WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kohl’s Inc. v. WhoisGuard, Inc. / Robert Amandin
Case No. D2019-0891
1. The Parties
The Complainant is Kohl’s Inc. of United States of America (“United States”), represented by Fross Zelnick Lehrman & Zissu, PC, United States.
The Respondent is WhoisGuard, Inc. of Panama / Robert Amandin of Italy.
2. The Domain Name and Registrar
The disputed domain name <kohls.icu> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2019. On April 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 23, 2019, 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 the Complainant on April 29, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 1, 2019.
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 the Respondent of the Complaint, and the proceedings commenced on May 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 23, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 24, 2019.
The Center appointed Alistair Payne as the sole panelist in this matter on June 3, 2019. 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 has operated since 1962 as a retailer of moderately priced apparel, shoes, accessories and beauty and home products and is now one of the largest stores by retail sales in the United States. It operates more than 1,150 retail stores and an ecommerce website at “www.kohls.com” and in 2018 its net annual sales were over USD 19 billion. It owns various trade mark registrations in the United States and elsewhere in the world including, in particular, United States trade mark registration number 1772009 registered on May 18, 1993 for the word mark KOHL’S.
The disputed domain name was registered on January 2, 2019 and resolves to a parked website with pay-per-click (“PPC”) links.
5. Parties’ Contentions
The Complainant submits that as a result of very substantial use of its KOHL’s mark which has included substantial advertising and promotion on social media and unsolicited media attention in well-known publications including Cosmopolitan, Good Housekeeping and Marie Claire magazines, its trade mark has achieved widespread recognition and has become famous and has built up an enormous goodwill.
The Complainant submits that, apart from the apostrophe, the disputed domain name incorporates its trade mark in its entirety and as a result the disputed domain name is identical or confusingly similar to the Complainant’s trade mark.
The Complainant submits that there has never been a relationship between it and the Respondent that would give rise to any license, permission or authorization for the Respondent to register the disputed domain name or to use the KOHL’S mark in a domain name, at a website, or for any other purpose.
The Complainant notes that registration of the disputed domain name occurred long after the Complainant had made extensive use of the KOHL’S mark and after the Complainant had obtained registrations for its trade marks in various countries around the world. It submits that the Respondent’s only use of the disputed domain name is in connection with a parked website provided by a domain name registrar and that such use does not establish any right or legitimate interest in the disputed domain name.
On January 17, 2019, the Complainant notes that its counsel sent a letter to the Respondent concerning its unlawful registration of the disputed domain name, demanding that the Respondent should transfer the disputed domain name to the Complainant but that the Respondent never responded to the letter.
The Complainant submits that in view of the prior registration of the KOHL’S mark by the Complainant, the tremendous marketplace success of KOHL’S products, and the fact that the disputed domain name is so obviously connected with the Complainant’s well-known mark, the Respondent’s bad faith in registering the disputed domain name <kohls.icu> can be presumed. It says further that the mere holding by the Respondent of the disputed domain name is itself bad faith use in view of the degree of renown attaching to the KOHL’S mark and the absence of legitimate use by the Respondent. The Complainant submits that this amounts to a passive holding of the disputed domain name by the Respondent as described in Telstra Communications v. Nuclear Marshmallows, WIPO Case No. D2000-0003. It also says that the Respondent’s use of a privacy protection service is suggestive of bad faith. The Complainant says that where, as in this case, the disputed domain name is identical to the Complainant’s mark that this suggests that a motive for using a domain privacy service was to increase the difficulty for a trade mark owner of identifying the registrant, of assessing the merits of a legal claim or of a Policy complaint or of contacting the registrant, which does not reflect good faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns registered trade mark rights in its KOHL’S mark and in particular United States trade mark registration number 1772009, registered on May 18, 1993 for the word mark KOHL’S. The disputed domain name wholly incorporates the KOHL’s mark with the exception of the apostrophe before the letter “s”. This omission makes no substantive difference to the level of similarity between the disputed domain name and the Complainant’s mark. As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark registration for KOHL’S and therefore the Complaint succeeds under the first element of the Policy.
B. Rights or Legitimate Interests
The Complainant has submitted that there has never been a relationship between it and the Respondent that would give rise to any license, permission or authorization for the Respondent to register the disputed domain name, or to use the KOHL’S mark in a domain name, at a website, or for any other purpose.
In circumstances that the Complainant has been using its KOHL’S mark since 1962 in the context of a very successful United States based retail business and first registered its KOHL’S mark in 1993, it is clear that the Respondent, who registered the disputed domain name only in January 2019, did so long after the Complainant had made extensive use of its mark and had registered its mark both in the United States and in various other jurisdictions. The Panel notes that there is no evidence to suggest that the Respondent has used the disputed domain name itself other than in relation to a generic parked website with PPC links.
On January 17, 2019, the Complainant’s counsel sent a letter to the Respondent concerning its unlawful registration of the disputed domain name, demanding that the Respondent should transfer the disputed domain name to the Complainant, but that the Respondent never responded to the letter.
In all of these circumstances the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. As the Respondent has failed to rebut this case then the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and the Complaint succeeds under the second element of the Policy.
C. Registered and Used in Bad Faith
The disputed domain name was only registered in January 2019. By that time the Complainant had developed a very substantial USD 19 billion retail consumer focused business in the United States in connection with its KOHL’S mark and there is evidence that it had also developed an on-line social media presence and garnered publicity in various magazines with a readership both within and outside the United States. In view of the degree of reputation attaching to the Complainant’s KOHL’S mark the Panel finds it more likely than not that the Respondent, although based in Italy, was well aware of the Complainant’s mark and business when it registered the disputed domain name in 2019.
The disputed domain name appears to have always been used to resolve to a domain name registrar’s pay-per-click parking site and there is no other evidence to suggest that it has been used for a bona fide purpose by the Respondent. Under paragraph 4(b)(iv) of the Policy using a domain name intentionally to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the web site or location, or of a product or service on the web site or location, amounts to evidence of registration and use in bad faith for the purposes of this section of the Policy.
In this case, it appears that the Respondent has registered and used the disputed domain name, incorporating the Complainant’s extremely well reputed mark, in order to divert Internet users to resolve to a pay-per-click parking page at the disputed domain name from which it more likely than not gains commercially. This amounts to registration and use of the disputed domain name in bad faith. The Panel’s view in this regard is only reinforced by the Respondent’s use of a privacy service to try to mask its identity and its failure to respond to the Complainant’s counsel’s cease and desist letter.
In the alternative, the Panel notes that the Complainant has suggested that the Respondent is making a passive holding of the disputed domain name. As noted at section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.
In this case, it seems that the Respondent has used the disputed domain name for a parked page with PPC links and in view of the above, the Panel considers that it is not necessary to discuss the passive holding doctrine, as this case would fall under paragraph 4(b)(iv) of the Policy. Taking into account the Complainant’s substantial business and the high level of distinctiveness of the KOHL’S word mark, the use by the Respondent for a parking site with PPC links, the Respondent’s use of a privacy service to conceal its real identity, the Panel has no difficulty in finding registration and use in bad faith.
As a consequence, the Panel finds that the disputed domain name has been registered and used in bad faith and the Complaint also succeeds under this element of the Policy.
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.icu> be transferred to the Complainant.
Date: June 14, 2019