Sears Brands, LLC v. Anek Chabthaisong
Claim Number: FA0907001274202
PARTIES
Complainant is Sears Brands, LLC,
(“Complainant”) represented by David A.
Wheeler, of Greenberg Traurig, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <searsoutlet.us>,
registered with Godaddy.com, Inc.
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.
James A. Crary
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on July 16, 2009; the Forum received a hard copy
of the Complaint on July 17, 2009.
On July 16, 2009, Godaddy.com, Inc. confirmed by e-mail to the Forum that
the <searsoutlet.us> domain name is registered with Godaddy.com, Inc. and that Respondent
is the current registrant of the name.
Godaddy.com, Inc. has verified that Respondent is bound by the
Godaddy.com, Inc. registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with the U. S.
Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On July 21, 2009, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of August 10, 2009 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules
for usTLD Dispute Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On August 17, 2009, pursuant to Complainant’s request to have the
dispute decided by a single-member Panel, the Forum appointed James A Crary as
Panelist.
Having reviewed the communications records, the Administrative Panel
(the “Panel”) finds that the Forum has discharged its responsibility under
Paragraph 2(a) of the Rules. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the Rules, the 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 name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <searsoutlet.us> domain name is confusingly similar to Complainant’s SEARS mark.
2.
Respondent does not have any rights or
legitimate interests in the <searsoutlet.us> domain name.
3.
Respondent registered and used the <searsoutlet.us>
domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant offers a wide range of home
merchandise, apparel, and automotive products and services, all of which
Complainant promotes under the SEARS mark, which Complainant registered with
the United States Patent and Trademark Office (“USPTO”) on September 16, 2003
(Reg. No. 2,764,442). Complainant has
used the SEARS mark continuously in commerce since at least as early as 1894,
and now has more than 2,400 stores throughout the
Respondent registered the <searsoutlet.us>
domain name on June 12, 2009. The
disputed domain name resolves to a website that features an affiliate program
with Amazon.com.
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.”
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's undisputed
representations pursuant to Paragraphs 5(f), 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.”).
Paragraph 4(a) of the Policy requires that the 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 the
Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered or is
being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Identical
and/or Confusingly Similar
Complainant registered its SEARS
mark with the USPTO on September 16, 2003 (Reg. No. 2,764,442). The Panel
finds that Complainant has established rights in the SEARS mark for purposes of
Policy ¶ 4(a)(i) through its trademark registration
with the USPTO.
Respondent’s
<searsoutlet.us> domain name is
confusingly similar to Complainant’s SEARS mark. The <searsoutlet.us> domain name differs from Complainant’s mark in two ways:
(1) the term “outlet” has been added to the end of the mark; and (2) the
country code top-level domain (ccTLD) “.us” has been added to the mark. The Panel finds that adding a descriptive
term cannot sufficiently distinguish a domain name from a mark for the purposes
of Policy ¶ 4(a)(i).
See Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126
(WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is
confusingly similar to the SUTTON mark because the addition of descriptive or
non-distinctive elements to the distinctive element in a domain name is
immaterial to the analysis under UDRP ¶ 4(a)(i)); see also Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022
(WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive
words "fashion" or "cosmetics" after the trademark were
confusingly similar to the trademark). The Panel
likewise finds that the addition of a ccTLD also cannot distinguish a domain
name from a mark. See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec.
4, 2002) (finding that the addition of the country-code “.us” fails to add any
distinguishing characteristic to the domain name). Therefore,
the Panel finds that the <searsoutlet.us> domain name is not sufficiently distinguished from
Complainant’s SEARS mark, and so the Panel
finds that Respondent’s <searsoutlet.us> domain name is confusingly similar to Complainant’s mark
pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the disputed domain name. Under Policy ¶ 4(a)(ii), if the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).
The Panel finds no evidence in the record to support the proposition that Respondent owns any service marks or trademarks that reflect the <searsoutlet.us> domain name. The Panel therefore finds that Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to UDRP ¶ 4(c)(i)).
Complainant contends that
Respondent is not commonly known by the disputed
domain name, nor has it ever been the owner or licensee of the SEARS
mark. The WHOIS record for the disputed
domain name lists Respondent as “Anek
Chabthaisong.” Respondent has
failed to show any evidence of ever being commonly known by the disputed domain
name or by any other variant on the SEARS mark, and so the Panel finds that
Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(iii). See IndyMac Bank F.S.B.
v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding
that the respondent failed to establish rights or legitimate interests in the
<emitmortgage.com> domain name as the respondent was not authorized to
register domain names featuring the complainant’s mark and failed to submit
evidence of that it is commonly known by the disputed domain name); see also Braun
Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that
the respondent was not commonly known by the disputed domain names where the
WHOIS information, as well as all other information in the record, gave no
indication that the respondent was commonly known by the disputed domain names,
and the complainant had not authorized the respondent to register a domain name
containing its registered mark).
Complainant also contends that Respondent
is using the disputed domain
name to host a website that features an
affiliate program with Amazon.com, and that Respondent is collecting
“click-through” fees because of this association. The Panel finds that
Respondent’s use of the disputed
domain name to profit from directing Internet users to another company’s
website, without authorization to use Complainant’s mark, is neither a bona fide offering of goods or services
under Policy ¶ 4(c)(ii) nor a legitimate noncommercial
or fair use under Policy ¶ 4(c)(iv). See Constellation
Wines
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that
Respondent is gaining commercially, in the form of click-through fees, from the
diversion of Internet users to Amazon.com.
The Panel finds that Respondent is intentionally using the confusingly
similar disputed domain name for commercial gain by creating a likelihood of
confusion with Complainant’s mark, and that this use is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See
Anne of Green Gable Licensing Auth.,
Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that
the respondent violated UDRP ¶ 4(b)(iv) because the
respondent admittedly used the complainant’s well-known mark to attract users
to the respondent's website); see also Perot
Sys. Corp. v. Perot.net, FA
95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith
where the domain name in question is obviously connected with the complainant’s
well-known marks, thus creating a likelihood of confusion strictly for
commercial gain).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <searsoutlet.us> domain name be TRANSFERRED from Respondent to Complainant.
James A Crary, Panelist
Dated: August 24, 2009
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