly similar to Complainant’s KOHL’S mark pursuant to Policy ¶ 4(a)(i). See Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such “generic” typos do not change respondent’s infringement on a core trademark held by the complainant); see also 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 Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate 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 contends that Respondent is not commonly known by any of the <kohhls.com>, <kohks.com>, <kohlas.com>, <kohlsa.com>, <kohlz.com>, <kophls.com>, and <lohls.com> domain names, as established by the WHOIS record, which Complainant says suggests that Respondent is known by a name other than the KOHL’S trademark or the domain names. The Panel notes that the WHOIS information relating to the disputed domain names lists a variety of different registrants, including “Domcharme Group,” “Jean Lucas,” “lohls.com,” and “Elias Skander,” none of which the Panel finds demonstrate that Respondent is commonly known by any of the disputed domain names under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant alleges in its Policy ¶ 4(a)(iii) section that the <kohks.com>, <kohlas.com>, <kohlsa.com>, <kohlz.com>, and <kophls.com> domain names resolve to Complainant’s website through an affiliate program of which Respondent is a member. Complainant argues that Respondent’s use of the aforementioned domain names in such a way violates the affiliate agreement. The Panel concludes that Respondent’s use of the domain names to resolve to Complainant’s own website through an affiliate program does not establish 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 Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the respondent’s use of the disputed domain names to divert Internet users attempting to reach the complainant’s website and in breach of the complainant’s affiliate program is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant makes the assertion that Respondent causes the <kohhls.com> and <lohls.com> domain names to lead to an inactive website featuring an empty webpage. Complainant argues that Respondent’s failure to actively use the <kohhls.com> and <lohls.com> domain names suggests a lack of rights and legitimate interests in the domains. The panel in Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005), held that the respondent’s non-use of the disputed domain name was not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel likewise finds that by failing to establish an active website at the <kohhls.com> and <lohls.com> domain names is evidence that Respondent does not make a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant argues that Respondent engages in typosquatting by registering the <kohhls.com>, <kohks.com>, <kohlas.com>, <kohlsa.com>, <kohlz.com>, <kophls.com>, and <lohls.com> domain names, all of which vary from Complainant’s KOHL’S mark by one letter. Complainant contends that typosquatting is evidence that Respondent does not possess legitimate rights or interests in the disputed domain names. The Panel determines that by changing one letter within Complainant’s mark in order to create a confusingly similar domain name, Respondent demonstrates typosquatting, which fails to show any rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”).
Complainant sets forth the allegation that Respondent’s bad faith registration and use of the <kohks.com>, <kohlas.com>, <kohlsa.com>, <kohlz.com>, and <kophls.com> domain names is shown by Respondent’s violation of the terms of the affiliate agreement with Complainant, which causes the disputed domain names to redirect to Complainant’s website. Complainant argues that Respondent opportunistically benefits at Complainant’s expense by registering the confusingly similar domain names while Respondent is a member of the affiliate program. In Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002), the panel stated that the respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv) by redirecting website visitors to the complainant’s domain name and receiving commission from the complainant through an affiliate agreement. The Panel finds that Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv) is demonstrated by its violation of the affiliate agreement with Complainant, causing Respondent to make a profit by rerouting Internet users to Complainant’s website.
Previous panels have agreed that Policy ¶ 4(b) enumerates certain factors that act as examples of bad faith registration and use but that ¶ 4(b) is not a final list of bad faith elements. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence). The Panel also finds that Policy ¶ 4(b) is not absolute in determining bad faith registration and use, and may consider other factors in making a determination of bad faith pursuant to Policy ¶ 4(a)(iii) with relation to the <kohhls.com> and <lohls.com> domain names.
Complainant argues that Respondent’s failure to use the <kohhls.com> and <lohls.com> domain names is evidence that Respondent registered the domain names in bad faith because the two above-mentioned domain names fail to resolve to an active site altogether. The Panel concludes that Respondent’s failure to establish an active website associated with the <kohhls.com> and <lohls.com> domain names shows Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii). See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use).
Complainant contends that Respondent typosquatted the <kohhls.com>, <kohks.com>, <kohlas.com>, <kohlsa.com>, <kohlz.com>, <kophls.com>, and <lohls.com> domain names, and argues that typosquatting demonstrates bad faith registration. The panel in Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007), found that the respondent’s bad faith registration was verified by the respondent’s registration of a misspelled variety of the complainant’s mark. The Panel similarly concludes that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii) due to the spelling variations of Complainant’s mark, which appear to be designed to capture common spelling errors by consumers attempting to access Complainant’s business online.
Complainant makes the assertion that Respondent was aware of Complainant’s KOHL’S mark at the time it registered the disputed domain names, as Respondent was a member of Complainant’s affiliate program and attempted to opportunistically benefit from Complainant’s mark. The Panel determines that as a member of Complainant’s affiliate program, Respondent must have had notice of Complainant’s KOHL’S mark when it registered the <kohhls.com>, <kohks.com>, <kohlas.com>, <kohlsa.com>, <kohlz.com>, <kophls.com>, and <lohls.com> domain names and may therefore conclude that Respondent registered the domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware” of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kohhls.com>, <kohks.com>, <kohlas.com>, <kohlsa.com>, <kohlz.com>, <kophls.com>, and <lohls.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
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