Kohl's Illinois, Inc. v. Zadar Volanic
Claim Number: FA1211001473632
Complainant is Kohl's Illinois, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Zadar Volanic (“Respondent”), Croatia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <kaohls.com>, <kohld.com>, <kohlse.com>, and <kohlws.com>, registered with Hebei Guoji Maoyi (Shanghai) LTD d/b/a Hebeidomains.com.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 30, 2012; the National Arbitration Forum received payment on November 30, 2012.
On December 4, 2012, Hebei Guoji Maoyi (Shanghai) LTD d/b/a Hebeidomains.com confirmed by e-mail to the National Arbitration Forum that the <kaohls.com>, <kohld.com>, <kohlse.com>, and <kohlws.com> domain names are registered with Hebei Guoji Maoyi (Shanghai) LTD d/b/a Hebeidomains.com and that Respondent is the current registrant of the names. Hebei Guoji Maoyi (Shanghai) LTD d/b/a Hebeidomains.com has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) LTD d/b/a Hebeidomains.com 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 11, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 31, 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@kaohls.com, postmaster@kohld.com, postmaster@kohlse.com, and postmaster@kohlws.com. Also on December 11, 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 January 7, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the KOHL’S mark. Respondent’s domain names are confusingly similar to Complainant’s KOHL’S mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <kaohls.com>, <kohld.com>, <kohlse.com>, and <kohlws.com> domain names, and that Respondent registered and uses the domain names in bad faith.
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 owns trademark registrations with the USPTO for the KOHL’S mark (e.g., Reg. No. 1,772,009, registered May 18, 1993) and for the KOHL’S DEPARTMENT STORES mark (Reg. No. 2,606,690, registered August 13, 2002). See Complainant’s Exhibit E. Although Respondent appears to reside in Croatia, Policy ¶ 4(a)(i) only requires that Complainant establish its rights in the KOHL’S mark in some jurisdiction. See 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). Thus, the Panel concludes that Complainant’s trademark registrations with the USPTO are sufficient to establish its rights in the KOHL’s mark pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant argues that Respondent’s <kaohls.com>, <kohld.com>, <kohlse.com>, and <kohlws.com> domain names are confusingly similar to Complainant’s KOHL’S mark because they differ by only a single character from Complainant’s mark. Respondent’s <kaohls.com>, <kohlse.com>, and <kohlws.com> domain names simply add the additional letters “a,” “e,” or “w” to Complainant’s KOHL’S mark. The addition of a letter does not differentiate Respondent’s disputed domain names from Complainant’s mark under Policy ¶ 4(a)(i). See Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark). Respondent substitutes the letter “s” for a “d” in Respondent’s <kohld.com> domain name. The misspelling of Complainant’s mark does not eliminate confusing similarity between Respondent’s disputed domain name and Complainant’s mark under Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that “[a] domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive.”). Respondent’s disputed domain names also remove the apostrophe from Complainant’s KOHL’S mark and add a generic top-level domain (“gTLD”). The removal of apostrophes and addition of a gTLD such as “.com” does not distinguish Respondent’s disputed domain names from Complainant’s mark under Policy ¶ 4(a)(i). See Daddy’s Junky Music Stores, Inc. v. Kausar, FA 140598 (Nat. Arb. Forum Feb. 11, 2003) (“The lack of an apostrophe in the domain name is not a distinguishing difference because punctuation is not significant in determining the similarity of a domain name and a mark.”); see also Metro-Goldwyn-Mayer Studios Inc. v. Antigua Domains, FA 1073020 (Nat. Arb. Forum Oct. 17, 2007) (“[T]he inclusion of the generic top-level domain ‘.com’ is inconsequential to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names.”). The Panel concludes that Respondent’s <kaohls.com>, <kohld.com>, <kohlse.com>, and <kohlws.com> domain names are confusingly similar to Complainant’s KOHL’S mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant asserts that Respondent is not commonly known as a business, or in any other manner, by the disputed domain names. The WHOIS information identifies “Zadar Volanic” as the registrant of the disputed domain names. Complainant contends that it has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant’s mark. Complainant argues that it has not given Respondent permission to use its marks in a domain name. Respondent fails to submit evidence that it is commonly known by the disputed domain names. Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain names under 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).
Complainant argues that Respondent is using the disputed domain names to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Complainant contends that Respondent presumably receives pay-per-click fees from the links featured on the disputed domain names. Respondent’s disputed domain names resolve to websites which feature links to Complainant and links to Complainant’s competitors, such as “JCPenny,” “Tj Maxx,” and other links to apparel stores. The Panel determines that Respondent’s use of the disputed domain names to advertise links to competing third parties is 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). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent’s advertised pay-per-click links displayed on the resolving websites promote products that compete with Complainant. Complainant argues that the links featured on Respondent’s disputed domain names divert potential customers away from Complainant to third-party websites, which disrupts Complainant’s business. Respondent’s disputed domain names feature advertisements to Complainant’s competitors “JCPenny,” “Tj Maxx,” and others. See Complainant’s Exhibit H. Thus, the Panel concludes that Respondent’s disputed domain names disrupt Complainant’s business, showing bad faith use and registration 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).”).
Complainant asserts that Respondent has registered and is using the disputed domain names to attract and mislead consumers for its own profit. Complainant argues that Respondent is using the disputed domain names in connection with “click through” websites by providing links to the services and products offered by Complainant to generate revenue and to take advantage of Complainant’s well-known mark to achieve a wrongful competitive advantage and to commercially gain. Respondent’s disputed domain names connect to websites that feature links to Complainant’s competitors, for which Respondent presumably receives revenue for each click. Respondent’s use of the disputed domain names to attract Internet users to its websites for its own commercial gain demonstrates bad faith registration and use under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kaohls.com>, <kohld.com>, <kohlse.com>, and <kohlws.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 21, 2013
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