DECISION

Sears, Roebuck and Co. v. John Barry

Claim Number: FA0202000105210

PARTIES

Complainant is Sears, Roebuck and Co., Hoffman Estates, IL (“Complainant”) represented by Orrin S. Shifrin, of Katten Muchin Zavis.  Respondent is John Barry, Bronx, NY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <searsrobuck.com> and <searsdepartmentstore.com>, registered with Enom, Inc.

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.

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on February 27, 2002; the Forum received a hard copy of the Complaint on February 28, 2002.

On February 28, 2002, Enom, Inc. confirmed by e-mail to the Forum that the domain names <searsrobuck.com> and <searsdepartmentstore.com> are registered with Enom, Inc. and that Respondent is the current registrant of the names.  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 March 4, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 25, 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@searsrobuck.com, postmaster@searsdepartmentstore.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 March 28, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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 names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The <searsrobuck.com> and <searsdepartmentstore.com> domain names are confusingly similar to Complainant's SEARS and ROEBUCKS mark.

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

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

B. Respondent

Respondent failed to submit a Response.

FINDINGS

Complainant has used its SEARS and ROEBUCKS marks since 1886 in relation to catalog services and department stores.  Complainant has registered the marks with the United States Patent and Trademark Office; SEARS is registration number 1,529,006 and ROEBUCKS is registration number 1,286,095.  Complainant has used the trade name “Sears, Roebuck and Co.” since the 19^th century, acquiring a large amount of goodwill and distinctiveness.

Complainant has used its SEARS mark continuously in commerce and has invested large sums of money developing and marketing its products and services under the SEARS and ROEBUCKS marks.  Complainant also owns <sears.com> and <searsroebuckandco.com>, and has used these domain names since 1992.

Respondent registered the disputed domain names on January 9, 2002.  Respondent has not developed or maintained at website at either <searsrobuck.com> or <searsdepartmentstore.com>.  The Registrant information for the two domain names listed DomainForSaleinc as the registrant, and Dom4Sale@aol.com as the only contact information.  Respondent has used the domain names to divert internet traffic to such websites as <abortionismurder.org>, a graphic anti-abortion website and <ewtn.com> a religious website.  Complainant sent Respondent a cease and desist letter on February 8, 2002.  Respondent answered by offering the domain names for sale to Complainant for $249.

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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(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.

Identical and/or Confusingly Similar

Complainant has established through continuous use and registration that it has rights in its SEARS and ROEBUCKS marks.  Furthermore, Respondent’s domain name <searsrobucks.com>  is confusingly similar to Complainant’s SEARS and ROEBUCKS marks because it incorporates the entirety of the marks and merely misspells ROEBUCKS.  The misspelling of a well-known mark with the addition of  “.com” is not considered to be sufficient to create a distinct mark capable of overcoming a claim of confusing similarity.  See State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to the Complainant’s mark “State Farm”); see also Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to Complainant’s HEWLETT-PACKARD mark); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).

Respondent’s <searsdepartmentstore.com> is confusingly similar to Complainant’s SEARS mark because it incorporates the entirety of Complainant’s mark and merely adds the generic terms “department store” to the end.  The addition of a generic term that is descriptive of Complainant’s business is not enough to overcome a claim of confusing similarity.  See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word…nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s mark “Marriott”).

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

Rights or Legitimate Interests

Respondent has failed to come forward with a Response and therefore it is presumed that Respondent has no rights or legitimate interests in the disputed domain names.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

Furthermore, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant.  See 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”).

Respondent's use of a domain name identical to Complainant's mark to divert Internet users interested in Complainant to unrelated websites is not a bona fide offering of goods or services pursuant of Policy ¶ 4(c)(i).  See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or legitimate interests where Respondent diverted Complainant’s customers to his websites); see also 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).

Furthermore, based on the fame of Complainant's SEARS and ROEBUCKS marks it would be very difficult for Respondent to show that it is commonly known by the domain names and therefore has rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii).  Any use by Respondent of the <searsrobucks.com> and <searsdepartmentstore.com> domain name, confusingly similar to Complainant's famous mark, is merely an opportunistic attempt to attract customer's via Complainant's famous mark.  See 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).

Furthermore, Respondent has not used the disputed domain names in connection with a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) because it has no website and registered the disputed domain name with the intention of selling them.  See Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “…merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”); see also Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a response to the Complaint and had made no use of the domain name in question); see also Encyclopaedia Brittanica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (finding that fair use does not apply where the domain names are misspellings of Complainant's mark).

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

Registration and Use in Bad Faith

Because of the famous and distinctive nature of Complainant's SEARS and ROEBUCKS marks, Respondent is thought to have been on notice of the existence of Complainant's mark at the time Respondent registered the infringing domain names. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constitutes bad faith).

It can be inferred based on the circumstances of Respondent’s registration that Respondent registered the disputed domain names with the intent to sell them.  The Whois information listed Respondent as “Domain4Saleinc.”  This is evidence of bad faith pursuant to Policy ¶ 4(b)(i).  See Microsoft Corp. v. Amit Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding bad faith where that Respondent registered the domain name for the purpose of selling it, as revealed by the name the Respondent chose for the registrant, “If you want this domain name, please contact me”); see also Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell the domain name at issue to Complainant was evidence of bad faith).

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 <searsrobuck.com> and <searsdepartmentstore.com>  be transferred from Respondent to Complainant.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated: April 1, 2002

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