National Arbitration Forum

DECISION

 

Kmart of Michigan, Inc v. David J. Terracciano

Claim Number: FA0602000651113

 

PARTIES

Complainant is Kmart of Michigan, Inc (“Complainant”), represented by Paul D. McGrady, of Greenberg Traurig, LLP, 77 West Wacker Drive, Suite 2500, Chicago, IL 60601.  Respondent is David J. Terracciano (“Respondent”), 40 Boulevard Avenue, West Islip, NY 11795.

 

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <kmart-deals.net>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.

 

PANEL

The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

 

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 27, 2006; the National Arbitration Forum received a hard copy of the Complaint on February 28, 2006.

 

On February 27, 2006, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <kmart-deals.net> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that the Respondent is the current registrant of the name.  Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 February 28, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 20, 2006 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@kmart-deals.net by e-mail.

 

A timely Response was received and determined to be complete on March 17, 2006.

 

On March 22, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant, Kmart of Michigan, Inc, makes the following assertions:

 

1.   Respondent’s <kmart-deals.net> domain name is identical or confusingly similar to Complainant’s KMART mark.

 

2.   Respondent does not have any rights or legitimate interests in the disputed domain name.

 

3.   Respondent registered and used the disputed domain name in bad faith.

 

B. Respondent, David J. Terracciano, contends that he has been “incorrectly associated with someone who has illegally used my information to obtain this domain name . . . .”  Respondent says the he didn’t register this or any other domain name.  He says that the email address associated with the registration, <tonystill22@yahoo.com>, is not his email address.

 

FINDINGS

Complainant, Kmart of Michigan, Inc., owns an extensive family of trademarks and service marks comprised of or featuring the KMART mark.

 

Complainant employs more than 133,000 associates.  Complainant is an affiliate of Sears Holdings Corporation.  Sears Holding Corporation, parent of Kmart and Sears, Roebuck and Co., is the nation’s third largest broadline retailer, with approximately $55 billion in annual revenues, and with approximately 3,900 full-line and specialty retail stores in the United States and Canada.

 

Respondent registered the <kmart-deals.net> domain name on February 18, 2006.  The Offending Domain was registered well after Complainant obtained extensive registration and common law rights to the KMART marks.  Prior to the filing of the Complaint, the <kmart-deals.net> domain name was being used to illicitly gather personal information, particularly credit card information, from web visitors.  Complainant has not given Respondent any license, permission, or authorization by which Respondent could make any use of KMART Marks.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 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;

(2)  the 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.

 

Identical and/or Confusingly Similar

 

Complainant has established rights in the KMART mark by registering the mark with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 743,912 issued January 15, 1963; Reg. No. 783,902 issued January 26, 1965; Reg. No. 799,941 issued December 7, 1965; and Reg. No. 791,329 issued June 22, 1965).  See 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.”); see also 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.”).

 

Respondent’s <kmart-deals.net> domain name is confusingly similar to Complainant’s KMART mark pursuant to Policy ¶ 4(a)(i), because it wholly incorporates Complainant’s KMART mark and merely adds a hyphen, the generic term “deals”, and the generic top-level domain “.net.”  Such additions to Complainant’s mark do not sufficiently distinguish Respondent’s <kmart-deals.net> domain name from the mark.  See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant must first make 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 Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) ( “Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). 

 

Respondent does not contend he has any rights in the domain name.  In fact, Respondent contends that someone registered the domain name in his name without his knowledge or consent.  Therefore, Respondent has no rights or legitimate interests in the disputed domain name.  See Colgate-Palmolive Co. v. Domains For Sale, FA 96248 (Nat. Arb. Forum Jan. 18, 2001) (Respondent’s willingness to transfer the domain name at issue to Complainant, as reflected in its Response, is evidence that it has no rights or legitimate interests in the domain name.)

 

Since Respondent is not commonly known by the <kmart-deals.net> domain name, Respondent does not have rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).  See 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"); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

 

Moreover, the actual registrant was using the <kmart-deals.net> domain name to engage in a fraudulent phishing scheme until Complainant asked the Registrar to disable the content.  Complainant asserts that Respondent’s domain name resolved to a website prompting Internet users to enter their personal information, particularly credit card numbers.  Diversion of Internet users to a third-party website in order to fraudulently acquire their personal information does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii).  See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“‘Phishing’ involves the use of e-mails, pop-ups or other methods to trick Internet users into revealing credit cards, passwords, social security numbers and other personal information to the ‘phishers’ who intend to use such information for fraudulent purposes.”); see also HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s website, and is used to acquire personal information from Complainant’s potential associates fraudulently” does not fall within the parameters of Policy ¶¶ 4(c)(i) and (iii)).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

The person listed as Respondent has submitted a Response indicating that he did not register the domain name and that someone has used his name and address without his permission.  Therefore, the registrant of the domain name provided misleading WHOIS contact information when registering the domain name, and such conduct constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Home Dir., Inc. v. HomeDirector, D2000-0111, (WIPO Apr. 11, 2000) (finding that providing false or misleading information in connection with the registration of the domain name is evidence of bad faith); see also Visit Am., Inc. v. Visit Am., FA 95093 (Nat. Arb. Forum Aug. 14, 2000) (“Evidence that a domain name owner provided incorrect information to a domain name registrar supports a finding of bad faith registration.”).

 

Bad faith registration and use of the <kmart-deals.net> domain name pursuant to Policy ¶ 4(a)(iii), is also shown because the domain name resolved to a website prompting Internet users to enter their personal information, including credit card numbers, until Complainant asked the Registrar to disable the website content.  Phishing and attempting to fraudulently acquire personal information from Internet users seeking Complainant’s products and services constitutes bad faith registration and use in violation of Policy ¶ 4(a)(iii).  See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”); see also Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <kmart-deals.net> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 5, 2006

 

 

 

 

 

 

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