Sears Brands, LLC v. Khalid Al Zarooni
Claim
Number: FA0504000465281
Complainant is Sears Brands, LLC (“Complainant”), represented
by Donald A. Degnan, of Holland & Hart LLP,
1800 Broadway, Suite 300, Boulder, CO 80302.
Respondent is Khalid Al Zarooni (“Respondent”),
Delma Street, Abu Dabi, ST 29916, United Arab Emirates.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <searstower.net>, registered with Enom,
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.
James
A. Crary as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
20, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 25, 2005.
On
April 21, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <searstower.net> is registered with Enom,
Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is
bound by the Enom, Inc. registration agreement and has thereby agreed to
resolve domain-name disputes brought by third parties in accordance with
ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
April 26, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 16, 2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@searstower.net by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
May 19, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed James A. Crary
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." 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 <searstower.net>
domain name is identical to Complainant’s SEARS TOWER mark.
2. Respondent does not have any rights or
legitimate interests in the <searstower.net> domain name.
3. Respondent registered and used the <searstower.net>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant has
used the SEARS trademark, alone and in connection with other terms, to identify
a multitude of goods and services since the company was founded in 1886. It holds 48 U.S. federal trademark
registrations that have “SEARS” as the dominant element and identify a wide
range of goods and services. One of
those marks is the SEARS TOWER mark, which Complainant registered with the U.S.
Patent and Trademark Office (“USPTO”) on November 13, 1990 (Reg. No.
1,622,845).
Respondent
registered the <searstower.net> domain name on April 25,
2003. The domain name resolves to an
adult-oriented website that provides a chat platform called “Visit-X,” which
provides links for adult-oriented chat services.
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 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.
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.
Complainant has
established rights in the SEARS TOWER mark through registration with the
USPTO. See Men’s Wearhouse, Inc. v.
Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark
law, registered marks hold a presumption that they are inherently distinctive
and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive and
that a respondent has the burden of refuting this assumption).
Respondent’s <searstower.net>
domain name is identical to Complainant’s SEARS TOWER mark because the domain
name fully incorporates the mark and merely omits the space between the two
words in the mark and adds the generic top-level domain “.net.” These changes are insufficient to circumvent
the Panel from finding that the domain name is identical to Complainant’s mark
pursuant to Policy ¶ 4(a)(i). See
Little Six, Inc. v. Domain For Sale,
FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net>
is plainly identical to the complainant’s MYSTIC LAKE trademark and service
mark); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724
(Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical
to HANNOVER RE, “as spaces are impermissible in domain names and a generic
top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to submit a response in this proceeding. In the absence of a response,
the Panel accepts as true all reasonable allegations contained in the Complaint
unless clearly contradicted by the evidence. Complainant has alleged that
Respondent lacks rights and legitimate interests in the <searstower.net>
domain name. Neither Respondent nor the evidence contradicts this allegation.
Furthermore, because Respondent has failed to submit a response, Respondent has
failed to propose any set of circumstances that could substantiate its rights
or legitimate interests in the disputed domain name under Policy ¶
4(a)(ii). See Vertical Solutions
Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31,
2000) (holding that a respondent’s failure to respond allows all reasonable
inferences of fact in the allegations of a complaint to be deemed true); see
also Desotec N.V. v. Jacobi Carbons
AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows
a presumption that a complainant’s allegations are true unless clearly
contradicted by the evidence); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a response, the respondent failed to invoke any
circumstance which could demonstrate any rights or legitimate interests in the
domain name).
Respondent is
not using the <searstower.net> domain name in connection with a
bona fide offering of goods or services under Policy ¶ 4(c)(i) or making a
legitimate noncommercial or fair use of the domain name under Policy ¶
4(c)(iii) because the domain name is identical to Complainant’s mark and
redirects unsuspecting Internet users to an adult-oriented website that
provides links for adult-oriented chat services. The Panel infers that Respondent receives pay-per-click fees when
Internet users follow the links on its website. Respondent makes opportunistic use of Complainant’s mark in order
to capitalize on the goodwill associated with the SEARS TOWER mark. See WeddingChannel.com Inc. v. Vasiliev,
FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the
disputed domain name to redirect Internet users to websites unrelated to the
complainant’s mark, websites where the respondent presumably receives a
referral fee for each misdirected Internet user, was not a bona fide offering
of goods or services as contemplated by the Policy); see also 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).
No evidence
before the Panel suggests that Respondent is commonly known by the <searstower.net>
domain name. The domain name’s WHOIS
information indicates that the registrant of the disputed domain name is known
as “Khalid Al Zarooni” and is not known by the identical second-level domain
that infringes on Complainant’s SEARS TOWER mark. Moreover, Respondent is not licensed to use Complainant’s
mark. Thus, Respondent lacks rights and
legitimate interests in the 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); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May
16, 2001) (interpreting Policy ¶ 4(c)(ii) “to require a showing that one has
been commonly known by the domain name prior to registration of the domain name
to prevail”).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <searstower.net>
domain name resolves to an adult-oriented website that provides links for
adult-oriented chat services. The Panel
infers that Respondent receives click-through fees for redirecting Internet
users to these websites. Therefore, the
Panel concludes that Respondent registered and used the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv) because the domain name is identical to
Complainant’s mark and is used for Respondent’s commercial gain. See ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000)
(finding bad faith where Respondent linked the domain name to another website
<iwin.com>, presumably receiving a portion of the advertising revenue
from the site by directing Internet traffic there, thus using a domain name to
attract Internet users for commercial gain); see also Kmart v. Khan,
FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent
profits from its diversionary use of the complainant's mark when the domain
name resolves to commercial websites and the respondent fails to contest the
complaint, it may be concluded that the respondent is using the domain name in
bad faith pursuant to Policy ¶ 4(b)(iv)).
Furthermore, the
fact that Respondent’s <searstower.net> domain name is identical
to Complainant’s SEARS TOWER mark and resolves to an adult-oriented website is
further evidence of bad faith registration and use because such use tarnishes
Complainant’s mark. See Wells
Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18,
2003) (finding that the respondent’s tarnishing use
of the disputed domain names to redirect Internet users to adult-oriented websites was evidence
that the domain names were being used in bad faith); see also Microsoft
Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that the
respondent’s use of the complainant’s mark to post pornographic photographs and
to publicize hyperlinks to additional pornographic websites evidenced bad faith
use and registration of the domain name).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <searstower.net> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Crary, Panelist
Dated:
June 2, 2005
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