Kohl's Illinois, Inc. v. W. D. Group Ltd.
Claim Number: FA1303001490178
Complainant is Kohl's Illinois, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is W. D. Group Ltd. (“Respondent”), Hong Kong, China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <koels.com>, registered with Tucows, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 15, 2013; the National Arbitration Forum received payment on March 15, 2013.
On March 15, 2013, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <koels.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 March 18, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 8, 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@koels.com. Also on March 18, 2013, 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 April 16, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant’s Contentions
Policy ¶ 4(a)(i): Complainant’s Rights / Confusing Similarity of Domain Name
Policy ¶ 4(a)(ii): Respondent Lacks Rights & Legitimate Interests
Policy ¶ 4(a)(iii): Respondent’s Bad Faith Use & Registration
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Kohl’s Illinois, Inc. who list its address as Wisconsin, USA. Complainant owns USA registrations for KOHL’S and related marks which are used in its specialty department store business. In addition to operating more than eleven hundred stores throughout the USA, Complainant also participates in e-commerce through its official website at <kohls.com>.
Respondent is W.D. Group Ltd. who list its address as Hong Kong, China. Respondent’s registrar’s address is listed as Ontario, Canada. Respondent registered the <koels.com> domain name on April 15, 2002.
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 contends that it is a wholly owned subsidiary of Kohl’s Department Stores, Inc., a retailer that specializes in offering moderately priced, exclusive and national brand name apparel. Complainant asserts that it holds rights to the KOHL’S mark by way of USPTO trademark registrations of the mark. See, e.g., Reg. No. 1,772,009 registered on May 18, 1993 (for retail grocery store services); Reg. No. 2,047,904 registered on Mar. 25, 1997 (for retail department store services). The Panel finds that the USPTO registration is an adequate showing of rights under Policy ¶ 4(a)(i), even though Respondent’s listed location is Hong Kong, China. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (Stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant also argues that Respondent’s <koels.com> domain name is confusingly similar to the KOHL’S mark. Complainant argues that the addition of the gTLD “.com” is not taken into account in analyzing confusing similarity. Complainant notes that Respondent also removed the apostrophe from the KOHL’S mark in forming the domain name, but Complainant argues that punctuation is not significant in weighing the confusing similarity between a domain name and a mark. Complainant notes that the only other alteration to the mark is the single character alteration—the letter “h” to the letter “e.” The Panel finds that neither the deletion of the mark’s apostrophe, nor the introduction of the “.com” gTLD differentiate the <koels.com> domain name from the KOHL’S mark. See Chi-Chi’s, Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to the complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark). The Panel also finds that the single-character alteration of the spelling of a mark may enhance the confusing similarity of the domain name. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (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). The Panel finds that the <koels.com> domain name is confusingly similar to the KOHL’S mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name 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). The Complainant has met this burden.
Complainant claims that it is unaware of any evidence suggesting that Respondent is commonly known as a business, or in any other manner, that goes by the same name as the <koels.com> domain name. Complainant avows that Respondent has not sponsored and is not legitimately affiliated itself with Complainant. Complainant asserts that it has not otherwise authorized or permitted Respondent’s use of the KOHL’S mark in domain names. The Panel notes that the WHOIS information lists “W. D. Group Ltd.” as the registrant of the domain name. The Panel finds that the record provides no grounds for finding that Respondent is commonly known by the <koels.com> domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant next argues that Respondent’s goals and uses in regards to the domain name do not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the domain name. Complainant elaborates on this claim in asserting that Respondent has caused the <koels.com> domain name to resolve to a website featuring generic links to third-party websites, some of which compete directly with Complainant and its KOHL’S business. Complainant concludes that Respondent is presumably profiting from this scheme by way of click-through revenues. The Panel notes that the <koels.com> domain name resolves to a website featuring several hyperlinks to Complainant’s own websites, along with an array of generic and unrelated promotions. See Complainant’s Ex. H. The Panel finds that Respondent’s use of the domain name to host a series of generic and unrelated hyperlinks does not constitute a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor is such a use a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
Complainant also argues that Respondent has engaged in typosquatting. Complainant explains that typosquatting is designed to take advantage of common mistakes made by Internet users who try to formulate the domain name they believe resolves to a given company or brand’s websites. The Panel finds that by merely removing the apostrophe, adding a gTLD, and making a single-character alteration to the KOHL’S mark, Respondent’s <koels.com> domain name evinces the characteristics of a typosquat. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that Respondent’s decision to host competing hyperlinks on this confusingly similar domain name amounts to an attempt to disrupt Complainant’s business in bad faith. Complainant believes that Internet users who visit the disputed domain name are likely to click on hyperlinks to competing businesses, thereby diverting these customers away from Complainant’s own business. The Panel finds that hyperlinks that lead to Complainant’s competitors, constitute bad faith use and registration under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant also argues that Respondent registered and is using the domain name to confuse and mislead Internet users into viewing the <koels.com> domain name’s content pages under the belief that the content therein is somehow affiliated with Complainant. Complainant believes that Respondent then acquires profits each time an Internet user who visits the domain name clicks on any of the competing hyperlink advertisements promoted by Respondent. The Panel again notes that the disputed domain name resolves to a listing of generic hyperlinks, including several hyperlinks to Complainant’s own websites. See Complainant’s Ex. H. The Panel finds that Respondent’s use of a confusingly similar domain name to host a hyperlink listing evidences bad faith and use under Policy ¶ 4(b)(iv). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Complainant finally argues that Respondent’s typosquatting behavior is in itself evidence of bad faith use and registration. The Panel finds that Respondent’s typosquatting of such a confusingly similar domain name amounts to bad faith use and registration under Policy ¶ 4(a)(iii). See Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <koels.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: April 29, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page