J. C. Penney Corporation, Inc. and Its Wholly Owned Affiliate v. John Bonk / Land Merchandising Corp
Claim Number: FA1404001554732
Complainant is J. C. Penney Corporation, Inc. and Its Wholly Owned Affiliate (“Complainant”), Texas, USA. Respondent is John Bonk / Land Merchandising Corp (“Respondent”), Tennessee, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jcpenneyrewards.com>, registered with GODADDY.COM, LLC.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 17, 2014; the National Arbitration Forum received payment on April 17, 2014.
On April 18, 2014, GODADDY.COM, LLC confirmed by email to the National Arbitration Forum that the <jcpenneyrewards.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC 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 April 24, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 14, 2014 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@jcpenneyrewards.com. Also on April 24, 2014, 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 May 19, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin 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 was founded in 1902 and is now one of the largest apparel and home furnishing retailers in the United States. Complainant owns and uses JCPENNEY and related trademarks for department store services, catalog mail order services, and a variety of products. Complainant’s marks are registered in the United States and elsewhere. Complainant states that its website attracts over 17.7 million unique visitors per month, and many more during the Christmas holiday season.
Complainant contends that the disputed domain name <jcpenneyrewards.com> is confusingly similar to its JCPENNEY mark. Complainant further contends that Respondent has no rights or legitimate interests in the disputed domain name. In support thereof, Complainant asserts that Respondent is not commonly known by the domain name; that Respondent is not sponsored by or affiliated with Complainant in any way, and has not been given permission to use Complainant’s mark; and that Respondent is using the domain name to redirect Internet users to a website comprised of what are presumably pay-per-click links to third-party websites, some of which compete directly with Complainant. Complainant notes that the domain name has been registered through a proxy service, concealing the identity of the registrant, and suggests that the domain name was likely acquired by Respondent at some time after its initial registration in 2005; in any event, the registration or acquisition occurred long after Complainant acquired rights in the corresponding mark.
Finally, Complainant contends that the disputed domain name was registered and is being used in bad faith. In support thereof, Complainant asserts that its mark is so well known that its inclusion in the domain name suggests opportunistic bad faith. Complainant also notes that Respondent has ignored Complainant’s efforts at communication and that the domain name was registered through a proxy service, and accuses Respondent of being a serial cybersquatter, citing several previous proceedings under the Policy that were decided against Respondent.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been used 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.”).
The disputed domain name is identical to Complainant’s mark, but for the addition of the generic term “rewards” and the “.com” top-level domain. These alterations do not diminish the similarity between the domain name and Complainant’s mark. See, e.g., Sears Brands, LLC v. Zx Domains a/k/a Sezar Sak, FA 1234962 (Nat. Arb. Forum Dec. 29, 2008) (finding <searsrewards.com> confusingly similar to SEARS). The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant’s mark without authorization, and apparently its sole use has been for a website that displays pay-per-click links, including links relating to Complainant’s industry. Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(ii) of the Policy, bad faith may be shown by evidence that the domain name was registered “in order to prevent the owner of the trademark or service mark from reflecting the mark in
a corresponding domain name, provided that [Respondent] ha[s] engaged in
a pattern of such conduct.” Under paragraph 4(b)(iv), bad faith may be shown by evidence that “by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”
To have registered the domain name in bad faith, Respondent must have been aware of Complainant or Complainant’s mark when it registered the domain name, and the registration must in some way have been targeted at Complainant or the mark. Actual knowledge of the mark is required, although such knowledge may be inferred from circumstantial evidence. See, e.g., Kanal, Inc. v. Domain Admin, FA 1478238 (Nat. Arb. Forum Feb. 12, 2013).
Complainant’s mark is well known, and its inclusion in the disputed domain name and the content of the website to which the domain name resolves suggest to the Panel that Respondent is intentionally targeting consumers who may be confused by the similarity between the domain name and Complainant’s mark. Respondent’s history and use of a proxy registration service lend further support to an inference of bad faith. Accordingly, the Panel finds that the disputed domain name was registered and has been used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <jcpenneyrewards.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: May 21, 2014
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