Sears Holdings Corporation v. David Rahmany / Dme / N Rahmany
Claim Number: FA1505001618201
Complainant is Sears Holdings Corporation (“Complainant”), represented by Guy W. Barcelona of McAndrews, Held, and Malloy, Ltd., Illinois, USA. Respondent is David Rahmany / Dme / N Rahmany (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <kmart.services>, <kmart.systems>, <sears.technology>, and <kenmore.technology>, registered with Godaddy LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 6, 2015; the Forum received payment on May 6, 2015.
On May 07, 2015, Godaddy LLC confirmed by e-mail to the Forum that the <kmart.services>, <kmart.systems>, <sears.technology>, and <kenmore.technology> domain name are registered with Godaddy LLC and that Respondent is the current registrant of the names. Godaddy LLC has verified that Respondent is bound by the Godaddy 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 May 13, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 2, 2015 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@kmart.services, postmaster@kmart.systems, postmaster@sears.technology, postmaster@kenmore.technology. Also on May 13, 2015, 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.
On June 3, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant has registered the following marks with the United States Patent and Trademark Office (“USPTO”): KMART (e.g., Reg. No. 743,912, registered Jan. 15, 1963), SEARS (e.g., Reg. No. 1,529,006, registered Mar. 7, 1989), and KENMORE (e.g., Reg. No. 517,739, registered Nov. 22, 1949). The KMART mark is used on or in connection with the sale of retail store goods and services. The SEARS mark is used on or in connection with the sale of retail store and catalog goods and services. The KENMORE mark is used on or in connection with the sale of household appliances. The <kmart.services>, <kmart.systems>, <sears.technology>, and <kenmore.technology> domain names are identical to the KMART, SEARS, and KENMORE marks, respectively, because each domain name contains the entire portion of one of the aforementioned marks and adds a new generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests. Respondent is not commonly known as the disputed domain names, nor is Respondent a licensee of Complainant. Further, Respondent has failed to actively use each of the disputed domain names.
Respondent has engaged in bad faith registration and use. Respondent has attempted to sell the disputed domain names in bad faith. Respondent also had actual knowledge of Complainant’s trademark rights at the time the disputed domain names were registered.
B. Respondent
Respondent appears to claim Complainant does not have exclusive rights to the marks incorporated into the disputed domain names.
C. Additional Submissions
Complainant submitted a reply on June 3, 2015 which reviewed each of Respondent’s claims regarding the USPTO registrations relating to the disputed domains.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.
Complainant registered the following marks with the United States Patent and trademark Office (“USPTO”): KMART (e.g., Reg. No. 743,912, registered Jan. 15, 1963), SEARS (e.g., Reg. No. 1,529,006, registered Mar. 7, 1989), and KENMORE (e.g., Reg. No. 517,739, registered Nov. 22, 1949). The KMART mark is used in connection with the sale of retail store goods and services. The SEARS mark is used in connection with the sale of retail store and catalog goods and services. The KENMORE mark is used in connection with the sale of household appliances. Registration with the USPTO is sufficient to establish rights in a trademark pursuant to Policy ¶4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant claims the <kmart.services>, <kmart.systems>, <sears.technology>, and <kenmore.technology> domain names are identical to the KMART, SEARS, and KENMORE marks, respectively. Each domain name contains one of Complainant’s marks in its entirety and merely adds a new gTLD, whether that be “.services,” “.systems,” or “.technology.” As a general rule, the addition of a gTLD to a domain name does not adequately distinguish the domain name from the mark at issue. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶4(a)(i) analysis). To hold otherwise would be to eviscerate the UDRP because trademarks do not commonly contain a gTLD. The addition of the “.services,” “.systems,” and “.technology” gTLDs are the only distinguishing factors between the disputed domain names and the KMART, SEARS, and KENMORE marks. Therefore each of the domain names are identical to the marks under Policy ¶4(a)(i).
It should be noted Respondent was sufficiently concerned enough about “confusion” to write Complainant seeking Complainant’s acquiesce to the registrations (which Complainant refused to do). Respondent specially included the right to sell the disputed domain names as part of Respondent’s effects to develop the domain names. This Panel believes this was a sub rosa attempt to sell the disputed domain names.
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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.”).
Complainant claims Respondent is not commonly known as the <kmart.services>, <kmart.systems>, <sears.technology>, and <kenmore.technology> domain names. Respondent has no licensing rights to allow him to use Complainant’s marks in domain names. “N Rahmany” is listed as the registrant of record for the <kmart.services> domain name, and “David Rahmany” is listed as the registrant of record for the <kmart.systems>, <sears.technology>, and <kenmore.technology> domain names. The record is devoid of any evidence to indicate Respondent is either commonly known as the disputed domain names. This Panel finds Respondent does not rights or legitimate interests under Policy ¶4(c)(ii). See 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).
Complainant claims Respondent’s use of the disputed domain names is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent does actively use any of the domain names. Each resolves to a “coming soon” parking page. Failure to use the domain name(s) at issue cannot give the respondent rights under Policy ¶4(c)(i) or Policy ¶4(c)(iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that failure to make an active use of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶4(c)(iii).”). Therefore, this Panel finds Respondent does not have rights under Policy ¶4(c)(i) or Policy ¶4(c)(iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent has engaged in bad faith registration and use. Respondent has offered to sell the disputed domain names for $18,000 each, which would certainly exceed Respondent’s verifiable out of pocket costs to acquire the domain names. Respondent’s attempts to justify this number were absurd. Respondent produced a single page invoice from itself which attempted to justify the $18,000 price. Such attempts by a respondent to sell the domain name(s) at issue to the complainant for a price that exceeds the respondent’s out-of-pocket costs constitutes bad faith registration and use under Policy ¶4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). It seems fairly obvious Respondent purchased the disputed domain names primary to resell them. Therefore, this Panel finds bad faith registration and use.
Complainant claims Respondent had actual knowledge of Complainant’s trademark rights under each mark. Respondent initiated contact with Complainant for the purposes of acquiring a license (or at least acquiescence) to allow Respondent to lawfully use the <kmart.services.> and <kmart.systems> domain names. Complainant also provided a copy of the cease and desist letter it sent Respondent after refusing to grant Respondent’s license request. Complainant’s rights in the SEARS and KENMORE marks significantly predate Respondent’s registration of the <sears.technology> and <kenmore.technology> domain names. Complainant’s marks are well known and it seems improbable Respondent did not know about them. This Panel is willing to infer Respondent actually knew of Complainant’s rights. This constitutes bad faith registration and use under Policy ¶4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Respondent’s failure to actively use the disputed domain names is additional evidence of bad faith under Policy ¶4(a)(iii). Respondent’s disputed domain names all merely provide a message stating, “website coming soon.” This is adequate evidence of bad faith under Policy ¶4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <kmart.services>, <kmart.systems>, <sears.technology>, and <kenmore.technology> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, June 8, 2015
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