DECISION

Kmart of Michigan, Inc. v. Azra Khan

Claim Number: FA0210000127708

PARTIES

Complainant is Kmart of Michigan, Inc., Troy, MI, USA (“Complainant”) represented by Robert S. Gurwin, of Rader, Fishman & Grauer PLLC.  Respondent is Azra Khan, Rawalpindi, PAKISTAN (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <bigkmart.com>, registered with DotRegistrar.com.

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.

James A. Carmody, Esq.,  as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 7, 2002; the Forum received a hard copy of the Complaint on October 7, 2002.

On October 7, 2002, DotRegistrar.com confirmed by e-mail to the Forum that the domain name <bigkmart.com> is registered with DotRegistrar.com and that Respondent is the current registrant of the name.  DotRegistrar.com has verified that Respondent is bound by the DotRegistrar.com 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 8, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 28, 2002 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@bigkmart.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On November 19, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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 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 name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The <bigkmart.com> domain name is identical to Complainant's BIG KMART mark.

Respondent has no rights or legitimate interests in the disputed domain name.

Respondent registered and used the disputed domain name in bad faith.

B. Respondent

Respondent failed to submit a Response.

FINDINGS

Complainant has used the KMART mark since 1961 in relation to its chain of discount stores.  Complainant was one of the first retailers to offer an entire marketplace in one discount location, and inspired other discount merchandisers such as Wal-mart, Target and Kohl’s do to the same.  

In 1996, Complainant completely redesigned most of its stores in the United States.  Complainant created a pantry department selling frequently purchased consumable goods near the front of each store, and placed a new emphasis on the Children’s Clothes and Home Fashions departments.  These changes were signified by the adoption of a new trademark to identify the remodeled stores; this trademark was Complainant’s BIG KMART mark.  By 1998, Complainant had opened 1,245 BIG KMART stores.

Complainant registered its BIG KMART mark with the United States Patent and Trademark Office as Registration Number 2,288,771 on October 26, 1999.

Complainant has had a presence on the Internet since 1997 at <kmart.com>.  Complainant’s website continues to serve as a vital worldwide information and shopping channel for Complainant.  Complainant’s website received over 6 million visitor sessions and 20 million page views in the month of August 2002. 

Respondent registered the disputed domain name on April 24, 2002.  Respondent is using the disputed domain name in order to divert Internet traffic to <ownbox.com/treasure/shop.htm> where there is a website that features links to online casinos and shopping, as well as adult entertainment.  When an Internet user attempts to close this screen another website located at <digforgold.com.index.htm> pops up displaying more shopping and gambling links.  Respondent does not have a license from Complainant to use the BIG KMART mark. 

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.”

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the 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.

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 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 and/or Confusingly Similar

Complainant has established that it has rights in the BIG KMART mark through extensive use and its registration with the United States Patent and Trademark Office.

Respondent’s <bigkmart.com> domain name is identical to Complainant’s mark because it incorporates Complainant’s entire mark and merely adds the generic top-level domain “.com.”  The addition of a top-level domain does not add any distinctive qualities to the mark because it is a required feature of every domain name.  Therefore, Complainant’s mark is the dominant feature of the disputed domain name and Respondent does not overcome a Policy ¶ 4(a)(i) identical analysis.  See Entrepreneur Media, Inc. v. Smith[2002] USCA9 115; , 279 F.3d 1135, 1146 (9th Cir. Feb. 11, 2002) (“Internet users searching for a company’s [w]ebsite . . . assume, as a rule of thumb, that the domain name of a particular company will be the company name [or trademark] followed by ‘.com.’”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top-level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

When Complainant asserts a prima facie case against Respondent, the burden of proof shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  Respondent has failed to respond, therefore it is assumed that Respondent lacks rights and legitimate interests in the disputed domain name.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).

Furthermore, because Respondent has not submitted a Response, it is appropriate for the Panel to accept all reasonable allegations and inferences in the Complaint as true.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).

Respondent is using a domain name that is identical to Complainant’s mark in order to attract Internet users to a website that features links to various Internet websites, including online gambling casinos, adult entertainment and shopping.  Internet users are likely to be confused as to the source, sponsorship, and affiliation of this domain name and therefore Respondent’s activities are causing a likelihood of confusion for Respondent’s commercial gain.  This type of use is not considered to be in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks).

There is no evidence that Respondent is commonly known as BIG KMART or <bigkmart.com>.  There is no use of the mark on Respondent’s websites, and Respondent has not come forward with any facts that would prove that it is known as BIG KMART.  In light of the fame of Complainant’s mark it is necessary for Respondent to come forward with some evidence that establishes that it is commonly known by the disputed domain name.  Respondent has failed to prove that it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent is using a domain name identical to Complainant’s mark in order to divert Internet users to two different websites that feature links to various online casinos, shopping and adult websites throughout the Internet.  It can be inferred that Respondent makes a profit from the amount of Internet traffic it diverts to these websites.  Therefore, Respondent is commercially benefiting from the likelihood of confusion it has created through the use of Complainant’s mark, and Respondent’s actions evidence bad faith use pursuant to Policy ¶ 4(b)(iv).  See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).

Furthermore, based on the fame of Complainant’s mark, and the fact that Respondent chose Complainant’s mark in order to attract Internet users to its website, it can be inferred that Respondent had actual knowledge of Complainant’s rights in the BIG KMART mark when it registered the disputed domain name.  Registration of an infringing domain name despite actual knowledge of Complainant’s rights is evidence of bad faith pursuant to Policy ¶ 4(a)(iii).  See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.

Accordingly, it is Ordered that the domain name <bigkmart.com> be transferred from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated: November 22, 2002

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