WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sears, Roebuck and Co., v. Party Night, Inc.
Case No. D2002-0732
1. The Parties
The Complainant is Sears, Roebuck and Co., 3333 Beverly Road, Hoffman Estates, Illinois, 60179, United States of America. (hereinafter "Sears").
The Respondent is Party Night, Inc., Peter Carrington, Jan Luykenstraat 58, Amsterdam, 1071 CS, the Netherlands.
2. The Domain Name and Registrar
The Domain name in question is <searcard.com>.
The Registrar is Key-Systems, GmbH, d.b.a. domaindiscount24.com, in Bexbach, Germany.
3. Procedural History
The Complaint, dated July 30, 2002, was received by the WIPO Arbitration and Mediation Center (the "Center") on August 2, 2002, along with payment. Receipt was acknowledged by the Center on August 5, 2002. A request for verification to the Registrar, Key-Systems GmbH, was made August 5, 2002, and answered on August 8, 2002. The Center notified the Respondent by e-mail of the Complaint on August 9, 2002, at its designated Administrative Contact e-mail address and dispatched a hard copy of the Complaint by courier on August 9, 2002, which was delivered on August 12, 2002, according to the supplied DHL record. No response having been received, Notification of the Respondentís default was provided to the Respondent on August 30, 2002.
The Center has provided a check list in the usual form dated August 9, 2002, indicating that all procedural matters have been properly dealt with by the Complainant.
Notification of the Appointment of the Sole Panelist was provided on September 10, 2002, with indication that a decision was expected in 14 days, namely by September 24, 2002.
4. Factual Background
Based upon material supplied by the Complainant, the following are the uncontradicted facts.
The Complainant, Sears, is the owner of a family of dozens of "live" trademark registrations in the United States Patent and Trademark Office that incorporate the element SEARS. These include SEARS CARD (U.S. Reg. No. 2,472,234) registered September 5, 2000, based upon use since 1995 and SEARS PREMIER CARD (US Reg. No. 2, 478,456) registered on September 12, 2000, based upon use since 1999.
The Complainant registered the domain name <searscard.com> on April 22, 1999.
The Respondent registered the domain name <searcard.com> on March 7, 2002, as confirmed by the Respondentís Registrar.
The Respondentís web site "www.searcard.com" directs a browser to another web site called "http://hanky-panky-college.com", which, as its name suggests, is an "adult only" site. The home page indicates that the web site has been seen on the Howard Stern Show, and invites the user to enter. An attempt to "enter" the web site results in a stream of pop-up web pages that are difficult to shut down and which are clearly pornographic web sites or links to them. The Respondentís web site home page has nothing whatsoever to do with the Complainant and does not refer to SEARS or SEAR in any way, such as by way of discussion, critical or otherwise.
5. Partiesí Contentions
The Complainant contends that its marks are internationally well-known. The Complainant contends that the use of SEAR (without an "S" at the end) is not sufficient to avoid confusion with the many trademarks containing SEARS, with the "S". See Edmunds.com v. Ult. Search Inc., WIPO Case No. D2001-1319. The gravamen of the Complaint is that this is an instance of "typo-piracy", whereby a domain name is registered that is close enough to a well-known domain name or trademark that it will likely to be entered by a significant enough number of users to generate some traffic. The reasons for doing so may be varied. In this instance, it is alleged that those who inadvertently enter "www.searcard.com" will be taken to a pornographic site, which generates "pop-up" links, which in turn can generate some income for the referring web site.
The Complainant also alleges that the public might be misled into thinking that the pornographic web site was associated with SEARS, that the Respondent was trying to prevent SEARS from using its own marks in a domain name, and that the Respondent is a serial cyber squatter. Indeed, one decision is offered to support the latter allegation, namely NAF decision no. 114350 involving a complaint brought by NEIMAN MARCUS against the same party (The Nieman Marcus Group, Inc. v. Party Night Inc (FA0205000114350).
The Complainant offers evidence of two cease and desist letters that were sent to the Respondent and which were allegedly ignored.
The Respondent has defaulted and therefore has not offered any arguments or evidence.
6. Discussion and Findings
The Complainant must prove the classic trilogy of elements. According to paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
In a default situation, the Panel may draw such inferences as it deems appropriate (paragraph 14(b) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"). While the Complaint will not necessarily be accepted at face value in a default situation, in this instance the Complaint is carefully prepared, well reasoned and adequately documented in terms of evidence.
The Panelist finds that <searcard.com> is confusingly similar to a U.S. registered trademark, namely SEARS CARD. The Panelist accepts that SEARS and many of the family of SEARS trademarks are internationally well-known. The Panelist infers in this instance that the Respondent would have been aware of the SEARS family of trademarks, even though the Respondent is located in the Netherlands.
The Panelist finds that there is nothing on the record to indicate that the Respondent could have any possible basis of right or legitimate interest in the domain name <searcard.com>. There is clearly no critical usage, legitimate or otherwise, of the term SEAR or SEARS and the Respondentís web site has nothing to do with the business of the Complainant. The Respondentís domain name also has no apparent connection with its business or corporate name of the Respondent or its administrator.
As to bad faith, there are numerous previous decisions holding that the use of a domain merely for referral or affiliation purposes, especially to pornographic web sites, can constitute bad faith. See Geocities v. Geociities.com, WIPO Case No. D2000-0326 and Ty, Inc. v. O.Z. Names, WIPO Case No. D2000-0370. There is a well-known practice by which the referral web site owner can benefit financially from such links, even if the said owner does not actually operate the pornographic web sites to which he provides the link. This is the uncontradicted allegation in this instance. This is a clear cut instance of typo-piracy. See Dell Computer Corporation v. Clinical Evaluations, WIPO Case No. D2002-0423.
It is not necessary to consider the other allegations of bad faith, although the Complainant has provided ample evidence and documentation overall, and many useful precedents to assist the Panel.
In light of Paragraphs 4(i) of the Policy and 15 of the Rules, the Panelist finds that the Domain Name <searcard.com> is confusingly similar to one or more trademarks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered in bad faith and is being used in bad faith.The Panelist directs that the Domain Name be transferred to the Complainant.
Dated: September 23, 2002