Northwestterritories.com

The timeline behind northwestterritories.com

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

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 v. Domain Asset Holdings Claim Number: FA0912001298052 PARTIES Complainant is Sears Brands, LLC (“Complainant”), represented by David A. Wheeler, of Greenberg Traurig, LLP, Illinois, USA. Respondent is Domain Asset Holdings (“Respondent”), Maryland, USA. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <northwestterritories.com> (hereinafter: “the Domain Name”), registered with Domaindiscover. PANEL 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. Hugues G. Richard, as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on December 9, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 9, 2009. On December 10, 2009, Domaindiscover confirmed by e-mail to the National Arbitration Forum that the Domain Name is registered with Domaindiscover and that Respondent is the current registrant of the name. Domaindiscover has verified that Respondent is bound by the Domaindiscover 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 December 11, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 31, 2009 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@northwestterritories.com by e-mail. A deficient Response was received in electronic format only on January 7, 2010. The Response was deemed deficient, pursuant to section 5 of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) by the National Arbitration Forum as it was received only in electronic copy and after the response deadline.. On January 11, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hugues G. Richard as Panelist. On January 13, 2010, Complainant submitted an additional submission to the National Arbitration Forum. Respondent submitted a response to Complainant’s additional submission on January 18, 2010. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES’ CONTENTIONS A. Complainant Complainant, Sears Brands, LLC, is the owner of an extensive family of famous trademarks and service marks comprised of elements such as the KMART Mark, as well as specific brand-related registered trademarks such as the NORTHWEST TERRITORY Mark. NORTHWEST TERRITORY products are associated with camping goods namely tents and footwear. Sears Brands, LLC and its affiliates Kmart Inc., and Sears, Roebuck & Co., are wholly-owned subsidiaries of Sears Holding Corporation. NORTHWEST TERRITORY branded products are sold and promoted throughout the Kmart stores in the United States and the NORTHWEST TERRITORY Mark is used extensively in connection with Kmart’s Internet-based product distribution channels, namely Kmart.com. The Domain Name is confusingly similar to Complainant’s NORTHWEST TERRITORY Mark as the only distinction is the “pluralization” – “ies” in place of the singular representation “y”. Respondent has no rights or legitimate interests in respect of the Domain Name, it has no trademark or other intellectual property rights to the Domain Name and Respondent’s use of the NORTHWEST TERRITORY Mark is unauthorized. Moreover, Respondent has never operated a bona fide offering of goods in conjunction with the Domain Name and is not making a protected non-commercial or fair use of the Domain Name. Respondent registered the Domain Name in bad faith. Respondent at least had constructive knowledge of the NORTHWEST TERRITORY Mark because of Complainant’s registration of the trademark with the United States Patent and Trademark Office (“USPTO”). Furthermore, Respondent had actual knowledge of the NORTHWEST TERRITORY Mark due to the obviousness of the connection between Complainant’s mark and the content featured on Respondent’s website, namely outdoors and camping products. Moreover the Registrant of the Domain Name is offering it for sale for $100,000, substantially more than its out-of-pocket costs. Respondent is also using the Domain Name in bad faith as Respondent uses the Domain Name to misdirect Internet users seeking information about Complainant’s good and services to a website that offers click-through advertising programs. B. Respondent Respondent has been in the business of buying and selling domain names for two years. Respondent asserts it received the notification of proceedings in a post office box which was not visited regularly during the holiday season and that the mail was only retrieved on December 31, 2009, late in the afternoon. Upon receipt of the Complaint, Respondent’s representative immediately contacted counsel for the Complainant by telephone and by email to request an extension of time to respond. In light of the facts presented and in the interest of reaching a fair and informed decision, Respondent requests that the Panel exercise its discretion and consider the submitted Response. Respondent’s Domain Name is a geographic term identifying a federal territory of Canada. Therefore the Domain Name has an independent meaning and is not commonly understood or perceived as a trademark and does not constitute a mere “pluralization” of Complainant’s trademark. Respondent acquired the Domain Name as part of a portfolio of domain names consisting of geographic identifiers. As with Respondent’s other domain names available for sale, the Domain Name is currently “parked” and the website associated with the Domain Name primarily includes links to travel services as a way of showing potential buyers the versatility of the Domain Name. Respondent’s practice of “parking” the Domain Name is consistent with its treatment of other domain names in its inventory and is not an illegitimate practice. Respondent’s acquisition, ownership and offering for sale of the Domain Name all constitute ordinary and legitimate activities of Respondent. Respondent asserts that it has registered and is using the Domain Name in good faith as it has not engaged in any of the behaviors associated with the bad faith use or registration of the Domain Name listed in the Policy and was not even aware of Complainant’s mark until it received the Complaint. C. Additional Submissions of Complainant Respondent’s Response is deficient and should not be considered by the Panel. Respondent cannot justify exceptional circumstances warranting an extension of time to file a Response as the Complaint was not delivered to a post office box, as the Respondent claims, but directly to Respondent’s address where a Receptionist/front desk representative signed for the FedEx delivery on December 9, 2009, at 10:52 AM. Furthermore, Respondent did not comply with section 6(a)(i)(B) of the FORUM's UDRP Supplemental Rule for seeking an extension of time as no Respondent’s representative contacted counsel for Complainant to request an extension of time. Respondent’s use of the Domain Name, coupled with the fact that the Domain Name contains Complainant’s entire mark, albeit with “pluralization”, meets the standard of confusingly similar set forth in countless UDRP decisions. Respondent failed to contest the argument that it has no rights or legitimate business interest in the Domain Name. Numerous UDRP decisions hold that the use of click-through fees on a website is not a bona fide offering of goods or services and does not constitute a legitimate non commercial or fair use of the Domain Name. Respondent’s lack of legitimacy and bona fide use is further supported by the fact that links on Respondent’s “parked” page serve to divert Internet users to competitors’ goods. Respondent also failed to provide evidence that it is commonly known by the Domain Name. Finally, Respondent’s use of the Domain Name to sell camping products or tents by linking to Kmart’s competitors websites, not only creates a likelihood of confusion, but will mislead consumers as to sponsorship, affiliation and endorsement as to the source of goods. D. Additional Submissions of Respondent Respondent justified exceptional circumstances warranting an extension of time to file a Response. The address where the Complaint was delivered is a post office box, in a Parcel Plus location. Although a representative from Parcel Plus presumably signed for the Complaint’s delivery on December 9, 2009, Respondent did not receive any notification from Parcel Plus and did not receive the package until December 31, 2009. Respondent also provides evidence of placing a telephone call on December 31, 2009 to the telephone number provided by Complainant’s counsel in the Complaint. The registration of a geographic term for particular goods or services does not render other legitimate uses of that term confusing with the registered trademark. Links to third parties websites provided at <northwestterritories.com>, some of which are sites offering camping equipment does not constitute evidence of bad faith given the common geographic meaning of the term “Northwest Territories” and the popularity of camping, hiking, and other outdoor activities in that region. The links on Respondent’s website were not selected by Respondent or by any human being, but by a computer algorithm seeking to provide sites likely to be of interest to consumers seeking information related to the terms in the Domain Name, as the domain is currently “parked”. The mere fact that Respondent has elected to utilize the domain name to generate Pay-Per-Click revenue does not amount to a conclusion that the Domain Name is used in bad faith. FINDINGS The Panel finds that Complainant has successfully established that the Domain Name is identical or confusingly similar to a Trademark or service mark in which Complainant has rights under Policy 4(a)(i), but failed to establish that Respondent has no rights or legitimate interests in respect of the Domain Name under Policy 4(a)(ii). Having reached this conclusion, the Panel declines to discuss the last element of the Policy. 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.” Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the 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. Deficient Response Before entering the discussion whether Complainant satisfied the elements required under the Policy in order to request the Domain Name to be transferred, we must deal with the issue of the deficient Response provided by Respondent. The Response was received after the Response deadline of December 31, 2009, and consequently did not comply with section 5 of the Rules. In this situation, the Panel, at its discretion, may choose whether to accept and consider this Response or not. In the present case, given the procedural nature of the breach, and the difference of opinion regarding the circumstances of the delay and the request for extension of time, the Panel decided to exercise its discretion and to consider the Response despite its lack of compliance with the Rules, as the Panel feels that it should make an informed decision based on all the relevant facts presented by the parties. Besides, the Panel would like to stress that its decision regarding this particular issue did not impact on the outcome of the dispute. Had the Panel decided not to consider the deficient Response provided by Respondent, it would have come to the exact same conclusion regarding the transfer of the Domain Name. Identical and/or Confusingly Similar Complainant asserts it owns brands of products, such as the NORTHWEST TERRITORY brand for outdoor goods, which are only offered at Complainant’s stores. Complainant contends it holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its NORTHWEST TERRITORY Mark (e.g., Reg. No. 1,770,115 issued May 11, 1993). The Panel finds Complainant has established rights under Policy ¶ 4(a)(i) in the NORTHWEST TERRITORY Mark through its trademark registrations of the mark with the USPTO. See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”). Complainant alleges the disputed Domain Name replaces the letter “y” with the letters “ies” to make the mark plural. The Panel finds the addition and removal of letters to Complainant’s mark fails to sufficiently distinguish the disputed domain name from Complainant’s mark. See 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). Furthermore, the addition of a gTLD is irrelevant under a Policy ¶ 4(a)(i) analysis. See Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel concludes that Respondent’s <northwestterritories.com> domain name is confusingly similar to Complainant’s NORTHWEST TERRITORY Mark pursuant to Policy ¶ 4(a)(i). Rights or Legitimate Interests As it has been decided on numerous occasions, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii). The burden then shifts to Respondent to show that 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 interests 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 asserts that Respondent’s website at <northwestterritories.com> features links and advertisements to goods and services unrelated to Complainant. Respondent does not deny this. However, in the present case, the elements contained in the contentious domain name are common terms as they relate to a region of Canada whose official name is the “Northwest Territories”. Given the generic nature of the terms, the Panel believes that Complainant does not have an exclusive monopoly on the terms on the Internet and finds that Respondent can establish rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields). This conclusion is also supported by the decision of the Ontario Superior Court in Black v. Molson Canada, (2002) 21 C.P.R. (4th) 52, reversing the decision of a National Arbitration Forum’s Panelist to transfer the domain name <Canadian.ca> to Molson Canada, the owner of a Canadian trademark for the term “Canadian”, with respect to beer, given the generic nature of the term. In the present case, Complainant asserts that numerous links on Respondent’s website are directly related to goods associated to Complainant’s NORTHWEST TERRITORY Mark, as they relate to camping gears. In certain circumstances, such findings could greatly diminish Respondent’s claim of legitimate interests in a domain name, even in the presence of common terms. That is not the case in the present affair given the fact that, firstly, the number of occurrences of such links in the overall context of the site is minor and, secondly, the “Northwest Territories” are a vast area of wilderness where outdoor activities are a predominant feature, which warrants the use of link relating to this element on Respondent’s website. Therefore, the Panel concludes that Respondent’s does have a legitimate interests in respect of the Domain Name pursuant to Policy ¶ 4(a)(ii). Registration and Use in Bad Faith Having found that Complainant has not satisfied Policy ¶ 4(a)(ii), the Panel declines to analyze this last element of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)). DECISION Having failed to establish the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED. Hugues G. Richard, Panelist Dated: January 22, 2010 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.