Kohl’s Illinois, Inc. v. PPA Media Services / Ryan G Foo
Claim Number: FA1211001470418
Complainant is Kohl’s Illinois, Inc. (“Complainant”), represented by CitizenHawk, Inc., Californias, USA. Respondent is PPA Media Services / Ryan G Foo (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <khohls.com>, <ko0hls.com>, <kohlns.com>, and <kohols.com>, registered with Internet.bs Corp.
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 November 8, 2012; the National Arbitration Forum received payment on November 8, 2012.
On November 13, 2012, Internet.bs Corp confirmed by e-mail to the National Arbitration Forum that the <khohls.com>, <ko0hls.com>, <kohlns.com>, and <kohols.com> domain names are registered with Internet.bs Corp and that Respondent is the current registrant of the names. Internet.bs Corp as verified that Respondent is bound by the Internet.bs Corp 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 November 15, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 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@khohls.com, postmaster@ko0hls.com, postmaster@kohlns.com, postmaster@kohols.com. Also on November 15, 2012, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 19, 2012, 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" 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 names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant has rights in the KOHL’S mark.
a. Complainant owns rights in the KOHL’S mark through its federal trademark registration with the United States Patent and Trademark Office (“USPTO”):
Reg. No. 1,772,009 registered May 18, 1993 &
Reg. No. 2,047,904 registered March 25, 1997.
2. Respondent’s <khohls.com>, <ko0hls.com>, <kohlns.com>, and <kohols.com> disputed domain names are confusingly similar to Complainant’s KOHL’S mark.
a. Respondent’s disputed domain names are misspelled versions of Complainant’s KOHL’S mark.
b. Respondent adds the generic top-level domain (“gTLD”) “.com” and additional letters or numbers to the <khohls.com>, <ko0hls.com>, <kohlns.com>, and <kohols.com> disputed domain names comprised mainly of Complainant’s KOHL’S mark.
c. Respondent’s domain names are typosquatted versions of Complainant’s registered mark.
d. Respondent’s use of the <khohls.com>, <ko0hls.com>, <kohlns.com>, and <kohols.com> disputed domain names is likely to cause confusion with Complainant’s KOHL’S mark.
3. Respondent has no rights or legitimate interests in the <khohls.com>, <ko0hls.com>, <kohlns.com>, and <kohols.com> domain names.
a. Respondent has presented no evidence to establish that it is commonly known by the <khohls.com>, <ko0hls.com>, <kohlns.com>,or <kohols.com> disputed domain names.
b. Respondent is not sponsored by or legitimately affiliated with Complainant in any way.
c. Complainant has not given Respondent permission to use Complainant’s KOHL’S mark.
d. Respondent failed to reply to Complainant’s “Cease and Desist” letter.
e. Respondent is using the disputed domain names to redirect Internet users to websites featuring generic links to third-party websites competing with Complainant’s business and from which Respondent presumably receives pay-per-click fees.
f. The earliest date Respondent registered the disputed domain names was July 23, 2004.
g. Respondent is not using the <khohls.com>, <ko0hls.com>, <kohlns.com>, and <kohols.com> domain names to provide a bona fide offering of goods or services.
4. Respondent has registered and is using the <khohls.com>, <ko0hls.com>, <kohlns.com>, and <kohols.com> domain names in bad faith.
a. Respondent is partaking in typosquatting behavior.
b. Respondent is a serial typosquatter.
c. Respondent is using the disputed domain names as a “click through” website from which it receives revenue from each misdirected Internet user.
d. Respondent’s resolving website display links that compete with Complainant, thereby disrupting complainant’s business.
e. All of the disputed domain names resolve to websites featuring Complainant’s KOHL’S mark spelled correctly.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Kohl’s Illinois, Inc., owns rights in the KOHL’S mark through its federal trademark registrations with the United States Patent and Trademark Office (“USPTO”): Reg. No. 1,772,009 registered May 18, 1993 & Reg. No. 2,047,904 registered March 25, 1997.
Respondent is PPA Media Services / Ryan G Foo. The earliest date Respondent registered the disputed domain names was July 23, 2004.
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.”).
Complainant has rights in the KOHL’S mark pursuant to Policy ¶ 4(a)(i) based on its registrations with the USPTO, aming many others. Registration of a given mark with a national trademark authority is evidence of a complainant’s rights in a given mark under Policy ¶ 4(a)(i), even when the mark is not registered in the country where Respondent is located. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Therefore, the Panel finds that Complainant has established rights in its KOHL’S mark pursuant to Policy ¶ 4(a)(i).
Respondent’s <khohls.com>, <ko0hls.com>, <kohlns.com>, and <kohols.com> domain names are confusingly similar to Complainant’s KOHL’S mark. The <khohls.com>, <ko0hls.com>, <kohlns.com>, and <kohols.com> domain names differ by only a single character when compared to Complainant’s KOHL’S mark. The disputed domain names all contain the (gTLD) “.com” and eliminate the apostrophe found in Complainant’s registered KOHL’S mark. The <khohls.com>, <kohlns.com>, and <kohols.com> domain names add an additional letter to Complainant’s KOHL’S mark and the <ko0hls.com> domain name adds the number “0” to Complainant’s KOHL’S mark. These variations are insufficient to differentiate a disputed domain name from a registered mark. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant); see also Oxygen Media, LLC v. Primary Source, D2000-0362 (WIPO June 19, 2000) (finding that the domain name <0xygen.com>, with zero in place of letter “O,” “appears calculated to trade on Complainant’s name by exploiting likely mistake by users when entering the url address”); see also Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to the complainant’s federally registered service mark, KELSON); see also LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that the omission of an apostrophe did not significantly distinguish the domain name from the mark). The Panel finds that Respondent’s <khohls.com>, <kohlns.com>, <ko0hls.com> and <kohols.com> domain names are confusingly similar to Complainant’s KOHL’S mark pursuant to Policy ¶ 4(a)(i).
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).
Complainant has not sponsored or given Respondent permission to use its KOHL’S mark in any way. The WHOIS information for Respondent lists “Ryan G. Foo” and “Foundation Private Whois” as the registrant for the disputed domain names. The Panel finds that Respondent is not commonly known by the <khohls.com>, <ko0hls.com>, <kohlns.com>, and <kohols.com> domain names according to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent has no rights or legitimate interests in the <khohls.com>, <ko0hls.com>, <kohlns.com>, and <kohols.com> domain names as it does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain names. Respondent is using the disputed domain names to redirect unsuspecting Internet users to websites featuring generic links to third-party websites, some of which directly compete with Complainant’s business. The Panel presumes that Respondent is receiving pay-per-click fees from these linked websites. Therefore, Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policies ¶¶ 4(c)(i) and (iii). See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute 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)); see also Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
Respondent is a serial cybersquatter. Complainant provides multiple cases in which the panels transferred the disputed domain names from Respondent to the respective complainants: Getty Images, Inc. v. PPA Media Servs,/Ryan G Foo, FA 1205001443660 (Nat. Arb. Forum July 2, 2012); Fandango, LLC v. PPA Media Servs./Ryan G Foo, FA 1204001439412 (Nat. Arb. Forum June 4, 2012); Gov’t Employees Ins. Co. v. PPA Media Servs./Ryan G Foo, D2012-1486 (WIPO Sept. 18, 2012); and Univision Commc’ns Inc. v. PPA Media Services/Ryan G Foo, FA 1202001429889 (Nat. Arb. Forum April 11, 2012). Previous panels have found bad faith pursuant to Policy ¶ 4(b)(ii) when a respondent has been subject to numerous UDRP proceedings where panels ordered the transfer of a disputed domain name containing the mark of a complainant. See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”). Therefore, the Panel finds that Respondent has a pattern of bad faith registrations pursuant to Policy ¶ 4(b)(ii).
Respondent is using the <khohls.com>, <ko0hls.com>, <kohlns.com>, and <kohols.com> domain names to feature Complainant’s registered KOHL’S mark and to provide links to competing sites and businesses in order to compete with Complainant and disrupt its business. Previous panels have found that a respondent’s use of a confusingly similar domain name to compete with complainant and disrupt its business is bad faith pursuant to Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”). Therefore, the Panel finds that Respondent is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Respondent’s <khohls.com>, <ko0hls.com>, <kohlns.com>, and <kohols.com> domain names resolve to “click through” websites intended to receive revenue for Respondent from each misdirected Internet user. Respondent is using the confusingly similar disputed domain names to attract potential consumers and mislead them to Respondent’s resolving websites in order to profit from their confusion. Complainant also points out that Respondent features Complainant’s KOHL’S mark spelled correctly on the websites resolving from the <khohls.com>, <ko0hls.com>, <kohlns.com>, and <kohols.com> domain names, further indicating the intent of Respondent to confuse Internet users and capitalize on Complainant’s mark. Previous panels have found that such actions indicate bad faith pursuant to Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be misled to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”). The Panel therefore finds that Respondent registered and is using the <khohls.com>, <ko0hls.com>, <kohlns.com>, and <kohols.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iv).
Respondent’s <khohls.com>, <ko0hls.com>, <kohlns.com>, and <kohols.com> domain names are typosquatted versions of Complainant’s KOHL’S mark. The Panel finds that Respondent’s <khohls.com>, <ko0hls.com>, <kohlns.com>, and <kohols.com> domain names are typosquatted versions of Complainant’s KOHL’S mark and therefore are evidence of bad faith pursuant to Policy ¶ 4(a)(iii). See Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <khohls.com>, <ko0hls.com>, <kohlns.com>, and <kohols.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 2, 2013
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