Sterling Jewelers Inc. v. Online Management
Claim Number: FA1402001542610
Complainant is Sterling Jewelers Inc. (“Complainant”), represented by John J. Cunniff of Hahn Loeser + Parks LLP, Ohio, USA. Respondent is Online Management (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwkayjewelry.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 7, 2014; the National Arbitration Forum received payment on February 7, 2014.
On February 7, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <wwwkayjewelry.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 February 12, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 4, 2014 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@wwwkayjewelry.com. Also on February 12, 2014, 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 March 7, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, Sterling Jewelers Inc., is in the business of providing jewelry and jewelry store services. Complainant is a wholly owned subsidiary of Signet Jewelers Limited and operates over 1,300 jewelry stores throughout the United States, including the nationally recognized KAY JEWELERS stores.
Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the KAY JEWELERS mark (Reg. No. 2,222,703, registered February 9, 1999); and for the KAY mark (e.g., Reg. No. 748,204, registered April 16, 1963).
Respondent’s <wwwkayjewelry.com> domain name is confusingly similar to Complainant’s KAY JEWELERS mark. Respondent has simply changed the ending of the word “jewelers” by deleting the “ers” and adding “ly”. The addition of “www” at the beginning of KAY JEWELERS fails to distinguish Respondent’s domain name from Complainant’s KAY JEWELERS mark.
Respondent has no rights or legitimate interests in respect of the <wwwkayjewelry.com> domain name. Respondent has not been commonly known by the domain name <wwwkayjewelry.com>. The domain name <wwwkayjewelry.com> resolves to a pay-per-click link farm parking page.
The webpage has a banner stating that the domain name is for sale.
Respondent registered and is using the <wwwkayjewelry.com> domain name in bad faith. The webpage has a banner stating that the domain name is for sale.
Respondent’s only use of the domain name appears to provide pay-per-click link farm parking page that is for sale.
Respondent registered the <wwwkayjewelry.com> domain name October 28, 2013.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns a USPTO registered trademark for the KAY JEWELERS mark.
Respondent is not affiliated with Complainant and had not been authorized to use the KAY JEWELERS mark in any capacity.
Respondent registered the at-issue domain name after Complainant acquired rights in KAY JEWELERS.
Respondent uses the <wwwkayjewelry.com> domain name’s website to promote the sale of the domain name and to host a pay-per-click parking page.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant demonstrates that it has rights in a mark for the purposes of the Policy by virtue of its USPTO registration for the KAY JEWELERS mark. For the purposes of Policy ¶4(a)(i), it is irrelevant that Respondent may operate outside the jurisdiction of the trademark’s registrar. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also, Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that its is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
In forming the at-issue domain name Respondent eliminates the space between the mark’s terms, changes the second term to “jewelry,” prefixes the so altered mark with “www,” and appends the top level domain name, “.com,” to the resulting string. However, the at-issue domain name is nonetheless undeniably reminiscent of Complainant’s mark. Respondent’s inclusion of the term “www” is inconsequential to a Policy ¶ 4(a)(i) analysis. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain name <wwwbankofamerica.com> is confusingly similar to the complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”). Likewise, Respondent’s variation of the word “jewelry” does not distinguish the domain name from the mark under Policy ¶ 4(a)(i) since the alteration of the mark’s second term from “jewelers” to “jewelry” is similar in sight and sound to “jewelers” as well as being suggestive of that term. See Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name was confusingly similar to the complainant’s MINNESOTA STATE LOTTERY mark under Policy ¶ 4(a)(i)). Finally, Respondent’s elimination of the space and inclusion of the mandatory top level domain name are irrelevant to Policy ¶4)a)(i) analysis. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Therefore, the Panel concludes that Respondent’s <wwwkayjewelry.com> domain name is confusingly similar to Complainant’s KAY JEWELERS mark pursuant to Policy ¶ 4(a)(i).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with affirmative evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and as discussed below there is no evidence supporting any finding pursuant to Policy 4(c) suggesting that Respondent has rights in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name identifies Respondent as “Online Management” and the record before the Panel contains no evidence that might otherwise tends to prove that Respondent is commonly known by the at-issue domain name notwithstanding the contrary WHOIS information. The Panel therefore finds that Respondent is not commonly known by the <wwwkayjewelry.com> domain name for the purposes of 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).
Respondent’s <wwwkayjewelry.com> domain name addresses a pay-per-click link farm parking page containing links such as “Zales Online Jewelry,” “Designers Jewelry,” “Kays Jewelry” and links to other third parties that compete with Complainant. The page also contains a banner stating that the <wwwkayjewelry.com> domain name is for sale. Using the confusingly similar domain name to address such a website is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”); see also, Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).
In light of the uncontroverted evidence, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below Policy ¶4(b) bad faith circumstances are present and there is additional non-Policy ¶4(b) evidence from which the Panel may independently conclude that Respondent acted in bad faith pursuant to Policy ¶4(a)(iii).
As mentioned above, Respondent’s webpage displays a banner informing visitors that the <wwwkayjewelry.com> domain name is for sale: The “DOMAIN SALE. CLICK HERE TO BUY NOW. +1 339-222-5147” banner references a domain name buying service. Respondent’s overt attempt to sell the <wwwkayjewelry.com> domain name suggests bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
As also mentioned above, Respondent’s other use of the <wwwkayjewelry.com> domain name is to host a pay-per-click link farm parking page, and that page containing links to Complainant’s competitors. Clearly, Respondent uses Complainant’s marks in the confusingly similar domain name in order to attract Internet traffic to the <wwwkayjewelry.com> website with the expectation of benefiting therefrom. Given the foregoing, it is apparent that Respondent is intentionally creating a likelihood of confusion between the at-issue domain name and Complainant’s mark regarding the source, sponsorship, affiliation, or endorsement of Respondent’s website, and doing so for commercial gain. Such use of the domain name demonstrates Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (finding that “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.’”)
Finally, Respondent is typosquatting. Typosquatting is a form of cybersquatting that relies on errors made when Internet users mistype, or misspell, or misstate an Internet destination encompassing a trademark into a browser’s address bar, or into a search engine’s input field. The typosquatter expects that a number of mistyped addresses will match the form of mistake or mistakes the typosquatter registered in a domain name and those wayward visitors will inadvertently end up on a website controlled by the typosquatter. Once a visitor lands on the typosquatter controlled website he or she may be exploited via pay-per-click links and/or otherwise. In designing the at-issue domain name Respondent removes the period, “.”, normally entered in the browser address bar between “www,” and changes “jewelers” to “jewelry.” In so doing Respondent seeks to take advantage of Internet users who are intent on visiting Complainant’s website but who, when typing Complainant’s likely URL, inadvertently omit the period after “www” and type “jewelry” rather than “jewelers.” When an Internet user makes these mistakes he or she lands on Respondent’s <wwwkayjewelry.com> website (or wherever Respondent decides to redirect the domain name). Respondent’s typosquatting further indicates Respondent’s bad faith under Policy ¶ 4(a)(iii). See Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the ‘www’ portion of [a] web-address,” and evidence that the domain name was registered and used in bad faith).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwkayjewelry.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 10, 2014
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