Craftsmanclub.com + 5 more domains

The timeline behind craftsmanclub.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

How each disputed name was decided in this proceeding.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Sears Brands, LLC & Kmart of Michigan, Inc. v. Domain Administration Limited a/k/a David Halstead a/k/a DomainAdministrationLimited a/k/a William Vaughan Claim Number: FA0802001143502 PARTIES Complainant is Sears Brands, LLC (“Complainant”), represented by Paul D. McGrady of Greenberg Traurig, LLP, of Illinois, USA. Respondent is Domain Administration Limited a/k/a David Halstead a/k/a DomainAdministrationLimited a/k/a William Vaughan (“Respondent”) of New Zealand. REGISTRAR AND DISPUTED DOMAIN NAMES The domain names at issue are <craftsmanclub.com>, <searsautomotivecenter.com>, <searscataloge.com>, <searsgreatindoors.com>, <searstreadmills.com>, and <shopkmart.com> registered with Enom, Inc. PANEL The undersigned certifies that she has acted independently and impartially and that to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically February 8, 2008; the National Arbitration Forum received a hard copy of the Complaint February 11, 2008. On February 8, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <craftsmanclub.com>, <searsautomotivecenter.com>, <searscataloge.com>, and <searstreadmills.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. verified that Respondent is bound by the Enom, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy"). On February 19, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <searsgreatindoors.com> and <shopkmart.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. verified that Respondent is bound by the Enom, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with the Policy. On February 22, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 13, 2008 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@craftsmanclub.com, postmaster@searsautomotivecenter.com, postmaster@searscataloge.com, postmaster@searsgreatindoors.com, postmaster@searstreadmills.com, and postmaster@shopkmart.com> by e-mail. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On March 21, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. RELIEF SOUGHT Complainant requests that the domain names be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. The domain name that Respondent registered, <craftsmanclub.com>, is confusingly similar to Complainant’s CRAFTSMAN mark. The disputed <searscataloge.com>, <searsautomotivecenter.com>, <searsgreatindoors.com>, and <searstreadmills.com>, domain names that Respondent registered are confusingly similar to Complainant’s SEARS mark. The disputed <shopkmart.com> domain name that Respondent registered is confusingly similar to Complainant’s KMART mark. 2. Respondent has no rights to or legitimate interests in the <craftsmanclub.com>, <searsautomotivecenter.com>, <searscataloge.com>, <searsgreatindoors.com>, <searstreadmills.com>, and <shopkmart.com> domain names. 3. Respondent registered and used the <craftsmanclub.com>, <searsautomotivecenter.com>, <searscataloge.com>, <searsgreatindoors.com>, <searstreadmills.com>, and <shopkmart.com> domain names in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, Sears Brands, LLC and its affiliate Kmart of Michigan, Inc., own an extensive family of famous trademarks and service marks comprised of or featuring the CRAFTSMAN, SEARS, and/or KMART marks. Each has been registered with the United States Patent and Trademark Office. CRAFTSMAN Reg. No. 2,913,075, issued Dec. 21, 2004; SEARS Reg. No. 2,922,885 issued Feb. 1, 2005; KMART Reg. No. 3,093,223 issued May 16, 2006. Complainant has been using its marks for decades in connection with its approximatley $55 billion in annual revenues and 3,900 full-line and specialty retail stores in the United States and Canada. Respondent registered the <craftsmanclub.com> domain name July 17, 2002, the <shopkmart.com> domain name Nov. 11, 2001 and the <searscataloge.com>, <searsautomotivecenter.com>, <searstreadmills.com>, and <searsgreatindoors.com> domain names Sept. 16, 2005. The WHOIS information for each of the disputed domain names demonstrates that they were registered by the same Respondent. Respondent is currently utilizing the disputed domain names to resolve to a webpage that displays advertisements for Complainant’s competitors in order to collect pay-per-click revenue. DISCUSSION 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." Given 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 will draw such inferences as the Panel 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 Complainant to 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. Identical to and/or Confusingly Similar Complainant provided this Panel with sufficient evidence to prove Complainant’s registration with the USPTO of the three marks mentioned above. The Panel finds Complainant established rights in the CRAFTSMAN, SEARS, and KMART marks sufficient to satisfy Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”). Additionally, the Panel finds that Complainant’s rights in the CRAFTSMAN and KMART marks need not predate Respondents registration of the disputed domain names in order to satisfy Policy ¶ 4(a)(i). See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP Policy does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Javacool Software Dev., LLC v. Elbanhawy Invs., FA 836772 (Nat. Arb. Forum Jan. 2, 2007) (holding that a complainant need not show that its rights in its mark predate the respondent’s registration of the disputed domain name in order to satisfy Policy ¶ 4(a)(i)). Complainant also demonstrated that the disputed domain names are confusingly similar to the marks in which Complainant has rights. Each of the disputed domain names features one of Complainant’s three marks in its entirety and then adds a generic term or terms, which have obvious connections to the goods and services in which Complainant deals. As several other panels before it, this Panel finds that the addition of such generic terms that relate to Complainant’s business fail to differentiate the disputed domain names in any meaningful way. Moreover, the Panel finds that although each of the disputed domain names contains the generic top-level domain (“gTLD”) of “.com,” a top-level domain is required of all domain names and therefore provides absolutely no distinction for the purposes of Policy ¶ 4(a)(i). See Miller Brewing Co. v. Domain Active Pty. Ltd., FA 243606 (Nat. Arb. Forum Apr. 23, 2004) (finding that the <millerbeers.com> domain name was confusingly similar to the complainant’s MILLER mark, because “[t]he addition of a descriptive term that describes Complainant’s business to Complainant’s registered mark, does not remove the domain from the realm of confusing similarity with regard to Policy ¶ 4(a)(i).”); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). The Panel finds that Complainant satisfied Policy ¶ 4(a)(i). Rights to or Legitimate Interests The Panel finds that Complainant made a prima facie case under Policy ¶ 4(a)(ii), which has shifted the burden to Respondent to provide evidence that it has rights or legitimate interests in the disputed domain names. However, since Respondent has not responded to the Complaint, the Panel is entitled to presume Respondent lacks all rights and legitimate interests. However, in order to fully adjudicate the matter at hand, the Panel chooses to examine the record for any evidence that might show if Respondent has any rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”). The record indicates that the disputed domain names currently resolve to a website, which displays links to Complainant’s competitors in order to attain pay-per-click revenue for Respondent. The Panel finds that Respondent’s commercial use of the confusingly similar domain names is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that the respondent’s commercial use of a confusingly similar domain name suggests that the respondent lacks rights or legitimate interests in the disputed domain name); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). The record also indicates that Complainant has never granted Respondent any license, permission or authorization by which Respondent could own or use any domain name registrations incorporating Complainant’s marks. Moreover, no evidence exists in the record to suggest that Respondent has been or currently is known by any of the disputed domain names. The WHOIS pages provided by Complainant show the disputed domain names registered to either “Domain Administration Limited” and “David Halstead” or “DomainAdministrationLimited” and “William Vaughan.” None of these contact names have any relation to Complainant. The Panel finds Respondent has no rights or legitimate interests stemming from 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); 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). The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii). Registration and Use in Bad Faith The CRAFTSMAN and KMART marks are well-known in the American culture; and Complainant probably is able to show that the CRAFTSMAN and KMART marks are protected by registrations with the USPTO dating from a period that is much earlier than the dates of Respondent's registrations of the disputed domain names. However, Complainant did not provide the Panel with either allegations or documents to permit the Panel to make a ruling in that regard. Further Complainant may be able to show assignments of the marks that would accomplish the same thing. However, Complainant has not done so in this submission. The Panel finds that the ruling should be made on the basis of the parties' submission to the Panel. For that reason, the Panel finds that Complainant has failed to show that Respondent acted in bad faith in registering the <craftsmanclub.com> and <shopkmart.com> domain names pursuant to Policy ¶ 4(a)(iii) based on the record. See TB Proprietary Corp. v. Village at La Quinta Realtors, FA 416462 (Nat. Arb. Forum Mar. 28, 2005) (because the respondent’s domain name registration predated the complainant’s trademark filing date, the panel found that “there was no bad faith on the part of Respondent when registering the subject domain name”); see also Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001) (“[W]e are of the unanimous view that the trademark must predate the domain name.”). The Panel also finds that Complainant should be allowed to refile a new complaint for the <craftsmanclub.com> and <shopkmart.com> domain names if it can produce evidence of rights in the CRAFTSMAN and KMART marks, which predate Respondent's registrations. The Panel finds that the record permits a strong inference that Respondent is taking advantage of the confusing similarity between the well-known marks included in the <searscataloge.com>, <searsautomotivecenter.com>, <searstreadmills.com>, and <searsgreatindoors.com> domain names and Complainant’s SEARS mark in order to profit from the goodwill associated with the mark. Complainant claims that Respondent is using the <searscataloge.com>, <searsautomotivecenter.com>, <searstreadmills.com>, and <searsgreatindoors.com> domain names to divert Internet users to a website that displays links to Complainant’s competitors in order to attain pay-per-click revenue for Respondent. Therefore, the Panel finds that Respondent has registered and is using the <searscataloge.com>, <searsautomotivecenter.com>, <searstreadmills.com>, and <searsgreatindoors.com> domain names in bad faith pursuant to Policy ¶¶ 4(b)(iii) & (iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”). Complainant also contends, and Respondent does not deny, that Respondent must have had actual knowledge of Complainant’s SEARS mark when the disputed domain names were registered because such knowledge is reflected in the elements of the domain names themselves. Each of the disputed domain names includes a generic term or terms that have obvious connections to the goods and services in which Complainant deals. The Panel finds that Respondent’s registration of the disputed domain names with the knowledge of Complainant’s marks and business is further evidence of bad faith pursuant to Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”). The Panel finds that with regard to the <craftsmanclub.com> and <shopkmart.com> domain names, Complainant failed to meet the requirements of Policy ¶ 4(a)(iii). The Panel also finds that with regard to the <searsautomotivecenter.com>, <searscataloge.com>, <searsgreatindoors.com>, and <searstreadmills.com> domain names, Complainant satisfied Policy ¶ 4(a)(iii). DECISION Having partially established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED in part and DENIED in part. Accordingly, it is Ordered that the <craftsmanclub.com> and <shopkmart.com> domain names REMAIN with Respondent, subject to Complainant’s right to refile as to those two domain names to offer sufficient proof. It is also Ordered that the <searsautomotivecenter.com>, <searscataloge.com>, <searsgreatindoors.com>, and <searstreadmills.com> domain names be TRANSFERRED from Respondent to Complainant. Hon. Carolyn Marks Johnson, Panelist Dated: April 3, 2008. Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.