WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sears Brands, LLC v. Sidney Sivers/Bluecitymaps, Inc.
Case No. D2008-0188
1. The Parties
The Complainant is Sears Brands, LLC, Hoffman Estates, United States of America, represented by Bell Boyd & Lloyd LLP, United States of America.
The Respondent is Sidney Sivers/Bluecitymaps, Inc., Hamburg, Germany.
2. The Domain Name and Registrar
The disputed domain name <craftsman.mobi> is registered with Key-Systems GmbH dba domaindiscount24.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2008. On February 7, 2008, the Center transmitted by email to Key-Systems GmbH dba domaindiscount24.com a request for registrar verification in connection with the domain name at issue. On February 8, 2008, Key-Systems GmbH dba domaindiscount24.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
Upon information by United Domains AG on February 8, 2007 that the language of the Registration Agreement was German, the Center invited the Complainant on February 12, 2008 to provide the Center with either (a) an agreement with the Respondent to proceed in English or (b) a request for English to be the language of the administrative proceedings. The Complainant requested by email to the Center of February 19, 2008 that the proceedings be conducted in English pointing inter alia to the stated location of an office said to be associated with the Complainant located in Florida, United States of America.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint (with the Center’s communications in both German and English), and the proceedings commenced on February 25, 2008. The Center indicated also that it would accept a Response in either German or English, that it would endeavor to appoint a Panel familiar with both languages, and that any determination as to language of proceedings would be a matter for the appointed Panel to determine. In accordance with the Rules, paragraph 5(a), the due date for Response was March 16, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 17, 2008.
On March 17, 2008, the Respondent sent an email to the Center informing that (a) its representatives were not sufficiently proficient in English, (b) a translation of the Complaint would not be available before March 20, 2008 and (c) a Response could be submitted at the earliest by March 26, 2008. By email to the Center of March 25, 2008 Respondent alleged that it had transferred the domain name at issue to a third party on January 1, 2008. No formal Response was forthcoming.
The Center appointed Tobias Zuberbühler as the sole panelist in this matter on March 28, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a well-known department store chain and is the owner of various U.S. and international registrations for the trademark CRAFTSMAN, among others of Community Trademarks first applied for in 1996 and registered in 2000. The Complainant claims that the CRAFTSMAN trademark is famous and that it has enjoyed tremendously strong sales of respective products since its inception in the 1930s. The Complainant also offers its products under the website “www.craftsman.com”.
The Respondent registered the domain name at issue in September 2006 and has currently redirected the domain to its website “www.my-hammer.de” where it offers installation and handyman services.
5. Parties’ Contentions
The Complainant objects to the use of the disputed domain name by the Respondent and bases its Complaint on the following grounds:
1. The domain name at issue is identical with the Complainant’s trademarks.
2. The Respondent makes no legitimate non-commercial or fair use of the domain name at issue. The Complainant has no relationship with the Respondent and has never authorized the Respondent to use the Complainant’s marks or its trade name as a domain name. The Respondent has not commonly been known by the domain name and does not conduct any legitimate commercial or non-commercial business activity under the domain name.
3. The Respondent registered and uses the disputed domain name with the only purpose to divert customers to its own website for commercial gain. Accordingly, the domain name was registered and is being used in bad faith.
The Respondent did not formally reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of the Proceedings
Paragraph 11 of the Rules stipulates that the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
In the present proceedings, it shall be taken into account that the Respondent has not submitted any detailed Response, but simply indicated in its e-mail of March 25, 2008 that the domain name at issue had been transferred to a third party. In view of the Complainant’s request that the language of the proceedings be English, the Respondent’s e-mail of March 25, 2008, and for reasons of efficiency, the decision shall also be taken in English.
B. Identity of the Respondent
The Respondent claims that it has transferred the domain name at issue to a third party on January 1, 2008. The WHOIS database research submitted by the Complainant (Annex 1 to the Complaint) dates from December 19, 2007, several weeks before the Complaint was submitted on February 11, 2008, and thus could have possibly not reflected the registration details correctly at the time of submission. An independent inquiry by the Panel on April 10, 2008, however, showed that the Respondent is still the registrant of the domain name at issue. The fact that the Respondent may have sold the domain name to a third party without reflecting the sale in the WHOIS database, is not (without more) determinative of the appropriate Respondent in the present case, which remains the registrant entity as listed in the WHOIS “Sidney Sivers/Bluecitymaps, Inc.”.
C. Identical or Confusingly Similar
The domain name at issue is identical with the Complainant's CRAFTSMAN trademarks. The Complainant has thus fulfilled the requirements under paragraph 4(a)(i) of the Policy.
D. Rights or Legitimate Interests
There are no indications before the Panel of any rights or legitimate interests of the Respondent in respect of the domain name at issue. The Panel also refers to the use of the disputed domain name as explained below under the third limb of the Policy. The Complainant, having made a prima facie case which remains unrebutted, has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
E. Registered and Used in Bad Faith
By offering services competing with those of the Complainant, the Respondent has in the Panel’s view taken advantage of the Complainant’s strong reputation and the brand recognition of the Complainant’s various trademarks and is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s marks (cf. paragraph 4(b)(iv) of the Policy).
It may also reasonably be inferred that the Respondent knew about the Complainant’s trademarks and business when it registered the disputed domain name.
The Panel thus finds that the Respondent’s conduct constitutes bad faith registration and use, thus fulfilling paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <craftsman.mobi> be transferred to the Complainant.
Date: April 11, 2008