Sterling Jewelers Inc. v A K
Claim Number: FA1410001584605
Complainant is Sterling Jewelers Inc. (“Complainant”), represented by John J. Cunniff of Hahn Loeser + Parks LLP, Ohio, USA. Respondent is A K (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kayjewelerscreditcardr.com>, registered with NameSilo, LLC (sometimes referred to herein as the “Disputed Domain Name”).
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.
Kendall C. Reed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 13, 2014; the National Arbitration Forum received payment on October 13, 2014.
On October 13, 2014, NameSilo, LLC confirmed by e-mail to the National Arbitration Forum that the <kayjewelerscreditcardr.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC 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 October 17, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 6, 2014 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@kayjewelerscreditcardr.com. Also on October 17, 2014, 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.
A timely Response was received and determined to be complete on November 5, 2014.
The Complainant filed an Additional Submission which was received by the Provider after the deadline for submissions. The Complainant asserts in its Additional Submission that the Respondent failed to provide to the Complainant a copy of the Response as required by the Rules. Rather, the Complainant received a copy of the Response directly from the Provider on the day after it was received by the administrator. As such, the Complainant was shorted, so speak, one day with respect to the five-day response period. As the deficiency in this regard is di minimus in nature the Panel accepts the Complainant’s Additional Submission and has considered it along with the other documents submitted by the parties.
On November 12, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Kendall C. Reed 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant utilizes the KAY and KAY JEWELERS mark (“Complainant’s Marks”), to promote the sale of fine jewelry and fashion merchandise. Complainant has obtained United States Patent and Trademark Office (“USPTO”) registrations for the Complainant’s Marks, among other registrations in a number of other countries. The Disputed Domain Name takes the entirety of the Complainant’s Marks and adds “creditcardr” at the end—a phrase that is either generic or meaningless.
Respondent has no rights or legitimate interests in the Disputed Domain Name. Respondent has never been known by the domain name since registering it on August 21, 2014, and has never received Complainant’s license or authorization to make use of the Complainant’s Marks in the context of an Internet domain name. Further, Respondent’s use of the Disputed Domain Name is for purposes of hosting pay-per-click hyperlink advertisements.
Respondent’s bad faith use and registration is traceable to the fact that it both had knowledge of Complainant’s Marks when registering the Disputed Domain Name, and used the Disputed Domain Name to attract commercial gains in bad faith.
Respondent has a right to use the Disputed Domain Name for reviews. Respondent is making a nominative fair use of the Disputed Domain Name for the purpose of expressing a review Complainant’s store-backed credit card services. Further, Respondent includes an express disclaimer that it is an independent website not affiliate with Complainant. There is a very low likelihood of confusion given the nature of the website, and Respondent’s explicit inclusion of hyperlinks to Complainant’s own website.
C. Additional Submissions
The Complainant argues in its that the letter “r” added to the expression “kayjewelerscreditcard” (in the Disputed Domain Name, <kayjewelerscreditcardr.com>) is an effort on the part of the Respondent to “typo squat”; in support of this argument the Complainant points out that the “r” key is in close proximity to the “d” key on a standard keyboard. Additionally the Complainant argues that a single letter added to a registered mark is insufficient to meaningfully distinguish the Disputed Domain Name from the Complainant’s Marks. Finally, the Complainant argues that the use by the Respondent of a forwarding link to the Complainant’s website and a disclaimer are not necessarily sufficient to establish good faith use of the Disputed Domain Name.
The Panel finds the following facts:
1. The Complainant is the owner of the trademarks KAY and KAY JEWLERS, and these marks were registered before the Respondent registered the Disputed Domain Name.
2. The Respondent registered the Disputed Domain Name on or about August 21, 20014.
3. The website to which the Disputed Domain Name directs (the “Respondent’s website”), contains advertisements for products completive with products sold by the Complainant under Complaint’s Mark, namely jewelry.
4. The Respondent’s website contains a disclaimer that the site is not affiliated with the Complainant and the Respondent’s website contains a link to the Complainant’s website.
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.
The Complainant argues that it has rights in the Complainant’s Marks by virtue of the Complaint’s registration thereof with the United States Patent and Trademark Office. The Complainant further argues that the Disputed Domain Name is identical or confusingly similar to the Complainant’s Mark for purposes of the Policy because the Disputed Domain Name includes the terms “KAY” and “KAY JEWELERS” and the Disputed Domain Name simply adds the term “creditcardr” to the end of the expression “KAY JEWELWERS,” which does not serve to distinguish.
The Panel has no difficulty finding that the Complainant has rights in the Complainant’s Marks for purposes of the Policy. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO)
The Panel also has no difficulty finding the Disputed Domain Name is confusingly similar to the Complainant’s Mark. The Disputed Domain Name incorporates the entirety of the Complainant’s Mark with the addition of the expression “creditcardr.” Whereas it is possible for additional content to create a meaningful distinction, it is also possible for additional content to strengthen a reference. See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names). The Panel finds that the additional content in this matter is of the latter type. Finally, the Respondent admits, by virtue of its argument for nominal fair use, that it intentionally incorporated the Complainant’s Marks.
The Complainant has established the first element of the policy.
The analysis on this point involves the Complainant making out a prima facie case that the 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 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.”).
In the present case the Complainant demonstrates, and the Respondent does not contest, that: 1) the Respondent has not been commonly known by the Disputed Domain Name; 2) the Respondent is not attempting to make a bona fide offering of goods or services; and 3) the Complainant did not give permission to the Respondent to use the Complainant’s Marks.
The Complainant has made out a prima facie case.
The Respondent counters that it is using the Disputed Domain Name to direct to a website on which the Respondent presents comments about the Complainant’s credit card services. [The Complainant offers credit cards to the public – independent research by the Panel.] The Respondent argues that such is permissible as nominative fair use under trademark law and as noncommercial criticism under the Policy pursuant to Policy ¶ 4(c)(iii). The Respondent further argues that it has taken several affirmative steps to avoid confusion on the part of Internet users, and presumably, thereby lessening the burden on the Complainant with respect to the balancing of interests. These steps are the addition of the letter “r” to the expression “kayjewlerscreditcard” that operates to clearly announce to Internet users that the Respondent’s website is a “review” site unaffiliated with the Complainant. The placement of a disclaimer on its website in a prominent position so as to preclude the possibility of confusion by Internet uses who might mistakenly land on the Respondent’s Website instead of the Complainant’s website. Further the Respondent provides a link on its website to the Complainant’s website also for the benefit of any Internet user who might mistakenly land on the Respondent’s website.
Policy ¶ 4(c)(iii) reads in pertinent part:
“Any of the following circumstances…if found by the Panel…shall demonstrate your [the respondent’s] rights or legitimate interest to the domain name … : you [the respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers…”
It is significant that this section includes the disqualifying aspect of commercial gain, that is, even in a situation in which a respondent is using a disputed domain name for comment AND commercial gain, then this section would not apply and the safe harbor would not be reached. Such is the situation in the present matter. The Respondent is making comment about the Complainant’s credit card services AND the Respondent is deriving income from its website.
The Respondent argues that such is acceptable under the Policy. In this regard the Respondent’s states:
“There can occasionally be ad units displayed on the site which are completely controlled by Google Adsense. It is common practice to use an ad providing service such as Google Adsense to offset some of the high cost in developing, maintaining, hosting and producing review sites and blogs, this is because blogs and review site such as this do not compete with the trademark holder and are not used nor have the intention for commercial gain.”
This is not correct. What the Respondent does with his income is neither here nor there. The important point is that he makes income, at whatever level, and this makes his use commercial in nature. As such, the situation is not analogous to the cases dealing with non-commercial fair use, such as Howard Jarvis Taxpayers Association v. Paul McCauley, Case No. D2004-0014 (April 22, 2004)(transfer denied), see also Anastasia International Inc., v. Damains by Proxy Inc./rumen kadiev, Case No. D2009-1416 (transfer ordered)(January 18, 2010); and see Sutherland Institute v. Continuative LLC, Case No. D2009-0693 (Transfer denied)(July 10, 2009).
It does not matter that the advertisements are placed on the Respondent’s website by Google Adsense without the Respondent’s involvement. The Respondent is responsible for the content of his website.
It does not matter that the Respondent has added the letter “r” to the expression “kayjewlerscreditcard”; an average Internet user is extremely unlikely to see this single character at the end of a string of twenty-one characters.
It does not matter that the Respondent has included a disclaimer and link to the Complainant’s website because this does not vitiate the noted commercial gain.
As such, the Respondent has failed to demonstrate that it has rights or legitimate interest in the Disputed Domain Name.
The Complainant has established the second element of the policy.
The Complainant argues that the Respondent’s use of the Disputed Domain Name is in bad faith because the Respondent is attempting to misleadingly divert consumers to its own website for commercial gain. The Respondent counters that it is attempting to attract Internet users to its website, but this is protected as fair use.
The applicable section of the Policy is ¶ 4(b)(iv), which reads in pertinent part:
“ [T]he following circumstances…if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website .., by creating a likelihood of confusion with the complainant’s mark as to the source., sponsorship, affiliation, or endorsement of your website…”
As noted, the Respondent’s use of the Disputed Domain Name is not protected fair use under the Policy. The Respondent is intentionally attempting to attract Internet users to its website. The Respondent does derives commercial gain from its website. The Dispute Domain Name was selected to make direct reference to the Complainant’s Marks, which operates to create the likelihood of confusion as to source, and the Respondent’s effort to distinguish the Disputed Domain Name by the inclusion of the letter “r” is not successful. As such the situation falls within the scope of Policy ¶ 4(b)(iv).
The Complainant has established the third element of the policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be Granted.
Accordingly, it is Ordered that the <kayjewelerscreditcardr.com> domain name be TRANSFERRED from the Respondent to the Complainant
Kendall C. Reed Panelist
Dated: November 26, 2014
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