Sears Brands, LLC v. Giorgio Anguiano
Claim Number: FA1203001433555
Complainant is Sears Brands, LLC (“Complainant”), represented by David A. Wheeler of Greenberg Traurig, LLP, Illinois, USA. Respondent is Giorgio Anguiano (“Respondent”), Spain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kmartdrugstore.com>, registered with Netlynx, Inc.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 8, 2012; the National Arbitration Forum received payment on March 8, 2012.
After numerous requests, the Registrar, Netlynx, Inc. has not confirmed to the National Arbitration that the <kmartdrugstore.com> domain name is registered with Netlynx, Inc. or that the Respondent is the current registrant of the name. Registrar’s non-compliance has been reported to ICANN. The Forum’s standing instructions are to proceed with this dispute.
On March 21, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 10, 2012 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@kmartdrugstore.com. Also on March 21, 2012, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 19, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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. 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
Complainant makes the following contentions:
1.Complainant has rights in the KMART mark;
2. Complainant has registrations for the KMART mark (e.g., Reg. No. 3,141,789 registered September 12, 2006) through the United States Patent and Trademark Office (“USPTO”);
3. Respondent has no rights in the <kmartdrugstore.com> domain name;
4. The <kmartdrugstore.com> domain name is not being used for a bona fide offering of goods or services or a legitimate noncommercial or fair use;
5. The <kmartdrugstore.com> domain name resolves to an online pharmacy selling products in competition with those that Complainant offers;
6. Respondent registered and is using the disputed domain name with the intention to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source of the <kmartdrugstore.com> domain name;
7. Respondent had constructive and/or actual knowledge of Complainant’s rights in the KMART mark prior to its registration and use of the <kmartdrugstore.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant and its affiliated companies including Kmart Inc. are leaders in the retail industry and have been so for many years. Many Kmart stores contain in-store pharmacies.
2. Complainant has trademark registrations for the KMART mark (e.g., Reg. No. 3,141,789 registered September 12, 2006) through the United States Patent and Trademark Office (“USPTO”).
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.
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.”).
The first question is whether Complainant has rights in a trademark or service mark. In that regard, Complainant has submitted that is has rights in the KMART mark. Complainant provides the Panel with evidence of its multiple trademark registrations through the USPTO for the KMART mark (e.g., Reg. No. 3,141,789 registered September 12, 2006) which demonstrates that Complainant uses its KMART mark in connection with department, grocery, and pharmacy store goods and services. Panels have found that, regardless of the location of the parties, registration of a mark with a trademark authority is sufficient to demonstrate rights in a mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a) (I)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Therefore, the Panel finds that Complainant has rights in the KMART mark pursuant to Policy ¶ 4(a) (i).
The next question is whether the disputed domain name is identical or confusingly similar to the KMART mark. Complainant contends that Respondent’s <kmartdrugstore.com> domain name is confusingly similar to the KMART mark because Respondent has incorporated the whole of the mark into Respondent and has added the descriptive terms “drug” and “store,” as well as the generic top-level domain (“gTLD”) “.com,” to create the disputed domain name. The Panel finds that the addition of descriptive terms to a mark does not negate a finding of confusing similarity that is otherwise present as it is in the present case. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). The Panel also finds that the addition of a gTLD such as “.com” is irrelevant to a Policy ¶ 4(a)(i) determination. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a) (i) analysis.”). The Panel therefore finds that the <kmartdrugstore.com> domain name is confusingly similar to the KMART mark under Policy ¶ 4(a)(i).Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s KMART trademark and to use it in his domain name , adding the descriptive words “drug” and “ store”, words that are naturally associated with Complainant’s associated company Kmart Inc. and the goods and services that the public know that it provides, thus enhancing the confusing similarity between the domain name and the trademark.
(b) Respondent has then decided to use the domain name to lead to a website where Respondent operates an online pharmacy which sells products in competition with Comp and to do so clearly for monetary reward.
(c) Respondent has engaged in these activities without the consent or approval of Complainant.
(d) Complainant contends that Respondent does not have rights in the <kmartdrugstore.com> domain name and as part of that contention Complainant submits that Respondent does not have any trademark applications or registrations reflecting the KMART mark.
(e) Complainant has also established that Respondent’s use of the KMART mark is unauthorized.
(f) Additionally, Complainant provides the Panel with the WHOIS record for the <kmartdrugstore.com> domain name, which lists “Giorgio Anguiano” as the domain name registrant. The Panel therefore finds that Respondent is not commonly known by the <kmartdrugstore.com> 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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c) (ii) based on the WHOIS information and other evidence in the record).
(g) Complainant contends that Respondent has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <kmartdrugstore.com> domain name. Complainant argues that the <kmartdrugstore.com> domain name resolves to a website where Respondent operates an online pharmacy which sells products in competition with Complainant. UDRP Panels have found a lack of rights and legitimate interests where a disputed domain name is used to operate a competing business. See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”). Therefore, the Panel finds that Respondent’s use of the <kmartdrugstore.com> domain name is neither a Policy 4(c) (i) bona fide offering of goods or services nor a Policy ¶ 4(c) (iii) legitimate noncommercial or fair use.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent registered and is using the <kmartdrugstore.com> domain name in bad faith. Complainant contends that Respondent intended to create confusion as to the source of the disputed domain name in order to attract, for commercial gain, Internet users to the <kmartdrugstore.com> domain name. Complainant asserts that Respondent’s <kmartdrugstore.com> domain name resolves to Respondent’s competing business, an online pharmacy. The Panel infers that Respondent profits from the operation of this business. The Panel finds that Respondent acted to attract Internet users to the disputed domain name intentionally by creating confusion as to Complainant’s affiliation with the <kmartdrugstore.com> domain name and to take commercial advantage of Internet users’ mistakes made as a result of this confusion within the meaning of Policy ¶ 4(b) (iv). Accordingly, the Panel finds that Respondent registered and is using the <kmartdrugstore.com> domain name in bad faith. See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
Secondly, Complainant argues that Respondent had constructive and/or actual knowledge of Complainant’s rights in the KMART mark prior to its registration and use of the <kmartdrugstore.com> domain name. Complainant asserts that its extensive registration and use of the KMART mark gave Respondent constructive knowledge and that Respondent’s actual knowledge is evidenced by its registration of a domain name which uses Complainant’s mark and a descriptive term to send Internet users to its competing online pharmacy business. Panels have found in the past that constructive knowledge is insufficient to hold a Respondent’s actions as having been done in bad faith, but the Panel finds that Respondent had actual knowledge of Complainant’s rights in the KMART mark prior to registering and using the <kmartdrugstore.com> domain name pursuant to Policy ¶ 4(a)(iii). See Meredith Corp. v. CityHome, Inc., D2000-0223 (WIPO May 18, 2000) (finding that the respondent’s constructive notice of the complainant’s registered mark was insufficient to support a finding of bad faith registration); see also Houlberg Dev. v. Adnet Int’l, FA 95698 (Nat. Arb. Forum Oct. 27, 2000) (holding that as the respondent had actual knowledge of the complainant’s asserted rights in "Retail Engine" as a trademark before it renewed the domain name, the domain name was renewed in violation of ICANN Policy ¶ 2(b) and hence in bad faith).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the domain name using the KMART mark, adding to it the words “drug” and “store” and thereby invoking a service that the public would assume was offered by Complainant though its associated company Kmart Inc. and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kmartdrugstore.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 23, 2012
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