Sears Brands, LLC v. Dale Airhart
Claim Number: FA1010001350469
Complainant is Sears Brands, LLC ("Complainant"), represented by David A. Wheeler of Greenberg Traurig, LLP, Illinois, USA. Respondent is Dale Airhart ("Respondent"), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kmartlayaway.com>, registered with GoDaddy.com, 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.
Beatrice Onica Jarka as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 5, 2010; the National Arbitration Forum received payment on October 6, 2010.
On October 6, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <kmartlayaway.com> 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 7, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 27, 2010 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@kmartlayaway.com. Also on October 7, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 Response was received on November 8, 2010 which was not considered by the Panel for the reasons outlined below.
On November 12, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Beatrice Onica Jarka as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
By the Complaint the Complainant contends that
· The disputed domain name incorporates in its entirety the Complainant’s KMART mark and is confusingly similar to the KMART mark, as the only distinction is the inclusion of the generic element “layaway”.
· Respondent has no rights or legitimate interests in the disputed domain name, as it has no trademark or other intellectual property rights.
· Respondent uses the disputed domain name to direct internet users to a pay per click parked page, which makes an unauthorized use of the KMART mark and cannot be considered an operation any bona fide or legitimate business in conjunction to the disputed domain name.
· Respondent registered and is using the disputed domain name in bad faith as it intentionally misdirects users to a pay per click webpage through an unauthorized use of the disputed domain name and has constructive knowledge as to the Complainant’s mark.
B. Respondent
By its Response, the Respondent contends that:
· It has been involved with or created unique web applications with e commerce, on the web site <americanlayaway.com>.
· It has owned the disputed domain name since 2002 and it never actively submitted it to the internet.
· The disputed domain name has continued to stay parked since its purchase and it has never been placed for sale, tried to encourage, or accept, or promote goods for any monetary gain for or with <kmartlayaway.com>.
· The Complaint is “automated” and it is used by the Complainant to monopolize the internet.
· The Complainant is not using the disputed domain name as an entire word.
· There is no pay per click page under the page were the disputed domain is parked.
The Complainant is the United States’ third largest retailer. The Complainant sells KMART branded goods and its KMART trademark is well known. The Respondent registered the disputed domain name in 2007 and is using it, according to the Complainant’s evidence for a pay per click parked page.
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.
Preliminary Issue: Deficient Response
Respondent’s Response was received subsequent to the Response deadline of October 27, 2010. Respondent contends that it sent the Response via first class mail, but the Forum never received it. Furthermore, the UDRP Rules and the Forum’s Supplemental Rules require electronic copies only; hard copies are not accepted. Respondent sent a Response electronically on November 5, 2010. Thus, the National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5. Therefore, the Panel chooses not to accept and consider this Response.
Complainant has submitted evidence to show that it owns trademark registrations with the United States Patent and Trademark Office ("USPTO") for its KMART mark (e.g., Reg. No. 3,093,223 May 16, 2006). The Panel finds that such evidence establishes rights in Complainant’s KMART mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of 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 agrees with the Complainant that the <kmartlayaway.com> domain name is confusingly similar to its KMART mark because the domain name contains its mark entirely while adding the generic term “layaway” and the generic top-level domain (“gTLD”) “.com.” .” See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also 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 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).
Therefore the first element of the Policy is proven.
It is the opinion of the Panel that the Complainant made 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.”).
The Panel notes that Complainant supplied the Panel with the WHOIS registrant information. The WHOIS record shows that the registrant for the <kmartlayaway.com> domain name is listed as “Dale Airhart,” which the Panel finds it is not similar to the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) based upon the WHOIS registrant information. See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also 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).
Complainant contends that Respondent’s use of the disputed domain name shows that it lacks rights and legitimate interests in the <kmartlayaway.com> domain name. Complainant argues and submits screen-shot evidence to show that the disputed domain name resolves to a website that is parked with third-party <godaddy.com>, which features a commercial search engine and displays various third-party links to Complainant’s official website, competing websites, and unrelated websites. The Panel agrees with the Complainant’s contentions and finds that Respondent’s use of the disputed domain name does not constitute 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 St. Farm Mutual Auto. Insr. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Charles Letts & Co Ltd. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s parking of a domain name containing the complainant’s mark for the respondent’s commercial gain did not satisfy Policy ¶ 4(c)(i) or ¶ 4(c)(iii)).
Complainant contends that Respondent’s use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv). Complainant argues that Respondent uses the disputed domain name to redirect Internet users seeking information about Complainant’s goods and services to a website that offers links to competing and unrelated websites, and that such use is evidence of bad faith. Further, Complainant alleges that Respondent receives click-through or referral fees from the businesses that are linked-to and advertised on Respondent’s resolving websites. Such conduct represents in the opinion of the Panel, evidence of bad faith registration and use under Policy ¶ 4(b)(iv) where Respondent is using the disputed domain name to redirect Internet users to various third-party companies, presumably for financial gain. See Cengage Learning Inc. v. Myers, FA 1116919 (Nat. Arb. Forum, Jan. 15, 2008)(“the view of the panel is that, in the absence of evidence to the contrary in any particular case, of which there is none in the present case, a party in the position of the respondent is also responsible for the sponsored links currently appearing on the website.”); see also 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); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the KMART mark. While constructive notice has not been generally held to suffice for a finding of bad faith registration and use, the Panel nonetheless finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) when the Respondent is found to have had actual notice of Complainant’s trademark rights. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find 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). Considering the position of the Complainant on the US market and the dimension of the KMART trademark both in registration and use, the Complainant considers that the Respondent had or should have had actual knowledge about the Complainant’s trademark.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kmartlayaway.com> domain name be TRANSFERRED from Respondent to Complainant .
Beatrice Onica Jarka
Panelist
Dated: December 2, 2010
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