Kmart of Michigan, Inc. v. Michael W. Cone
Claim Number: FA0603000655014
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 Michael W. Cone (“Respondent”), P O Box 99800, EmeryVille, CA 94662.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <kmart-cameras.net>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 9, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 10, 2006.
On March 9, 2006, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <kmart-cameras.net> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that 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 March 14, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 3, 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-cameras.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 11, 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.
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 <kmart-cameras.net> domain name is confusingly similar to Complainant’s KMART mark.
2. Respondent does not have any rights or legitimate interests in the <kmart-cameras.net> domain name.
3. Respondent registered and used the <kmart-cameras.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Kmart of Michigan, Inc., operates a chain of more than 3,900 retail stores employing more than 130,000 people. Complainant is the nation’s third largest broadline retailer, with approximately $55 billion in annual revenues. Complainant has registered the KMART mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,546,637 issued February 2, 1996). In addition, Complainant maintains a website in connection to its business under the <kmart.com> domain name.
Respondent registered the <kmart-cameras.net> domain name on March 8, 2006. Internet users who access this domain name were originally directed to a website that was virtually identical to the website Complainant maintains under the <kmart.com> domain name. Complainant asserts that Respondent used this website to obtain personal information from Internet users. Currently, the <kmart-cameras.net> domain name does not resolve to any content.
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 has established rights in the KMART mark through its registration with the USPTO. 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 Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("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.").
Respondent’s <kmart-cameras.net> domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i) because it wholly incorporates Complainant’s KMART mark with the addition of a descriptive term, a hyphen and the top-level domain “.net.” The additions of a hyphen and a top-level domain do not negate the fact that Respondent’s domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Likewise, the addition of a descriptive term also fails to adequately distinguish Respondent’s domain name from Complainant’s mark. See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Once Complainant has made a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to prove that it does have rights or legitimate interests in the domain name. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”). The Panel finds that Complainant has presented a prima facie case, and despite Respondent’s failure to respond, will consider whether the evaluation of the evidence on record demonstrates rights or legitimate interests under Policy ¶ 4(c).
Respondent originally used the <kmart-cameras.net> domain name, which is confusingly similar to Complainant’s KMART mark, to present Internet users with a website that was nearly identical to Complainant’s website. Complainant asserts that Respondent was using its website to obtain personal information from Internet users. The Panel determines that Respondent registered the disputed domain name in an attempt to pass itself off as Complainant. Such use of the domain name is not in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (stating that where the respondent copied the complainant’s website in order to steal account information from the complainant’s customers, the respondent’s “exploitation of the goodwill and consumer trust surrounding the BLIZZARD NORTH mark to aid in its illegal activities is prima facie evidence of a lack of rights and legitimate interests in the disputed domain name”).
Complainant asserts that it has not granted Respondent any license, permission, or authorization by which it could hold any domain name registration that incorporates or is confusingly similar to Complainant’s KMART mark. Respondent has not responded to the Complaint with any evidence supporting a finding that Respondent has ever been commonly known by the disputed domain name. The Panel determines that Respondent is not commonly known by the disputed domain name, and that Respondent has no rights or legitimate interests in this name under Policy ¶ 4(c)(ii). See 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); 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 domain name and its original website are
confusingly similar to Complainant’s mark and website, and Complainant asserts
that Respondent was using its domain name and website to obtain personal
information from Internet users. There
is no indication that Respondent took any measures, such as posting a
disclaimer, to mitigate the confusion between it’s website and
Complainant’s. The Panel determines
that Respondent was attempting to pass itself off as Complainant. Such use of the disputed domain name constitutes
bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Hunter Fan Co. v. MSS, FA 98067 (Nat.
Arb. Forum Aug. 23, 2001) (holding that Respondent’s failure to post a
disclaimer on a website that was designed to foster a likelihood of confusion
with Complainant’s mark was evidence that the domain name was being used in bad
faith); see also Vivendi Universal Games v. Ballard, FA 146621
(Nat. Arb. Forum Mar. 13, 2002) (finding that where the complainant’s mark was appropriated at registration, and a copy of
the complainant’s website was used at the domain name in order to facilitate
the interception of the complainant’s customer’s account information, the
respondent’s behavior evidenced bad faith use and registration of the domain
name).
Additionally, the
Panel finds that Respondent registered the <kmart-cameras.net>
domain name to capitalize on the fame of Complainant’s KMART mark. Because of the prominence of Complainant’s
mark throughout the United States, the confusing similarity between the
disputed domain name and Complainant’s mark and the confusing similarity between
Respondent’s website and Complainant’s website, the Panel determines that
Respondent registered the <kmart-cameras.net> domain name
with full knowledge of Complainant’s business. Such use of the disputed domain name also constitutes bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Reuters
Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that
the respondent demonstrated bad faith where the respondent was aware of the
complainant’s famous mark when registering the domain name as well as aware of
the deception and confusion that would inevitably follow if he used the domain
names); see also Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the
domain name at issue to resolve to a website at which Complainant’s trademarks
and logos are prominently displayed.
Respondent has done this with full knowledge of Complainant’s business
and trademarks. The Panel finds that this conduct is that which is prohibited
by Paragraph 4(b)(iv) of the Policy.”).
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 <kmart-cameras.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 25, 2006
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