Sears Brands, LLC v. 2220 Internet Coordinator
Claim Number: FA0511000597487
Complainant is Sears Brands, LLC (“Complainant”), represented by Paul D. McGrady, of Greenberg Traurig, LLP, 77 West Wacker Drive, Suite 2500, Chicago, IL 60601. Respondent is 2220 Internet Coordinator (“Respondent”), P.O. Box No. 71826, KCPO, Central, 0000, HK.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <searshomeimprovement.com> and <searscreditcard.com>, 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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 15, 2005; the National Arbitration Forum received a hard copy of the Complaint on November 17, 2005.
On November 18, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <searshomeimprovement.com> and <searscreditcard.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. 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 November 22, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 12, 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@searshomeimprovement.com and postmaster@searscreditcard.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 15, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <searshomeimprovement.com> and <searscreditcard.com> domain names are confusingly similar to Complainant’s SEARS mark.
2. Respondent does not have any rights or legitimate interests in the <searshomeimprovement.com> and <searscreditcard.com> domain names.
3. Respondent registered and used the <searshomeimprovement.com> and <searscreditcard.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Sears Brands LLC, and its affiliate Sears, Roebuck and Co., are wholly owned subsidiaries of Sears Holdings Corporation. Complainant, through its affiliates, is a leading broadline retailer providing merchandise and related services. With revenues in 2004 of $36.1 billion, Sears offers its wide range of home merchandise, apparel, and automotive products and services through more than 2,400 Sears-branded and affiliated stores in the U.S. and Canada, which include approximately 870 full-line and 1,100 specialty stores in the U.S.
Complainant holds various trademark registrations for the SEARS line of marks, including the SEARS mark, Reg. No. 0,642,438, registered on March 5, 1957 with the U.S. Patent and Trademark Office (“USPTO”).
Respondent, 2220 Internet Coordinator, registered the <searshomeimprovement.com> domain name on November 14, 2002 and the <searscreditcard.com> domain name on November 30, 2004.
The website associated with the <searshomeimprovement.com> domain name claims to be the “source for the latest on electronics,” claiming to have MP3 players, cell phones, home theater systems, gaming consoles, [and] PCs.” It also offers featured links such as “Heating and Air Conditioning,” “Kitchen Cabinets,” “Jobs,” “Pay Bill,” and “Exterior Doors.” It also offers other links under categories such as Travel, Finance, Home, Business, Entertainment, and Lifestyle.
The website associated with the <searscreditcard.com> domain name offers links under “popular categories” such as “My Credit Card Account,” “Payments,” “Searsgoldmastercard,” “Sears,” “Searsmastercard,” and “Free Credit Report.”
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. 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 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 offers its registration of the SEARS mark with
the USPTO to demonstrate its rights.
The Panel finds that Complainant has established that it has rights in
the SEARS mark pursuant to Policy ¶ 4(a)(i).
See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”); Vivendi Universal Games v. XBNetVentures Inc., FA 198803
(Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations
establish Complainant's rights in the BLIZZARD mark.”).
The Panel finds that the <searshomeimprovement.com>
and <searscreditcard.com> domain names are confusingly similar
to Complainant’s mark because they merely add the words “home improvement” and
“credit card,” which do not significantly distinguish the domain names from the
mark. See Marriott Int’l, Inc. v.
Café au lait, FA 93670 (Nat. Arb. Forum Mar. 13, 2000) (finding that the
respondent’s domain name <marriott-hotel.com> is confusingly similar to
the complainant’s MARRIOTT mark); L.L. Bean, Inc. v. ShopStarNetwork, FA
95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word
“shop” with the complainant’s registered mark “llbean” does not circumvent the
complainant’s rights in the mark nor avoid the confusing similarity aspect of
the ICANN Policy).
The Panel finds that Complainant has established Policy ¶ 4(a)(i).
The website associated with the <searshomeimprovement.com> domain name links to “Heating and Air Conditioning,” “Kitchen Cabinets,” “Jobs,” “Pay Bill,” and “Exterior Doors.” It also offers other links categorized as Travel, Finance, Home, Business, Entertainment, and Lifestyle. The website associated with the <searscreditcard.com> domain name offers links to “popular categories” such as “My Credit Card Account,” “Payments,” “Searsgoldmastercard,” “Sears,” “Searsmastercard,” and “Free Credit Report.” The Panel finds that appropriating another’s mark to sell competitors’ and third-parties’ goods is neither a bona fide offering of a good or service pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors); Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
There is nothing in the record, including the WHOIS
registration information, which demonstrates that Respondent is commonly known
by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA
139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); Gallup, Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not
have rights in a domain name when the respondent is not known by the mark).
The Panel finds that Complainant has established Policy ¶ 4(a)(ii).
Respondent is appropriating Complainant’s mark to refer
Internet users to competing and third-party links. The Panel infers that Respondent receives click-through fees from
the associated websites. The Panel
finds that appropriating another’s mark in a confusingly similar domain name to
generate revenues is evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See 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)); Drs.
Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000)
(finding bad faith where the respondent directed Internet users seeking the
complainant’s site to its own website for commercial gain).
Respondent is also appropriating Complainant’s mark to
compete with Complainant. The Panel
finds that appropriating another’s mark to sell competing goods is evidence of
bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Gen. Media Commc’ns, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum
Mar. 26, 2001) (finding bad faith where a competitor of the complainant
registered and used a domain name confusingly similar to the complainant’s
PENTHOUSE mark to host a pornographic web site); Disney
Enters., Inc. v. Noel, FA 198805 (Nat.
Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly
similar to Complainant's mark to divert Internet users to a competitor's website.
It is a reasonable inference that Respondent's purpose of registration and use
was to either disrupt or create confusion for Complainant's business in bad
faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
Additionally, Respondent is appropriating Complainant’s mark
in the <searscreditcard.com> domain name to provide links to
“Searsgoldmastercard,” “Sears,” and “Searsmastercard.” The Panel finds that Respondent’s use of
Complainant’s mark on the website associated with the <searscreditcard.com>
domain name demonstrates that Respondent was aware of Complainant’s
rights. The Panel finds that Respondent
knowingly used a mark in which another had rights, which is evidence of bad
faith registration and use pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506
(Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith,
when Respondent reasonably should have been aware of Complainant’s trademarks,
actually or constructively.”); Samsonite
Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding
that evidence of bad faith includes actual or constructive knowledge of a
commonly known mark at the time of registration).
The Panel finds that Complainant has established 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 <searshomeimprovement.com> and <searscreditcard.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: December 29, 2005
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