Kohl's Illinois, Inc. v D-Max Limited
Claim Number: FA1303001490174
Complainant is Kohl's Illinois, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is D-Max Limited (“Respondent”), Saint Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kohlks.com>, registered with KEY-SYSTEMS GMBH.
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.
Sandra J. Franklin 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 18, 2013, KEY-SYSTEMS GMBH confirmed by e-mail to the National Arbitration Forum that the <kohlks.com> domain name is registered with KEY-SYSTEMS GMBH and that Respondent is the current registrant of the names. KEY-SYSTEMS GMBH has verified that Respondent is bound by the KEY-SYSTEMS GMBH 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 19, 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@kohlks.com. Also on March 19, 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 Sandra J. Franklin 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 makes the following assertions:
1. Respondent’s <kohlks.com> domain name is confusingly similar to Complainant’s KOHL’S mark.
2. Respondent does not have any rights or legitimate interests in the <kohlks.com> domain name.
3. Respondent registered and uses the <kohlks.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant holds registrations for its KOHL’S mark with the United States Patent and Trademark Office (“USPTO”) including Registration No. 1,772,009, issued May 18, 1993, for retail grocery store services, and Registration No. 2,047,904, issued Mar. 25, 1997, for retail department store services.
Respondent registered the <kohlks.com> domain name on January 14, 2009, and uses it to host competing hyperlinks and to offer it for sale.
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.”).
The Panel finds that Complainant has established rights in its KOHL’S mark through registration with the USPTO. This satisfies Policy ¶ 4(a)(i) even when Respondent’s 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.”).
Respondent’s <kohlks.com> domain name is confusingly similar to Complainant’s KOHL’S mark. Respondent simply adds the gTLD “.com” and letter “k” to the mark, and removes the apostrophe, in forming the domain name. The Panel finds that these changes do not differentiate the <kohlks.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); see also 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). Thus, the Panel finds that the <kohlks.com> domain name is confusingly similar to the KOHL’S mark.
The Panel finds that complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 states that it is unaware of any evidence suggesting that Respondent is commonly known by the <kohlks.com> domain name, and that Respondent is not affiliated with Complainant. Complainant asserts that it has not authorized Respondent’s use of the KOHL’S mark in a domain name. The WHOIS information lists “D-Max Limited” as the registrant of the domain name. The Panel finds thus finds that Respondent is not commonly known by the <kohlks.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 argues that Respondent’s use of the domain name does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the domain name, as it simply resolves to a website featuring generic links to third-party websites, some of which compete directly with Complainant and its KOHL’S business. Respondent is presumably profiting from this use by collecting click-through revenue. The Panel agrees that Respondent’s use of the <kohlks.com> domain name does not constitute a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor 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, designed to take advantage of common mistakes made by Internet users seeking Complainant. This is further evidence that Respondent lacks rights and legitimate interests in the disputed domain name. 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).”).
The Panel finds that complainant has satisfied Policy ¶ 4(a)(ii).
Complainant provides evidence that the <kohlks.com> domain name is being auctioned through Sedo.com, and that Complainant’s bid of $60.00 was rejected with a notice that the seller required a minimum $500.00 bid for the domain name. The Panel finds that the offer to sell the disputed domain name for $500.00 constitutes Policy ¶ 4(b)(i) bad faith use and registration on behalf of Respondent. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
Respondent has also engaged in a pattern of typosquatting. Complainant provides three prior UDRP decisions, each concluding that Respondent had acted in bad faith and granting the complainant transfer of the domain name in dispute. See Vanguard Trademark Holdings USA LLC v. D-Max Limited, FA 1466780 (Nat. Arb. Forum Nov. 22, 2012); U.S. Auto Parts Network, INC. v. D-Max Limited, FA 1433959 (Nat. Arb. Forum May 2, 2012); See LinkedIn Corporation v. D-Max Limited, FA 1413956 (Nat. Arb. Forum Dec. 11, 2011). The Panel finds that these prior UDRP decisions against Respondent are evidence of Respondent’s bad faith use and registration in this proceeding, pursuant to Policy ¶4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”).
Respondent’s uses the <kohlks.com> domain name to host competing hyperlinks, diverting customers away from Complainant and disrupting Complainant’s business. This is evidence of bad faith 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)).
Respondent registered and is using the <kohlks.com> domain name to profit each time an Internet user clicks on the competing hyperlinks promoted by Respondent. The Panel finds this to be bad faith 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).
Respondent’s typosquatting is itself evidence of 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).”).
The Panel finds that complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kohlks.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 23, 2013
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