Sears Holdings Corp. v. Chrys Castel
Claim Number: FA1307001509086
Complainant is Sears Holdings Corp. (“Complainant”), represented by Ronald H. Spuhler of McAndrews, Held, and Malloy, Ltd., Illinois, USA. Respondent is Chrys Castel (“Respondent”), Kentucky, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <searsholdingllc.com>, registered with MELBOURNE IT, LTD. D/B/A INTERNET NAMES WORLDWIDE.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 10, 2013; the National Arbitration Forum received payment on July 10, 2013.
On July 11, 2013, MELBOURNE IT, LTD. D/B/A INTERNET NAMES WORLDWIDE confirmed by e-mail to the National Arbitration Forum that the <searsholdingllc.com> domain name is registered with MELBOURNE IT, LTD. D/B/A INTERNET NAMES WORLDWIDE and that Respondent is the current registrant of the name. MELBOURNE IT, LTD. D/B/A INTERNET NAMES WORLDWIDE has verified that Respondent is bound by the MELBOURNE IT, LTD. D/B/A INTERNET NAMES WORLDWIDE 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 July 12, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 1, 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@searsholdingllc.com. Also on July 12, 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 August 7, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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
1. Complainant owns rights in its SEARS mark through its registrations with the United States Patent and Trademark Office (“USPTO”);
a. Reg. No. 1,529,006 registered March 7, 1989
b. Reg. No. 1,726,260 registered October 20, 1992
c. Reg. No. 2,764,442 registered September 16, 2003
d. Reg. No. 2,916,293 registered January 4, 2005
2. Complainant owns rights in the GREEN LEADERSHIP TEAM SEARS HOLDINGS and design mark through registration with the USPTO (Reg. No. 4,321,400 registered April 16, 2013)
3. Complainant has used its SEARS mark since 1935 in association with its services and goods, including retail department store and catalog services, installation repair and maintenance services for household appliances and garage door openers, home improvement, heating and cooling systems, security systems, lawn and garden equipment, home electronics, power tools, sporting goods, siding and roofing, upholstery, and more. Complainant Sears Holding Corporation was formed in 2005 when Sears and another retailer, Kmart, merged. Complainant currently has over 2,500 specialty retail stores throughout North America, and is the tenth largest retailer by annual revenue in the United States.
4. Respondent’s <searsholdingllc.com> domain name includes Complainant’s SEARS mark in its entirety with the addition of the terms “holding” and “llc.”
5. Respondent has no rights or legitimate interests in the <searsholdingllc.com> domain name.
a. Complainant has never authorized Respondent to use its SEARS mark in any way.
b. Respondent provided fake contact information in the WHOIS information.
c. Respondent’s <searsholdingllc.com> domain name is not associated with Complainant in any way.
6. Respondent registered and is using the disputed domain name in bad faith.
a. Complainant sent notice letters to Respondent regarding its unauthorized use of Complainant’s SEARS mark.
b. Respondent appears to be attempting to sell the <searsholdingllc.com> domain name.
c. Respondent is intentionally attracting Internet users to its website by creating a likelihood of confusion with the Complainant’s SEARS mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
d. It does not appear that Respondent’s disputed domain name resolves to a legitimate online business.
e. Neither Respondent nor its website is associated with Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
1. Complainant has rights in its SEARS MARK.
2. Respondent’s <searsholdingllc.com> domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the domain name 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 contends that it has used the SEARS mark since 1935 in association with its goods and services including its catalog service, department store, financial services, household appliance maintenance services, plumbing, and carpet services. Complainant has used its mark for its products including; power tools, sporting goods, siding and roofing and many other various products. Complainant claims it has rights in its SEARS mark through its numerous registrations with the USPTO;
Reg. No. 1,529,006 registered March 7, 1989
Reg. No. 1,726,260 registered October 20, 1992
Reg. No. 2,764,442 registered September 16, 2003
Reg. No. 2,916,293 registered January 4, 2005
Previous panels have found that evidence of a registration with a trademark authority is sufficient to confer rights in the mark pursuant to 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)); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO). The Panel finds that Complainant has rights in the SEARS mark under Policy ¶ 4(a)(i) by way of its USPTO registrations.
Complainant asserts that Respondent’s <searsholdingllc.com> domain name is confusingly similar to Complainant’s SEARS mark. Complainant contends that Respondent’s <searsholdingllc.com> domain name presents itself improperly as being associated with Complainant. Complainant states that the <searsholdingllc.com> domain name features Complainant’s SEARS mark in its entirety with the addition of the terms “holding” and “llc.” The Panel notes that Respondent’s <searsholdingllc.com> domain name also features the generic top level domain (“gTLD”) “.com.” Complainant further claims that Respondent’s <searsholdingllc.com> domain name is a misspelled variation of Complainant’s business name, “Sears Holdings Corporation”. Previous panels have found that these variations are insufficient to differentiate a disputed domain name from a given mark. See AOL Inc. v. Morgan, FA 1349260 (Nat. Arb. Forum Nov. 4, 2010) (concluding that the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the mark); see also Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). The Panel finds that by using Complainant’s mark and adding generic terms, as well as a gTLD, Respondent’s <searsholdingllc.com> domain name is confusingly similar to Complainant’s SEARS mark under Policy ¶ 4(a)(i).
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); 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 that Respondent has no rights or legitimate interests in the <searsholdingllc.com> domain name. Complainant asserts that it has never authorized Respondent to use any of its SEARS marks. Complainant argues that it has sent multiple “cease and desist” letters to Respondent requesting Respondent to stop its unauthorized use of the <searsholdingllc.com> domain name. Additionally, Complainant states that the WHOIS information for Respondent lists “Chrys Castel” as administrator, which Complainant contends is evidence that Respondent is not commonly known as “Sears Holding, LLC.” Previous panels have found that a respondent is not commonly known by a disputed domain name where there is no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information, as well as the complainant’s assertion that it did not authorize or license respondent’s use of the. See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) and thus has no rights or interests in the disputed domain name.
Complainant claims that Respondent has no rights or legitimate interests in the <searsholdingllc.com> domain name because it is not making a bona fide offering of goods or services or a legitimate noncommercial fair use of the domain name. Complainant argues that Respondent’s use of Complainant’s SEARS mark is not a legitimate fair use. Complainant contends that “Sears Holding LLC” does not appear to be a legitimate company. Complainant also points out that Respondent appears to have provided fake contact information in the WHOIS record. The Panel notes that Complainant provides evidence showing that the disputed domain name resolves to a nonfunctioning website featuring the phrase, “Apache is functioning normally.” See Annex A. Previous panels have found that failure to make an active use of a domain name that is confusingly similar or identical to a Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). The Panel finds that Respondent has no rights or legitimate interests in the <searsholdingllc.com> domain name under Policy ¶ 4(a)(ii), based on evidence demonstrating that Respondent fails to make an active use of the disputed domain name
Complainant alleges that Respondent is attempting to sell the disputed <searsholdingllc.com> domain name to purchasers who will in turn use it to create a likelihood of confusion with Complainant’s mark. Complainant claims that Respondent’s purported business is fictional and the use of the resolving website is unauthorized. Previous panels have found bad faith registration and use when a respondent makes attempts to sell the disputed domain name. See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"). The Panel agrees. The Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(i).
Complainant claims that Respondent’s use of the disputed domain name intentionally attracts internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Complainant claims that Respondent’s disputed domain name does not resolve to a legitimate business. Previous panels have found that failure to use a disputed domain name indicates bad faith use and registration because it creates confusion between a complainant’s mark and a respondent’s use. See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose); see also Phat Fashions, LLC v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though the respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”). The Panel notes that Complainant does not support its contention of Respondent’s attempt to generate revenue by its use of the disputed domain name. The Panel determines that absent an active webpage, Respondent could not make a commercial gain from its current use of the disputed domain name, and thus declines to make a finding of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
The Panel concludes that Complainant did not make an adequate showing of Respondent’s bad faith registration and use of the <searsholdingllc.com> domain name under any of the Policy ¶ 4(b) factors. The Panel nonetheless finds bad faith as a result of Respondent’s activities not enumerated in Policy ¶ 4(b). The Panel finds that Policy ¶ 4(b) is not an exclusive listing of bad faith factors, and conclude that bad faith can be shown in circumstances beyond those enumerated in Policy ¶ 4(b). See Channel Tunnel Group Ltd. v. Powell, D2000-0038 (WIPO Mar. 17, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)] of the Policy, is not conclusive that the [<euro-tunnel.com>] domain name in issue was registered in and is being used in bad faith.”).
Complainant argues that Respondent has registered and is using the disputed domain name in bad faith. Complainant asserts that it sent multiple notice letters to Respondent addressing Respondent’s use of the SEARS mark in connection with the disputed domain name. See Annex J and K. Complainant states that it received no response from Respondent in relation to the letters. Complainant claims that it also sent a letter to the registrar, who acknowledged Complainant’s contentions and deactivated the site. Previous panels have found that registration of a confusingly similar domain name while respondent had actual notice of a complainant’s rights in a mark indicates bad faith under Policy ¶ 4(a)(iii). While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here concludes that Respondent had actual notice of Complainant's mark, demonstrated by its use of Complainant’s unique mark in the disputed domain name, and thus finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also 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 <searsholdingllc.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 20, 2013
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