Kmart of Michigan, Inc. v. WhoisGuard Protected c/o WhoisGuard
Claim Number: FA0509000569042
Complainant is Kmart of Michigan, Inc. (“Complainant”), represented by Paul D. McGrady, of Greenberg Traurig, LLP, 77 West Wacker Drive, Suite 2500, Chicago, IL 60601. Respondent is WhoisGuard Protected c/o WhoisGuard (“Respondent”), 8939 S. Sepulveda Blvd., Westchester, CA 90045.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <kmartpromo.com>, registered with Enom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 29, 2005; the National Arbitration Forum received a hard copy of the Complaint on September 30, 2005.
On September 30, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <kmartpromo.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 4, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 24, 2005 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@kmartpromo.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 31, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary 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." 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 makes the following assertions:
1. Respondent’s <kmartpromo.com> domain name is confusingly similar to Complainant’s KMART mark.
2. Respondent does not have any rights or legitimate interests in the <kmartpromo.com> domain name.
3. Respondent registered and used the <kmartpromo.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Kmart of Michigan, Inc., has been in business since 1999. With more than 133,000 employees, Complainant is one of the oldest and largest retailers in the United States, first topping the $1 billion mark in annual sales in 1966. Complainant first used the KMART mark in 1966, and it currently holds many registration of the KMART and KMART (and design) marks with the U.S. Patent and Trademark Office (“USPTO”), including, inter alia, registration numbers 743,912, 783,902, 799,941, 791,329, and 787,715 renewed on October 26, 2002, July 17, 1985, October 16, 1985, June 14, 1985, and April 10, 1985, respectively.
Respondent, WhoisGuard Protected c/o WhoisGuard, registered the <kmartpromo.com> domain name on June 17, 2005. The website associated with the disputed domain name solicits personal information (i.e. first name, last name, street address, city, country, email address, and age) from the Internet user for a sweepstakes. Entitled “Homepage Sweepstakes,” the website offers a “2006 Lexus LX 470 Sport Utility Vehicle.” In addition, the website at the <kmartpromo.com> domain name displays the header from Complainant’s corporate website, including Complainant’s KMART word and design marks.
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."
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.”).
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.
The Panel finds that Complainant has established rights in
its mark 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 establish
Complainant's rights in the BLIZZARD mark.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
The Panel holds that Respondent’s <kmartpromo.com>
domain name is confusingly similar to Complainant’s KMART mark. Adding the term “promo,” which is common
shorthand for “promotions,” does not significantly distinguish the domain name
from the mark. See Am. Online, Inc.
v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003)
(finding that the respondent’s domain names, which incorporated the complainant’s entire mark and merely added the
descriptive terms “traffic school,” “defensive driving,” and “driver
improvement” did not add any distinctive features capable of overcoming a claim
of confusing similarity); see also Pfizer, Inc. v. Suger,
D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name
incorporates the VIAGRA mark in its entirety, and deviates only by the addition
of the word “bomb,” the domain name is rendered confusingly similar to the
complainant’s mark).
Respondent is appropriating Complainant’s mark and the look
and feel of Complainant’s corporate web page, including the prominent use of
Complainant’s word and design marks, to acquire personal information from
Internet users. The Panel finds that
Respondent is attempting to deceive Internet users to collect their personal
information, which is not a bona fide offering of a good or service
pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant
to Policy ¶ 4(c)(iii). See Juno
Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004)
(finding that using a domain name to redirect “Internet users to a website that
imitates Complainant’s billing website, and is used to fraudulently acquire personal
information from Complainant’s clients,” is neither a bona fide offering
of goods or services nor a legitimate noncommercial or fair use); see also
HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004)
(finding that a domain name that “is confusingly similar to Complainant’s mark,
redirects Internet users to a website that imitates Complainant’s website, and
is used to acquire personal information from Complainant’s potential associates
fraudulently” does not fall within the parameters of Policy ¶¶ 4(c)(i) or
(iii)).
There is nothing in the record, including the WHOIS
registration information, which indicates that Respondent is commonly known as
the disputed domain name. Complainant
has not licensed Respondent to use the KMART mark. Therefore, the Panel finds that Respondent is not commonly known
by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also Gallup, Inc. v. Amish Country
Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the
respondent does not have rights in a domain name when the respondent is not
known by the mark).
Respondent has appropriated Complainant’s KMART mark to
deceive Internet users to the source of the <kmartpromo.com>
domain name. The Panel finds that
Respondent has evidenced bad faith registration and use by passing itself off
as Complainant to take advantage of Complainant’s customers. See Vivendi Universal Games v. Ballard,
FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (finding that where the complainant’s mark was appropriated at
registration, and a copy of the complainant’s website was used at the domain
name in order to facilitate the interception of the complainant’s customer’s
account information, the respondent’s behavior evidenced bad faith use and
registration of the domain name); see also Am. Int’l Group,
Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the
disputed domain name was registered and used in bad faith where the respondent
hosted a website that “duplicated Complainant’s mark and logo, giving every
appearance of being associated or affiliated with Complainant’s
business . . . to perpetrate a fraud upon individual
shareholders who respected the goodwill surrounding the AIG mark”).
The Panel finds that Respondent is also trying to collect
personal information from Complainant’s customers, which is evidence of bad
faith. See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar.
29, 2004) (“The domain name <billing-juno.com> was registered and used in
bad faith by using the name for fraudulent purposes.”); see also Juno Online
Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (finding that
using a domain name that “is confusingly similar to Complainant’s mark,
redirects Internet users to a website that imitates Complainant’s billing
website, and is used to fraudulently acquire personal information from
Complainant’s clients” is evidence of bad faith registration and use)
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kmartpromo.com> domain name be TRANSFERRED from Respondent to Complainant.
James A, Crary, Panelist
Dated: November 11, 2005
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