Sears Brands, LLC v Zhichao Yang
Claim Number: FA1303001488276
Complainant is Sears Brands, LLC (“Complainant”), represented by Guy W. Barcelona of McAndrews, Held, and Malloy, Ltd., Illinois, USA. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <searcad.com>, <searsacrd.com>, <searscadr.com>, <searscardd.com>, <searscarf.com>, <searscatd.com>, <csearscard.com>, <sealscard.com>, <searsvard.com>, <seascreditcard.com>, <ssearscard.com>, <shearscard.com>, <searscrditcard.com>, <seearscard.com>, <comsearscard.com>, <searsolutionmaster.com>, <searsolutionscreditcard.com>, <searsolutionsmaster.com>, <searsolutionsmastercards.com>, <searsolutionsmc.com>, <searssoloutionsmastercard.com>, <searssolutinscards.com>, <searssolutionsmasercard.com>, <searssolutionsmaster.com>, <searssolutionsmastercad.com>, <searssolutionsmastercrad.com>, <searssolutionsmastercrd.com>, <searssolutionsmastrcard.com>, <searssolutionsmastrecard.com>, <searssolutionsmstercard.com>, <searssolutiosmastercard.com>, <searsssolutionscards.com>, <searsssolutionsmastercard.com>, <serssolutionscards.com>, <wwwsearssolutions.com>, <wwwsearssolutionscard.com>, <wwwsearssolutionsmastercard.com>, <searmastercardsolutions.com>, <seasmastercard.com>, <searsmastecard.com>, <searsmastercad.com>, <searsmastercar.com>, <searsmastercardsolution.com>, <searsmastercreditcard.com>, <searsmastersolutioncard.com>, <wwwsearsmastercard.com>, <shopmywayreward.com>, <shoppyourway.com>, <shopyouraway.com>, <shopyoursway.com>, <shopyourwat.com>, <shopyourwayrevards.com>, <shopyourwayrewrads.com>, <shopyourwey.com>, <shopyourwyarewards.com>, <shopyouwayreward.com>, <shpoyourway.com>, <shopyourday.com>, <searhometownstores.com>, <searshardwarestore.com>, <searhardwarestores.com>, <searoulet.com>, <searoutletstore.com>, <searsoultlet.com>, <searsoutlat.com>, <searsoutleat.com>, <searsoutles.com>, <searsoutlest.com>, <searsoutliet.com>, <searsoutlite.com>, <searsoutloet.com>, <seatsoutlet.com>, <seersoutlet.com>, <searsautlet.com>, <searspartesdirect.com>, <searspartsderect.com>, <searspartsdirecr.com>, <searspsrtsdirect.com>, <seatspartsdirect.com>, <serarspartsdirect.com>, <searsopitical.com>, <sersoptical.com>, <searscommercialpart.com>, <searscommercials.com>, <searcommercial.com>, <searcommercialparts.com>, <searscrditscore.com>, <searscreditreport.com>, <allsearcredit.com>, <searscore.com>, <searsgargedoors.com>, <searsautopart.com>, <searfinancial.com>, <searhomeimprovements.com>, <seashomeservices.com>, and <mysear.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 1, 2013; the National Arbitration Forum received payment on March 1, 2013.
On March 4, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <searcad.com>, <searsacrd.com>, <searscadr.com>, <searscardd.com>, <searscarf.com>, <searscatd.com>, <csearscard.com>, <sealscard.com>, <searsvard.com>, <seascreditcard.com>, <ssearscard.com>, <shearscard.com>, <searscrditcard.com>, <seearscard.com>, <comsearscard.com>, <searsolutionmaster.com>, <searsolutionscreditcard.com>, <searsolutionsmaster.com>, <searsolutionsmastercards.com>, <searsolutionsmc.com>, <searssoloutionsmastercard.com>, <searssolutinscards.com>, <searssolutionsmasercard.com>, <searssolutionsmaster.com>, <searssolutionsmastercad.com>, <searssolutionsmastercrad.com>, <searssolutionsmastercrd.com>, <searssolutionsmastrcard.com>, <searssolutionsmastrecard.com>, <searssolutionsmstercard.com>, <searssolutiosmastercard.com>, <searsssolutionscards.com>, <searsssolutionsmastercard.com>, <serssolutionscards.com>, <wwwsearssolutions.com>, <wwwsearssolutionscard.com>, <wwwsearssolutionsmastercard.com>, <searmastercardsolutions.com>, <seasmastercard.com>, <searsmastecard.com>, <searsmastercad.com>, <searsmastercar.com>, <searsmastercardsolution.com>, <searsmastercreditcard.com>, <searsmastersolutioncard.com>, <wwwsearsmastercard.com>, <shopmywayreward.com>, <shoppyourway.com>, <shopyouraway.com>, <shopyoursway.com>, <shopyourwat.com>, <shopyourwayrevards.com>, <shopyourwayrewrads.com>, <shopyourwey.com>, <shopyourwyarewards.com>, <shopyouwayreward.com>, <shpoyourway.com>, <shopyourday.com>, <searhometownstores.com>, <searshardwarestore.com>, <searhardwarestores.com>, <searoulet.com>, <searoutletstore.com>, <searsoultlet.com>, <searsoutlat.com>, <searsoutleat.com>, <searsoutles.com>, <searsoutlest.com>, <searsoutliet.com>, <searsoutlite.com>, <searsoutloet.com>, <seatsoutlet.com>, <seersoutlet.com>, <searsautlet.com>, <searspartesdirect.com>, <searspartsderect.com>, <searspartsdirecr.com>, <searspsrtsdirect.com>, <seatspartsdirect.com>, <serarspartsdirect.com>, <searsopitical.com>, <sersoptical.com>, <searscommercialpart.com>, <searscommercials.com>, <searcommercial.com>, <searcommercialparts.com>, <searscrditscore.com>, <searscreditreport.com>, <allsearcredit.com>, <searscore.com>, <searsgargedoors.com>, <searsautopart.com>, <searfinancial.com>, <searhomeimprovements.com>, <seashomeservices.com>, and <mysear.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 March 4, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 25, 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@searcad.com, postmaster@searsacrd.com, postmaster@searscadr.com, postmaster@searscardd.com, postmaster@searscarf.com, postmaster@searscatd.com, postmaster@csearscard.com, postmaster@sealscard.com, postmaster@searsvard.com, postmaster@seascreditcard.com, postmaster@ssearscard.com, postmaster@shearscard.com, postmaster@searscrditcard.com, postmaster@seearscard.com, postmaster@comsearscard.com, postmaster@searsolutionmaster.com, postmaster@searsolutionscreditcard.com, postmaster@searsolutionsmaster.com, postmaster@searsolutionsmastercards.com, postmaster@searsolutionsmc.com, postmaster@searssoloutionsmastercard.com, postmaster@searssolutinscards.com, postmaster@searssolutionsmasercard.com, postmaster@searssolutionsmaster.com, postmaster@searssolutionsmastercad.com, postmaster@searssolutionsmastercrad.com, postmaster@searssolutionsmastercrd.com, postmaster@searssolutionsmastrcard.com, postmaster@searssolutionsmastrecard.com, postmaster@searssolutionsmstercard.com, postmaster@searssolutiosmastercard.com, postmaster@searsssolutionscards.com, postmaster@searsssolutionsmastercard.com, postmaster@serssolutionscards.com, postmaster@wwwsearssolutions.com, postmaster@wwwsearssolutionscard.com, postmaster@wwwsearssolutionsmastercard.com, postmaster@searmastercardsolutions.com, postmaster@seasmastercard.com, postmaster@searsmastecard.com, postmaster@searsmastercad.com, postmaster@searsmastercar.com, postmaster@searsmastercardsolution.com, postmaster@searsmastercreditcard.com, postmaster@searsmastersolutioncard.com, postmaster@wwwsearsmastercard.com, postmaster@shopmywayreward.com, postmaster@shoppyourway.com, postmaster@shopyouraway.com, postmaster@shopyoursway.com, postmaster@shopyourwat.com, postmaster@shopyourwayrevards.com, postmaster@shopyourwayrewrads.com, postmaster@shopyourwey.com, postmaster@shopyourwyarewards.com, postmaster@shopyouwayreward.com, postmaster@shpoyourway.com, postmaster@shopyourday.com, postmaster@searhometownstores.com, postmaster@searshardwarestore.com, postmaster@searhardwarestores.com, postmaster@searoulet.com, postmaster@searoutletstore.com, postmaster@searsoultlet.com, postmaster@searsoutlat.com, postmaster@searsoutleat.com, postmaster@searsoutles.com, postmaster@searsoutlest.com, postmaster@searsoutliet.com, postmaster@searsoutlite.com, postmaster@searsoutloet.com, postmaster@seatsoutlet.com, postmaster@seersoutlet.com, postmaster@searsautlet.com, postmaster@searspartesdirect.com, postmaster@searspartsderect.com, postmaster@searspartsdirecr.com, postmaster@searspsrtsdirect.com, postmaster@seatspartsdirect.com, postmaster@serarspartsdirect.com, postmaster@searsopitical.com, postmaster@sersoptical.com, postmaster@searscommercialpart.com, postmaster@searscommercials.com, postmaster@searcommercial.com, postmaster@searcommercialparts.com, postmaster@searscrditscore.com, postmaster@searscreditreport.com, postmaster@allsearcredit.com, postmaster@searscore.com, postmaster@searsgargedoors.com, postmaster@searsautopart.com, postmaster@searfinancial.com, postmaster@searhomeimprovements.com, postmaster@seashomeservices.com, postmaster@mysear.com. Also on March 4, 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 April 1, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
(a) Complainant is the owner of a family of trademarks incorporating SEARS and SHOP YOUR WAY which it uses for providing a wide variety of goods and services.
(b) Respondent has registered 96 domain names more particularly set out above consisting of misspellings and variations of Complainant’s trademarks, including SEARS® , SEARS CARD, SEARS SOLUTIONS®,SHOPYOURWAY® , SHOPYOURWAY REWARDS® , SEARS HOMETOWNSTORE® , SEARS OUTLET™ , SEARS HARDWARE STORE™ ,SEARS PARTS DIRECT™ , SEARS COMMERCIAL™ and SEARS COMMERCIAL PARTS™ marks.
(c) The domain names resolve to web pages providing links to third-party websites, presumably for the purpose of receiving referral fees.
(d) In addition, the multitude of domains registered overwhelmingly consist of
misspellings of legitimate SEARS marks, which amounts to “typosquatting.”
(e) Respondent has no rights or legitimate interest in any of the disputed domain names.
(f)The disputed domain names were registered and have been used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company involved in providing a wide range of goods and services and is a famous company that has been in business for many years.
2. Complainant has trademark rights in a range of trademarks and in particular the SEARS® , SEARS CARD, SEARS SOLUTIONS®,SHOPYOURWAY® , SHOPYOURWAY REWARDS® , SEARS HOMETOWNSTORE® , SEARS OUTLET™ , SEARS HARDWARE STORE™ , SEARS PARTS DIRECT™ , SEARS COMMERCIAL™ and SEARS COMMERCIAL PARTS™ marks. As an example of the trademarks where SEARS is the predominant element of the trademark, Complainant is the owner of the trademark registered No 1, 529, 006 , registered on March 3, 1989 with the United States Patent and Trademark Office (“USPTO”) for SEARS. As an example of the trademarks where SHOP YOUR WAY is the predominant element of the trademark, Complainant is the owner of the trademark registered No 3, 843,975, registered on September 7, 2010 with the USPTO for SHOP YOUR WAY.
3. Respondent registered the disputed domain names between July and December 2012 and they were updated on December 19, 2012.
4. The disputed domain names are all based on one or other of Complainant’s trademarks and include typosquatted versions of those marks and added generic words, some of which are themselves misspelt.
5. The disputed domain names lead to websites providing links to third party websites offering a wide variety of goods and services including goods and services in competition with those of Complainant and presumably for the purpose of enabling Respondent to receive referral fees.
6. Respondent has been shown to be a serial offender in registering domain names based on well-known trademarks without permission and linking them to websites promoting goods and services other than those of Complainant.
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 also finds that registration of the SEARS and the SHOP YOUR WAY marks with the USPTO satisfies Complainant’s burden of proving its trademark rights, regardless of where Respondent resides. 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)); 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).
The second question that arises is whether the disputed domain names are identical or confusingly similar to one or more of Complainant’s trademarks.
The Panel finds that of the disputed domain names, the following are confusingly similar to one or more of the SEARS marks: <searcad.com>, <searsacrd.com>, <searscadr.com>, <searscardd.com>,
<searscarf.com>, <searscatd.com>, <csearscard.com>, <sealscard.com>,
<searsvard.com>, <seascreditcard.com>, <ssearscard.com>,
<shearscard.com>, <searscrditcard.com>, <seearscard.com>,
<comsearscard.com>, <searsolutionmaster.com>,
<searsolutionscreditcard.com>, <searsolutionsmaster.com>,
<searsolutionsmastercards.com>, <searsolutionsmc.com>,
<searssoloutionsmastercard.com>, <searssolutinscards.com>,
<searssolutionsmasercard.com>, <searssolutionsmaster.com>,
<searssolutionsmastercad.com>, <searssolutionsmastercrad.com>,
<searssolutionsmastercrd.com>, <searssolutionsmastrcard.com>,
<searssolutionsmastrecard.com>, <searssolutionsmstercard.com>,
<searssolutiosmastercard.com>, <searsssolutionscards.com>,
<searsssolutionsmastercard.com>, <serssolutionscards.com>,
<wwwsearssolutions.com>, <wwwsearssolutionscard.com>,
<wwwsearssolutionsmastercard.com>, <searmastercardsolutions.com>,
<seasmastercard.com>, <searsmastecard.com>, <searsmastercad.com>,41
<searsmastercar.com>, <searsmastercardsolution.com>,
<searsmastercreditcard.com>, <searsmastersolutioncard.com>,
<wwwsearsmastercard.com>, <searhometownstores.com>,
<searshardwarestore.com>, <searhardwarestores.com>, <searoulet.com>,
<searoutletstore.com>, <searsoultlet.com>, <searsoutlat.com>,
<searsoutleat.com>, <searsoutles.com>, <searsoutlest.com>,
<searsoutliet.com>, <searsoutlite.com>, <searsoutloet.com>,59
<seatsoutlet.com>, <seersoutlet.com>, <searsautlet.com>,
<searspartesdirect.com>, <searspartsderect.com>, <searspartsdirecr.com>,
<searspsrtsdirect.com>, <seatspartsdirect.com>, <serarspartsdirect.com>,
<searsopitical.com>, <sersoptical.com>, <searscommercialpart.com>,
<searscommercials.com>, <searcommercial.com>,
<searcommercialparts.com>, <searscrditscore.com>,
<searscreditreport.com>, <allsearcredit.com>, <searscore.com>,
<searsgargedoors.com>, <searsautopart.com>, <searfinancial.com>, <searhomeimprovements.com>, <seashomeservices.com>, and <mysear.com> (“the SEARS disputed domain names”.).
That is so because each of the SEARS disputed domain names incorporates the trademark SEARS, a misspelling of the trademark SEARS or another trademark in the SEARS marks, with in some cases the addition of a generic word or the misspelling of one or more of such words that would be taken to be the generic word itself, in three cases the addition of the letters “www” and in one case the addition of the word “my” to a misspelling of the trademark SEARS.
The Panel also finds that of the disputed domain names, the following are confusingly similar to one or more of the SHOP YOUR WAY marks : <shopmywayreward.com>,
<shoppyourway.com>, <shopyouraway.com>, <shopyoursway.com>,
<shopyourwat.com>, <shopyourwayrevards.com>,
<shopyourwayrewrads.com>, <shopyourwey.com>,
<shopyourwyarewards.com>, <shopyouwayreward.com>,
<shpoyourway.com> and <shopyourday.com>.
That is so because each of the SHOP YOUR WAY disputed domain names incorporate the SHOP YOUR WAY trademark or a misspelling of the SHOP YOUR WAY trademark or another trademark in the SHOP YOUR WAY marks, with in some cases the addition of a generic word or the misspelling of one or more of such words that would be taken to be the generic word itself.
In addition to the foregoing considerations , the domain names are also confusingly similar to others of Complainant’s trademarks , of which there is also evidence which the Panel accepts, namely SEARS CARD, SEARS SOLUTIONS®, SHOPYOURWAY REWARDS® , SEARS HOMETOWNSTORE® , SEARS OUTLET™ , SEARS HARDWARE STORE™ , SEARS PARTS DIRECT™ , SEARS COMMERCIAL™ and SEARS COMMERCIAL PARTS™ .
The disputed domain names are therefore confusingly similar to the respective mark because the domain names are not sufficiently distinguished from the corresponding mark. The misspellings, the addition of generic terms, such as “card”, “solutions”, “master”, “direct”, “outlet” and “home improvements” and the addition of the generic top-level domain (“gTLD”) “.com” are insufficient to distinguish the disputed domain names from the respective mark. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks) ; see also Marie Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters "www" are not distinct in the "Internet world" and thus the respondent 's <wwwmarieclaire.com> domain name is confusingly similar to the complainant's MARIE CLAIRE trademark). These decisions were also cited in Capital One Financial Corp. v. Zhichao Yang: FA1211001473336 (Nat. Arb. Forum, Jan 9, 2013).
Having examined each of them, the Panel finds that the disputed domain names are therefore confusingly similar to the trademarks in the manner described.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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); 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s SEARS and SHOP YOUR WAY trademarks and to use them in its domain names, adding only the generic words referred to above, thus leaving the internet user with the impression that the domain names are associated with Complainant and relate to services offered by Complainant , thus enhancing the confusing similarity between the domain names and the trademarks;
(b) Respondent has then used the domain names to create links to third party websites offering a wide variety of goods and services including goods and services in competition with those of Complainant and presumably for the purpose of receiving referral fees;
(c) the multitude of the disputed domain names overwhelmingly consists of
misspellings of legitimate SEARS and SHOP YOUR WAY marks that constitute “typosquatting”;
(d) Respondent has engaged in these activities without the consent or approval of Complainant and Respondent is not a licensee of Complainant;
(e) Complainant claims that there is no evidence that suggests that Respondent is commonly known by any of the domain names. The Panel notes that the WHOIS information lists “Zhichao Yang” as the registrant of the domain names. The Panel concludes that Respondent is therefore not commonly known by the disputed domain names under Policy ¶ 4(c)(ii) because there is no evidence suggesting otherwise. 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).
(f) The above findings have long been regarded as not giving rise to a right or legitimate interest in a domain name: See Wells Fargo & Company v. Zhicha Yang, FA1212001477756 (Nat. Arb. Forum Feb. 7, 2013) (finding (1) Zhichao Yang is not commonly known by the disputed domains, and (2) that Zhichao Yang’s websites provide links to third-party websites for click-through fees which does not create independent rights or legitimate interests in the disputed domains); Capital One Financial Corp. v. Zhichao Yang, FA1211001473336 (Nat. Arb. Forum January 9, 2013) (same); State Farm Mutual Automobile Insurance Company v. Zhichao Yang, FA1209001461251 (Nat. Arb. Forum October 16, 2012) (same); Nationstar MortgagLLC v. Zhichao Yang, FA1206001450754 (Nat. Arb. Forum October 10, 2012) (same); Redcats USA v. Zhichao Yang, FA1209001462454 (Nat. Arb. Forum October 10, 2012).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, as Complainant submits and as the record shows, the Respondent is a serial typosquatter who registers domain names in circumstances where it can only be concluded that they have been registered in bad faith in order to mislead consumers into believing they have reached a legitimate site. Thus it has been said of the Respondent that “Respondent has engaged in a pattern of bad faith registration as evidenced by several UDRP proceedings in which the domain names were transferred to the respective complainants.” See Wells Fargo & Company v. Zhichao Yang, FA1212001477756 (Nat. Arb. Forum Feb. 7, 2013). Moreover, there have been at least 5 separate occasions in recent times where the Respondent has been found to have registered domain names in bad faith using slight misspellings of trademarks and legitimate websites. See, e.g.: Wells Fargo & Company v. Zhichao Yang, FA1212001477756 (Nat. Arb. Forum,Feb. 7, 2013) (finding Zhichao Yang registration of <wellfardo.com>,<wellfargocard.com> and 29 other domains confusingly similar to the complainant’s WELLS FARGO mark);Capital One Financial Corp. v. Zhichao Yang, FA1211001473336 (Nat. Arb.Forum January 9, 2013) (finding Zhichao Yang’s registration of <captaone.com>, <capitlonecard.com> and 28 other domains confusingly similar to the complainant’s CAPTIAL ONE mark); State Farm Mutual Automobile Insurance Company v. Zhichao Yang,FA1209001461251 (Nat. Arb. Forum October 16, 2012) (finding Zhichao Yang’s registration of <wwwstatefarms.com> confusingly similar to the complainant’s STATE FARM mark); Nationstar Mortgage LLC v. Zhichao Yang, FA1206001450754 (Nat. Arb. Forum, October 10, 2012) (finding Zhichao Yang’s registration of <nationstartg.com>, <nationstarmortage.com> and 8 other domains confusing similar to the complainant’s NATIONSTAR mark); and Redcats USA v. Zhichao Yang, FA1209001462454 (Nat. Arb. Forum October 10, 2012) (finding Zhichao Yang’s registration of <womanwithin.co> confusingly similar to the complainant’s WOMAN WITHIN mark). The present proceeding again shows that Respondent is a serial typosquatter as the evidence is consistent only with that conclusion.
Secondly, it is clear from the evidence that Respondent has taken Complainant’s trademarks and introduced typographic errors, generic terms and even misspellings of generic words to mislead Complainant’s customers into believing the domain name and corresponding websites are associated with Complainant. Most of Respondent’s sites have links under a “Related Searches” title for various terms. Following those links, the term provided is searched within the website’s search engine. Complainant argues and the panel agrees that registering a confusingly similar domain name to provide a commercial search engine confuses Complainant’s customers and disrupts Complainant’s business. This action has been found to constitute bad faith. See Capital One Financial Corp. v. Zhichao
Yang, FA1211001473336 (Nat. Arb. Forum January 9, 2013) (finding “the use of a disputed domain name to operate commercial search engines constitutes a bad faith disruption of a complainant’s business.”); Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Thirdly, many of the search results obtained by visiting Respondent’s sites and using the search facilities provided, lead the user to competitors of Complainant. The example given by Complainant is the domain <searscadr.com> that provides a link to “Pay Credit Card Online.” Upon clicking on “Pay Credit Card Online,” the user is directed to multiple links for credit cards, none of which are sponsored by Complainant, which has been found to constitute bad faith. See H-D Michigan Inc.v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that where the disputed domain name resolved to a website that listed links to the complainant’s competitors, such use provided evidence of the respondent’s intent to disrupt the complainant’s business and showed the respondent’s bad faith).
Fourthly, as Complainant submits, Respondent’s domain names and the websites it has built to which the domain names resolve, are not authorized, endorsed, sponsored, or affiliate with Complainant: The Caravan Club v. Mrgsale, NAF Claim 95314 (“Registration of a well-known trademark by a party with no connection to the owner of the trademark and no authorization and no legitimate purpose to utilize the mark reveals bad faith”).
Fifthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using Complainant’s trademarks and in view of the conduct that Respondent engaged in when using the domain names, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <searcad.com>, <searsacrd.com>, <searscadr.com>, <searscardd.com>, <searscarf.com>, <searscatd.com>, <csearscard.com>, <sealscard.com>, <searsvard.com>, <seascreditcard.com>, <ssearscard.com>, <shearscard.com>, <searscrditcard.com>, <seearscard.com>, <comsearscard.com>, <searsolutionmaster.com>, <searsolutionscreditcard.com>, <searsolutionsmaster.com>, <searsolutionsmastercards.com>, <searsolutionsmc.com>, <searssoloutionsmastercard.com>, <searssolutinscards.com>, <searssolutionsmasercard.com>, <searssolutionsmaster.com>, <searssolutionsmastercad.com>, <searssolutionsmastercrad.com>, <searssolutionsmastercrd.com>, <searssolutionsmastrcard.com>, <searssolutionsmastrecard.com>, <searssolutionsmstercard.com>, <searssolutiosmastercard.com>, <searsssolutionscards.com>, <searsssolutionsmastercard.com>, <serssolutionscards.com>, <wwwsearssolutions.com>, <wwwsearssolutionscard.com>, <wwwsearssolutionsmastercard.com>, <searmastercardsolutions.com>, <seasmastercard.com>, <searsmastecard.com>, <searsmastercad.com>, <searsmastercar.com>, <searsmastercardsolution.com>, <searsmastercreditcard.com>, <searsmastersolutioncard.com>, <wwwsearsmastercard.com>, <shopmywayreward.com>, <shoppyourway.com>, <shopyouraway.com>, <shopyoursway.com>, <shopyourwat.com>, <shopyourwayrevards.com>, <shopyourwayrewrads.com>, <shopyourwey.com>, <shopyourwyarewards.com>, <shopyouwayreward.com>, <shpoyourway.com>, <shopyourday.com>, <searhometownstores.com>, <searshardwarestore.com>, <searhardwarestores.com>, <searoulet.com>, <searoutletstore.com>, <searsoultlet.com>, <searsoutlat.com>, <searsoutleat.com>, <searsoutles.com>, <searsoutlest.com>, <searsoutliet.com>, <searsoutlite.com>, <searsoutloet.com>, <seatsoutlet.com>, <seersoutlet.com>, <searsautlet.com>, <searspartesdirect.com>, <searspartsderect.com>, <searspartsdirecr.com>, <searspsrtsdirect.com>, <seatspartsdirect.com>, <serarspartsdirect.com>, <searsopitical.com>, <sersoptical.com>, <searscommercialpart.com>, <searscommercials.com>, <searcommercial.com>, <searcommercialparts.com>, <searscrditscore.com>, <searscreditreport.com>, <allsearcredit.com>, <searscore.com>, <searsgargedoors.com>, <searsautopart.com>, <searfinancial.com>, <searhomeimprovements.com>, <seashomeservices.com>, and <mysear.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 8, 2013
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