WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kohl’s Illinois, Inc v. WhoisGuard, Inc. / Stephanie Daniels

Case No. D2018-2361

1. The Parties

Complainant is Kohl’s Illinois, Inc., of Aurora, Illinois, United States of America (“United States”), represented by Fross Zelnick Lehrman & Zissu, PC, United States.

Respondent is WhoisGuard, Inc., of Panama City, Panama / Stephanie Daniels of Las Vegas, Nevada, United States.

2. The Domain Name and Registrar

The disputed domain name <kohls.host> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 16, 2018. On October 17, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 17, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 25, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 26, 2018.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the ”Policy” or ”UDRP”), 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”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 1, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 21, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 23, 2018.

The Center appointed Jeffrey Samuels as the sole panelist in this matter on December 10, 2018. 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

Founded in 1962, Complainant Kohl’s operates over 1,100 retail stores that offer moderately priced merchandise. Complainant’s net annual sales total over USD 19 billion and Complainant has engaged in extensive advertising and promotional efforts and has received substantial unsolicited media attention.

Complainant owns a number of United States trademark registrations for the mark KOHL’S (see, e.g., registration No. 1772009, registered May 18, 1993), as well as registrations in other jurisdictions.

The disputed domain name,<kohls.host>, was created in December 2017. The disputed domain name resolves to a website that is set up to look like a login page but there is no indication as to what site visitors might be logging into.

5. Parties’ Contentions

A. Complainant

Complainant alleges that the disputed domain name is identical to the KOHL’S trademark. It points out that the domain name consists of nothing more than Complainant’s registered KOHL’S mark, minus the apostrophe, and the “.host” gTLD.

Complainant further contends that Respondent has no rights or legitimate interests in the disputed domain name. Complainant asserts that there appears to be no relationship between it and Respondent that would give rise to any license, permission, or authorization by which Respondent could own or use the disputed domain name. Further, Complainant maintains that the login page on the website in issue is likely being used for some sort of phishing scam.

With respect to the issue of “bad faith” registration and use, Complainant indicates that the disputed domain name implies that users who are misled into logging into the site are doing so with the host of Complainant’s own “www.kolhs.com” website. According to Complainant, the disputed domain name appears misleadingly to refer to Complainant and its online business.

Complainant also asserts that any visitors to the disputed domain name are likely to believe, mistakenly, that the domain name is owned by, related to, or associated with Complainant, the ultimate effect of which is to cause confusion.

In further support of its contention regarding “bad faith” registration and use, Complainant notes that Respondent registered the disputed domain name through a proxy service in an attempt to conceal its true identity and used a false mailing address in the WhoIs report.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel concludes that the disputed domain name, <kohls.host>, is, for Policy purposes, identical to the KOHL’S trademark. The disputed domain name incorporates the mark in full. The deletion of the apostrophe and the addition of the generic Top-Level Domain (“gTLD”) “.host” do not avoid such determination, insofar as it is impossible to include an apostrophe in a domain name and gTLDs need not be taken into consideration when adjudging this element of the Policy.

The Panel further finds that Complainant has rights in the KOHL’S trademark, as evidenced by both its longstanding and substantial use of the mark, as well as its ownership of various trademark registrations in the United States and elsewhere.

B. Rights or Legitimate Interests

The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. The evidence indicates that Complainant never authorized or licensed Respondent to use the KOHL’S trademark or to register a domain name incorporating such mark. Moreover, the use of the disputed domain name for a phishing scheme is not a bona fide offering of goods or services. See BJ’s Wholesale Club v. Lisa Katz, Domain Protection LLC / Domain Hostmaster, Customer ID: 64382986619850 Whois Privacy Services Pty, WIPO Case No. D2015-1601.

C. Registered and Used in Bad Faith

Finally, the Panel rules that the disputed domain name was registered and is being used in bad faith. As determined above, the disputed domain name may be considered identical to that of Complainant’s KOHL’S trademark and is apparently being used in connection with a phishing scheme. That being the case, the Panel determines that Respondent, through its use of the disputed domain name, intentionally attempted to attract for commercial gain, Internet users to its site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of such site, within the meaning of paragraph 4(b)(iv) of the Policy. The likelihood of confusion is exacerbated in this case through Respondent’s use of the “.host” gTLD. Indeed, as noted by Complainant, use of the “.host” gTLD increases the likelihood that the domain name may confuse Internet users as “host”, as used by Respondent, is meant to imply that the site is operated by the host of Kohl’s website.

Further evidence of the requisite bad faith may be found based on Respondent’s use of a proxy service to register the domain name. See Chung, Mong Koo and Hyundai Motor Company v. Individual, WIPO Case No. D2005-1068 (hiding identity is evidence of bad faith).

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <kohls.host> be transferred to the Complainant.

Jeffrey Samuels
Sole Panelist
Date: December 12, 2018