Kohl’s Illinois, Inc. v. D-Max Limited
Claim Number: FA1310001523912
Complainant is Kohl’s Illinois, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is D-Max Limited (“Respondent”), Saint Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kohlsw.com>, registered with Fabulous.Com Pty Ltd.
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 October 11, 2013; the National Arbitration Forum received payment on October 11, 2013.
On October 14, 2013, Fabulous.Com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <kohlsw.com> domain name is registered with Fabulous.Com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.Com Pty Ltd. has verified that Respondent is bound by the Fabulous.Com Pty Ltd. 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 22, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 12, 2013 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@kohlsw.com. Also on October 22, 2013, 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 November 14, 2013, 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 name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant is a family-focused, value oriented specialty department store offering moderately priced, exclusive and national brand apparel, shoes, accessories, beauty and home products in an exciting shopping environment.
2. Complainant operates 1,146 stores in 49 states.
3. Complainant’s official website is located at <www.kohls.com>.
4. Complainant owns rights in the KOHL’S mark and has used the KOHL’S mark since at least as early as 1996.
5. Complainant is the owner of United States Patent and Trademark Office (“USPTO”) registrations for the KOHL’S mark (e.g., Reg. No. 1,772,009 registered May 18, 1993).
6. Respondent’s <kohlsw.com> domain name is confusingly similar to Complainant’s KOHL’S mark.
7. Respondent has no rights or legitimate interests in the <kohlsw.com> domain name.
a. Respondent is not commonly known by the disputed domain name.
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 mark.
d. Respondent uses the disputed domain name to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.
e. Respondent presumably receives pay-per-click fees from the links present on the resolving website.
f. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name.
g. Respondent registered the disputed domain name on October 28, 2005.
8. Respondent registered the <kohlsw.com> domain name in bad faith.
a. Respondent has listed the disputed domain name for sale.
b. Respondent has a pattern of bad faith use and registrations.
c. Respondent uses the disputed domain name in connection with generating revenue as a click-through website.
d. Respondent uses the disputed domain name to attract and mislead consumers for its own profit.
e. The links featured on the webpage resolving from the disputed domain name promotes products that compete with Complainant thereby disrupting Complainant’s business.
f. Respondent’s resolving website features content directly related to Complainant’s business.
g. Respondent’s typosquatting behavior indicates bad faith use and registration.
B. Respondent
Respondent failed to submit a Response in this proceeding. However, on November 2, 2013, the Forum received an email from D-Max Limited stating “I do not wish to contest this Complaint. I hereby authorize the immediate transfer of the domain to the Complainant. “
Complainant, Kohl’s Illinois, Inc., is a family-focused, value oriented specialty department store offering moderately priced, exclusive and national brand apparel, shoes, accessories, beauty and home products. Complainant operates 1,146 stores in 49 states. Complainant owns rights in the KOHL’S mark and has used the KOHL’S mark since at least as early as 1996. Complainant is the owner of United States Patent and Trademark Office (“USPTO”) registrations for the KOHL’S mark (e.g., Reg. No. 1,772,009 registered May 18, 1993).
Respondent D-Max Limited registered the disputed domain name on October 28, 2005. Respondent uses the disputed domain name to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Respondent has listed the disputed domain name for sale. Respondent has a pattern of bad faith use and registration.
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 Panel finds that Complainant has rights in the KOHL’S mark under Policy ¶ 4(a)(i) through registration with the USPTO. 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). Panels have typically found that it is irrelevant whether a complainant has registered a mark in the location of a respondent. See 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).
Complainant argues that Respondent’s <kohlsw.com> domain name is confusingly similar to Complainant’s KOHL’S mark under Policy ¶ 4(a)(i). Respondent’s <kohlsw.com> domain name eliminates the apostrophe in Complainant’s KOHL’S mark as well as adds the letter “w.” Previous panels have found that removing punctuation and adding letters are insufficient variations that fail to differentiate a disputed domain name from a given mark. 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); see also Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”). Respondent adds the generic top-level domain (“gTLD”) “.com” to Complainant’s KOHL’S mark. Previous panels have concluded that adding a gTLD to domain names does not create a distinction capable of overcoming a finding of confusing similarity. 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). The Panel finds that Respondent’s <kohlsw.com> domain name is confusingly similar to Complainant’s KOHL’S mark under 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 argues that Respondent has no rights or legitimate interests in the <kohlsw.com> domain name because Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii). Complainant argues that Respondent had no trademark or intellectual property rights in the disputed domain name at the time of registration. Complainant further contends that it has not sponsored Respondent or affiliated it with Complainant. Complainant states that it has not given Respondent permission to use Complainant’s mark. The WHOIS information for Respondent’s disputed domain name lists “D-Max Limited” as registrant. Prior panels have found that a respondent was not commonly known by a domain name where there was no indication on the record, including the WHOIS information, suggesting that respondent was commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant contends that Respondent has no rights or legitimate interests in the <kohlsw.com> disputed domain name because Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (c)(iii). Complainant contends that Respondent is using the disputed domain name 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 claims that Respondent collects pay-per-click revenue from the links featured on the resolving website. Some of the links featured on the website resolving from the disputed domain name include, “Kohls com,” “Kohls Department Store,” “Clothing Fashion Store,” “Kohl’s Official Site,” “30% off Kohls Promo Codes,” and “Kohls Coupon.” See Exhibit H. Prior UDRP panels have found that featuring a series of links that compete with a complainant, and gaining revenue from the links, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. See ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees. . . . is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”). The Panel finds that Respondent has no rights or legitimate interests in the <kohlsw.com> disputed domain name because it is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (c)(iii).
Complainant argues that Respondent has offered the <kohlsw.com> disputed domain name for sale in bad faith under Policy ¶ 4(b)(i). Complainant references Exhibit I showing the Whois Record for Respondent’s <kohlsw.com> domain name displaying the message, “The owner of the domain name you are researching has it listed for sale.” Prior panels have found that a general offer to sell a disputed domain name indicates that the domain name was registered in bad faith under Policy ¶ 4(b)(i). See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”). The Panel finds that Respondent has registered and is using the <kohlsw.com> domain name in bad faith under Policy ¶ 4(b)(i).
Complainant states that Respondent is a recalcitrant, serial cybersquatter, thus indicating bad faith under Policy ¶ 4(b)(ii). Complainant claims that Respondent has engaged in an ongoing pattern of such behavior as indicated by the UDRP decisions held against Respondent. See Exhibit N; see also Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. D-Max Limited, FA 1511761 (Nat. Arb. Forum Sept. 3, 2013); see also Alaska Air Group, Inc. and it subsidiary, Alaska Airlines v. D-Max Limited, FA 1510953 (Nat. Arb Forum Sept. 3, 2013); see also Homer TLC, Inc. v. D-Max Limited, FA 1491787 (Nat. Arb. Forum May 14, 2013). Prior panels have found that evidence of multiple UDRP decisions involving a respondent indicates bad faith use and registration under Policy ¶ 4(b)(ii). 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).”). The Panel finds that Respondent has a pattern of bad faith under Policy ¶ 4(b)(ii) that allows for an inference of bad faith.
Complainant contends that Respondent registered and is using the <kohlsw.com> disputed domain name in bad faith under Policy ¶ 4(b)(iii). Complainant argues that Respondent’s use of the domain name to resolve to a website featuring pay-per-click links promoting products that compete with Complainant disrupts Complainant’s business by diverting Internet users to third-party websites. Previous panels have found that using a confusingly similar domain name to resolve to a website featuring pay-per-click links that compete with a complainant’s business, indicates a respondent’s intent to disrupt the complainant’s business in bad faith. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).”). The Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant argues that Respondent has registered and is using the <kohlsw.com> disputed domain name in bad faith under Policy ¶ 4(b)(iv). Complainant alleges that Respondent uses the disputed domain name to resolve to a click-through website that likely results in revenue for Respondent when Internet users are misdirected to the website when looking for Complainant’s business. Complainant also claims that Respondent’s resolving website features Complainant’s KOHL’S mark spelled correctly as well as displaying content that is directly related to Complainant. Prior panels have routinely found bad faith use and registration when a respondent uses a confusingly similar domain name to resolve to a website offering third-party links that compete with a complainant. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). The Panel finds that Respondent has registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant claims that Respondent’s typosquatting behavior is evidence of bad faith. Previous panels have traditionally found typosquatting where there is a disputed domain name representing a typographical error with respect to a complainant’s mark or correlation between an incorrect letter found in the disputed domain name and its placement on a computer keyboard near the correct letter as found in a complainant’s mark. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The Panel finds that Respondent’s use of the disputed domain name indicates bad faith typosquatting behavior under 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 <kohlsw.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 27, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page