Kohl’s Department Stores, Inc. v. Naushad Dhukka / SoftDot Technologies, LLC
Claim Number: FA1011001360851
Complainant is Kohl’s Department Stores, Inc. (“Complainant”), represented by Brian G. Gilpin of Godfrey & Kahn, S.C., Wisconsin, USA. Respondent is Naushad Dhukka / SoftDot Technologies, LLC (“Respondent”), represented by Paul S. Beik of Beik Law Firm, PLLC, Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kohls.co>, registered with Register.com LP.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflicts in serving as Panelist in this proceeding.
Prof. Darryl C. Wilson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 30, 2010; the National Arbitration Forum received payment on November 30, 2010.
On November 30, 2010, Register.com LP confirmed by e-mail to the National Arbitration Forum that the <kohls.co> domain name is registered with Register.com LP and that Respondent is the current registrant of the name. Register.com LP has verified that Respondent is bound by the Register.com LP 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 December 1, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 21, 2010 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@kohls.co. Also on December 1, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 December 21, 2010.
On December 27, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Prof. Darryl C. Wilson as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts that it owns many trademarks and trademark registrations related to its various products and services including a U.S. registration for the mark KOHL’S for retail department store services. Complainant also contends that it owns the domain name <kohls.com> which it uses as the primary website for its business. Complainant states that the Respondent’s domain name <kohls.co> is “identical and confusingly similar to Complainant’s KOHL’S mark, Respondent has no rights or legitimate interest in kohls.co, and Respondent registered and is using the domain name in bad faith.” Complainant contends that Respondent is not presently, nor has Respondent ever been, authorized to use Complainant’s mark or any variation thereof. Complainant also notes that Respondent registered the <kohls.co> domain name on August 31, 2010 and that on the date the complaint was filed, the disputed domain name did not resolve to an active website. At other times the domain name resolved to a website providing sponsored links to Complainant’s own stores, as well as stores of Complainant’s competitors.
B. Respondent
Respondent contends that because “Respondent is not using the disputed domain name and did not register the domain name in bad faith, the Panel should find in favor of the Respondent.” The Respondent notes that the domain name was purchased through an auction process and that it was Respondent’s understanding that “the purchase of any domain name through the auction was lawful and did not violate any other’s rights.” Respondent asserts that it followed all the rules of the process, paid valuable consideration and received no notice of Complainant’s rights. Respondent further claims that it has not used the domain name for any commercial purpose or in any attempt to violate Complainant’s rights. Respondent points out that upon notice of Complainant’s grievance, Respondent petitioned the auction company in an effort to exchange the disputed domain name in return for the expenses incurred in securing the domain name. Respondent also offered to voluntarily transfer the disputed domain name to Complainant for the out of pocket costs to obtain the domain name during the auction.
Complainant, Kohl’s Department Stores, Inc., owns and operates a chain of “Kohl’s” branded stores with locations throughout the United States. Kohl’s Department Stores has
been in business since 1962 and has grown from a single store in Wisconsin to nearly 1,100 stores in 49 states with over $17 Billion in sales in 2009. Kohl’s has continuously used the mark KOHL’S in connection with its products and services since 1962. Kohl’s has spent hundreds of millions of dollars developing and marketing its products and services and has established itself as a leading department store. In addition to its brick and mortar stores, Kohl’s has offered its products and services through its website at the <kohls.com> domain name since 2001.
Respondent, NaushadDhukka/SoftDot Technologies, LLC, does not indicate the nature of its business or services. Respondent’s address is indicated to be in Sugar Land, Texas. There is a Kohl’s Department store within 4 miles of Respondent’s given address. Respondent states that at all times Respondent intended to make a legitimate noncommercial or fair use of the disputed domain name. Respondent’s submission alternates between a plea for denial of Complainant’s request for relief based on either lack of knowledge, good intentions or both. While it may sound trite, the substance of the well worn cliché still rings true: “Ignorance of the law is no excuse.” Likewise, taking the road that willfully or otherwise ignores the established rights of others, though paved with good intentions, does not generally lead to a desirable place. While it is understandable that Respondent wants reimbursement for its misspent resources, such a desire presents no basis for a defense in a UDRP matter.
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.
Complainant asserts that it owns a trademark registration for the KOHL’S mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,047,904 issued March 25, 1997). The Panel finds that registering a mark with the USPTO provides conclusive evidence of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Complainant alleges that Respondent’s <kohls.co> domain name is identical to Complainant’s KOHL’S mark because the disputed domain name only omits the apostrophe and adds the country code top-level domain (“ccTLD”) “.co.” The Panel finds that omitting an apostrophe does not prevent a finding that the disputed domain name is identical to Complainant’s mark. See Chi-Chi’s, Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to the complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark). The Panel also finds that appending the ccTLD “.co” does not distinguish the disputed domain name from Complainant’s mark. See Europcar Int’l SA v. New Media Research in Romania SRL, FA 123906 (Nat. Arb. Forum Nov. 4, 2002) (“Respondent’s <europcar.ro> domain name is identical to Complainant’s EUROPCAR mark. Respondent’s domain name incorporates Complainant’s mark in its entirety, and only deviates with the addition of the Romanian country-code of “.ro.” Because top-level domains are required of domain name registrants, their addition has been determined to be inconsequential when conducting an identical analysis under Policy ¶ 4(a)(i).”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name as required under Policy ¶ 4(a)(ii). 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).
Complainant asserts that Respondent has never been permitted or authorized to use Complainant’s KOHL’S mark. The WHOIS information for the <kohls.co> domain name identifies the registrant as “Naushad Dhukka,” a name which does not appear connected with the disputed domain name. The Panel finds that Respondent is not commonly known by the <kohls.co> domain name and does not have any rights or legitimate interests in the 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); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
Complainant argues that Respondent’s <kohls.co> domain name initially resolved to a website hosting a variety of pay-per-click links to competing websites like Macy’s and JCPenny. Complainant asserts, and the Panel finds, that such a use does not constitute a bona fide offering of goods or services according to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Complainant further alleges that at the time of the filing of this Complaint, Respondent’s <kohls.co> domain name did not resolve to an active website. The Panel finds that Respondent’s failure to make active use of the disputed domain name indicates a lack of rights and legitimate interests according to Policy ¶ 4(a)(ii). See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Complainant has proven this element.
Complainant contends that shortly after registration, Respondent’s <kohls.co> domain name resolved to a website featuring pay-per-click links to competing department stores like Macy’s and JCPenny. The Panel finds that using the disputed domain name which consists of Complainant’s mark to facilitate competition with Complainant and disrupt Complainant’s business shows bad faith registration and use according to Policy ¶ 4(b)(iii). See Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business). The Panel finds that Respondent’s statements that it did not intend to engage in any objectionable activities are unsupported, self-serving, and disingenuous in light of the facts and circumstances surrounding this proceeding.
Complainant contends that at the time of the filing of this Complainant, Respondent was not actively using the <kohls.co> domain name in connection with a content-filled website. The Panel finds that Respondent’s failure to actively use the disputed domain name is also an indicator of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith). Respondent apparently has changed its use of the domain name over time and asserts repeatedly in its submissions that it is not presently using the disputed domain name at all. Respondent’s declarations further exhibit Respondent’s real or feigned misunderstanding of trademark rights, domain names and the UDRP. Regardless of the basis for that misunderstanding the lack of it does not serve as a defense.
Complainant has proven this element.
Since the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that the Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <kohls.co> domain name be TRANSFERRED from Respondent to Complainant.
Prof. Darryl C. Wilson, Esq., Panelist
Dated: January 10, 2011
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