Domain name- Domain name dispute resolution policy- Trademark- Bad faith use- Bad faith registration- Legitimate interest- Confusingly similar- Federally- registered trademark- Consumer Complaint Website- Initial Interest Confusion-Free Speech- Communicative Message- Cookie Cutter Sites.

Complainant was registrant of over twenty United States trademarks involving Sears, and Sears Roebuck.  Complainant is one of the largest retailers in the world and has been incorporated under the name “Sears, Roebuck and Co.” since 1893.  Complainant uses these marks for a myriad of goods and services, selling over 100,000 different goods and services in over 3, 000 stores world-wide.  

Respondent registered the domain name, SEARSROEBUCK.COM.  Complainant alleges that the similarity between Complainant's trademark and the domain name will result in “initial interest confusion.”  Complainant also contends that the use of an infringing domain name consisting solely of the company’s registered trademark is not protected free speech.

Held, Name Transferred to Complainant.

The Panel finds that the Domain Name is confusingly similar to Complainant’s common law mark SEARS, ROEBUCK AND CO., and to Complainant’s registered marks SEARS and ROEBUCKS.  

Prior to March 28, 2000, the date when Complainant sent a cease and desist letter to Respondent, Respondent had posted an "under construction" website. Therefore, Respondent did not use the Domain Name in connection with a bona fide offering of goods and services prior to notice of the dispute. Moreover, given the fame of Complainant’s mark, Respondent could have not had a legitimate contemplated use for offering of goods and services at the Domain Name. 

Because the Domain Name itself contains no communicative message or expression of Respondent’s right to air its negative opinions about Complainant, the Panel rejects Respondent’s free speech defence, and finds that Respondent’s use of Domain Name is not a legitimate non-commercial use of Complainant’s marks, but rather dilutes the distinctive quality of Complainant’s marks. 

Respondent has used the Domain Name to intentionally attract users to its website by creating a likelihood of confusion with Complainant’s marks to the commercial detriment of Complainant. Accordingly, the Panel finds that Respondent’s registration and use of the Domain Name to be in bad faith. 

Because the existence of Respondent’s domain names does in fact deprive multiple trademark owners from reflecting their marks in domain names, the Panel finds that the Respondent has engaged in a pattern of registering trademark-related domain names in bad faith.

Policies referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
WIPO’s Supplemental Rules for Uniform Dispute Resolution Policy, adopted 

Registration Agreements referred to

Network Solutions Service Agreement Version 5.0, effective 

Cases Referred to

Morrison & Foerster LLP v. Wick, 94 F.Supp.2d 1125, 1132-33 (D.Colo. 2000).

Lockheed Martin Corp. v. Network Solutions, Inc., 985 F.Supp. 949 (C.D.Cal. 1997).

Bally Total Fitness Holding Corp. v. Faber, No. CV 98-1278 DDP (MANx), (C.D.Cal. Dec. 29, 1998).

Brookfield Communications, Inc. v. West Coast Entertainment Corp., 
174 F.3d 1036 (9th Cir. 1999).

Panel Decisions referred to

Compagnie de Saint Gobain v. Com-Union Corp., Case No. D2000-0020 (WIPO March 14, 2000).
 

David M. Kelly, Panelist: -

1. The Parties

Complainant is Sears, Roebuck and Co., a New York corporation with its principal place of business located at 3333 Beverly Road, Hoffman Estates, Illinois 60179. Complainant is one of the largest retailers in the world.

Respondent is Hanna Law Office, located at 223 East Market, Warrensburg, 
Missouri 64093.  Respondent has never used domain names for any other purpose other than as consumer Complaint Sites. Respondent believes that allowing consumers to voice complaints about Complainant’s company/products is a fair use and legitimate interest of a trademark and the domain names. 

2. Registrar and Disputed Domain Name 

The domain name at issue is "SEARSROEBUCK.COM", registered with Network Solutions Inc. ("NSI").

3. Procedural Background

On June 23, 2000, Complainant submitted its Complaint, with the required filing fee for a single-member Panel, to the World Intellectual Property Organization ("WIPO") Arbitration and Mediation Centre (the "WIPO Centre").  

On July 4, 2000, WIPO sent a Request for Registrar Verification via email to NSI. On that same date, NSI confirmed via email to WIPO that the Domain Name is currently registered to Respondent and is in "active" status. NSI further confirmed that Respondent’s registration of the Domain Name is subject to the Uniform Domain Name Dispute Resolution Policy ("UDRP").

On July 6, 2000, WIPO issued the Notification of Complaint and Commencement of Administrative Proceeding, verifying that the Complaint satisfies the formal requirements of the UDRP, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and WIPO’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy. The Panel has independently determined and agrees with WIPO’s assessment that the Complaint is in formal compliance with the requirements of the UDRP, Rules, and Supplemental Rules.

On July 25, 2000, Respondent filed its timely Response with WIPO, and on July 
27, 2000, WIPO sent its Acknowledgment of Receipt of Response.

Additional correspondence is as follows. On August 2, 2000, Complainant submitted a letter to WIPO disputing sections of the Response. On August 15, 
2000, Complainant submitted a letter to WIPO requesting a copy of a decision in WIPO Case No. D2000-0615, in which Hanna Law Firm was the named respondent, to be forwarded to the Panel. With its August 15, 2000, letter to WIPO, Respondent objected to Complainant’s new evidence and argued the merits of the decision in Case. 

No. D2000-0615. The Panel has considered these supplemental submissions.

On August 22, 2000, WIPO sent to Complainant and Respondent a Notification of 
Appointment of Panel, appointing David M. Kelly as Panelist and scheduling 
September 5, 2000, as the date for issuance for the Panel’s decision.
 

4. Factual Background

Complainant has provided evidence of the registration of the following U.S. Trademark registrations, among them:
A.  SEARS
B.  ROEBUCKS
C. SINCE 1886 SEARS, ROEBUCK AND CO
D. SEARS COMMERCIAL ONE
E. SEARS HOMECENTRAL
F. SEARS BEST CUSTOMER
G. SBC SEARS BEST CUSTOMER
H. SEARS REWARDS

Complainant also claims common law rights to a "SEARS" family of marks, including SEARS and SEARS, ROEBUCK AND CO. (Complaint, Paragraph 12.a).

Sears, Roebuck and Co. uses these marks for myriad goods and services, selling over 100,000 different goods and services through its more than 850 full-line stores and 2,100 specialty stores located throughout the U.S. and the world, which serve over 38 million customers annually. Additionally, Complainant has over 50 million credit card holders, and has spent literally billions of dollars on advertising goods sold under its marks. In 1999 alone, Complainant spent over two billion dollars on advertising goods sold under its marks. Moreover, for over a century, Complainant’s catalogues, known the world over, prominently featured the SEARS, ROEBUCK AND CO. mark. (Complaint, Paragraph 12.b).

Respondent registered the Domain Name on April 26, 1999. 

Respondent currently operates a consumer complaint website at the Domain Name. (Response, Paragraph 4).

5. Parties’ Contentions

A. Complainant 
Respondent’s Domain Name consists solely of the Sears, Roebuck and Co. name and incorporates dominant portions of numerous of Complainant’s registered marks, including but not limited to SEARS and SINCE 1886 SEARS, ROEBUCK AND CO.  Respondent’s Domain Name is thus confusingly similar to Complainant’s registered trademarks. It is also identical to Sears, Roebuck and Co.’s common law mark, SEARS, ROEBUCK AND CO. (Complaint, Paragraph 12.f).

Due to the obvious, confusing similarity between Complainant’s marks and the 
Domain Name, many Internet users wishing to access the Complainant’s website are likely to type in "SEARSROEBUCK.COM" and may be mistakenly directed to Respondent’s website. Respondent’s Domain Name thus causes confusion among Internet users who seek Complainant’s website, and causes users to expend time and energy accessing Respondent’s website. This "initial interest confusion" has been recognized by U.S. courts as sufficient to establish a likelihood of confusion under U.S. trademark law, even where the offending website contains a disclaimer which states that the site is not affiliated with the trademark holder. (Complaint, Paragraph 12.g).

Respondent’s registration of the Domain Name has prevented Complainant from reflecting its marks in its own domain name. Evidence of Respondent’s bad faith includes that he has engaged in a pattern of registering domain names which incorporate and infringe upon the trademarks of well-known corporations and products, including: Bartles & Jaymes ("bartlesandjaymes.com", "bartlesandjaymes.net"), a line of wine products marketed and sold by E. & J. Gallo Winery; Estee Lauder ("estelauder.com"), a cosmetics firm; and Clearly Canadian ("clearlycanadian.com", "clearlycanadian.net"), a bottler and seller of bottled water. (Complaint, Paragraph 12.i).

On March 28, 2000, counsel for Complainant sent a letter to Respondent informing him that the Domain Name infringes on Complainant’s registered trademarks, and demanding that Respondent permanently cease all use of the Domain Name. At the time that the cease and desist letter was sent, Respondent’s website had no content aside from a message reading "The new website for "WWW.SEARSROEBUCK.COM" is currently under construction. Please check back soon!" Only after receiving the cease and desist letter did Respondent create a Sears, Roebuck and Co. "complaint" site at the Domain Name. And only after receiving Complainant’s cease and desist letter did Respondent register the domain name "SEARSROEBUCKSUCKS.COM". (Complaint, Paragraph 12.j)

Respondent has engaged in a pattern of retaliatory conduct with respect to other domain names he has registered. The websites corresponding to the domain names registered by Respondent which incorporate the trademarks of well-known corporations and products (including the Domain Name) are identical in format and appearance. Each consists of a purported "complaint" website where consumers may post complaints concerning products or services they have purchased from the companies whose trademarks are incorporated in the domain names. Essentially, Respondent has created "cookie-cutter" sites that are identical in appearance and content, and has styled them "complaint" sites in a transparent attempt to avoid a finding of bad faith. The U.S. courts have seen through such tactics and have held that registration of infringing domain names and the creation of such websites with identical formats and content is evidence of bad faith registration and use of a domain name under the Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d). See Morrison & Foerster LLP v. Wick, 94 F.Supp.2d 1125, 1132-33 (D.Colo. 2000) (holding that registration of multiple domain names identical or confusingly similar to marks of others with corresponding websites that are all similar in appearance is evidence of bad faith). (Complaint, Paragraph 12.l)

While the content of Respondent’s website may arguably be protected free speech, 
U.S. federal courts have held that the use of an infringing domain name consisting solely of a company’s registered trademark is not protected speech since it does not contain a protected communicative message. See Morrison & Foerster LLP v. Wick, 94 F.Supp.2d at 1135 (stating that use of another’s registered trademark in a domain name is more analogous to source identification than to a protective communicative message). Moreover, a WIPO Panel has reached the same conclusion in Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020 (March 14, 2000). (Complaint, Paragraph 12.n).
 
 
B. Respondent

Complainant states that the Domain Name is identical to the Complainant’s common law unregistered SEARS ROEBUCK & CO. trademark, and it includes the SEARS mark that Complainant has registered, and therefore is identical to its mark and is likely to result in confusion. The Domain Name is not identical to the Complainant’s common law mark. (Response, Paragraph 5).

Respondent registered the Domain Name for the purpose of creating U.S. 
Constitutionally protected Consumer Advocacy Free Speech complaint sites (the "Complaint Site"). Respondent is a strong believer in the public exposition of complaints against certain corporations and has registered certain domain names and established Complaint Sites at those domain names to further this belief. 
Respondent has never used the domain names for any other purpose other than as consumer Complaint Sites. Respondent believes that allowing consumers to voice complaints about Complainant’s company/products is a fair use and legitimate interest of a trademark and the domain names. For example, Respondent maintains sites at the Domain Name, "ESTELAUDER.COM", and "BARTLESANDJAYMES.COM" for the purpose of allowing consumers to voice objections about Sears, Roebuck & Co., Estee Lauder, and Bartles & Jaymes respectively. (Response, Paragraph 4).

Complainant next argues that even though those who happen across Respondent’s 
Website, believing it to be Complainant’s, may have any confusion dispelled, such "initial interest confusion" is still actionable. The cited case for this proposition, Brookfield Communications, Inc. v. West Coast Entertainment Corp., 
174 F.3d 1036 (9th Cir. 1999), however, discusses original interest confusion as being actionable when one competitor is creating initial confusion in order to attract consumers to its competing products (Id. at 1062-1063). Complainant and 
Respondent are not competitors, and Respondent does not have any product to attract Internet users to as a substitute for the Complainant's products that an 
Internet user may be seeking. In addition, other cases not cited by Complainant have rejected the doctrine of original interest confusion. (Response, Paragraph 6).

Respondent is the lawful registrant of the Domain Name, and is using it for a purpose protected by the U.S. Constitution in a fashion that neither competes with, causes confusion with, or dilutes Complainant’s interests. (Response, Paragraph 7).

Complainant cites Morrison Foerster LLP v. Wick, 94 F.Supp.2d 1125 (D.Colo. 
2000) (attached to Complaint as Annex M) for the proposition that establishment of websites such as Respondent’s are not a valid defence under the U.S. 
Anticybersquatting Consumer Protection Act. Not only is the case at bar not brought under this statute, but the case is also clearly distinguishable. In the 
Wick case, the Registrant’s intent to traffic domain names was obvious based on his registration of the domain names under the name NameIsForSale.com 
(Id. at p. 3), the Registrant’s specific testimony which demonstrated a commercial intent, the Registrant’s failure to follow the Registrar’s rules, and the failure of the Registrant’s sites to constitute a valid parody. None of these factors are present in this matter. (Response, Paragraph 11).

Complainant cites Compaignie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020 (March 14, 2000,) for the propositions that "an infringing domain name consisting solely of the a [sic] company’s registered trademark is not protected speech since it does not contain a communicative message" (Complaint at 12(n)) and that any such communication could be had at another domain name other than a name that matches a trademark holder’s mark (Complaint at 12(o)).  As discussed infra, the Respondent's Domain Name does not match the Complainant's mark in a form used by Complainant, and does not prevent Complainant from establishing an Internet presence as it has in fact done. (Response, Paragraph 14).

In contrast to Complainant's cited case, there are other decisions that have held that registration of a domain name that matches another’s trademark may be a protected use, such as where it is used for "a non-trademark technical purpose, to designate a set of computers on the Internet" rather than a use which contains a communicative trademark function. Lockheed Martin Corp. v. Network Solutions, Inc., 985 F.Supp. 949 (C.D.Cal. 1997) attached as Exhibit #8 (affirmed, 194 F.3d 980 (9th Cir. 1999)). (Response, Paragraph 14).
 

6. Discussion and Findings

Paragraph 4(a) of the UDRP directs that the complainant must prove each of the following: (1) that 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) that the respondent has no rights or legitimate interests in respect of the domain name; and, (3) the domain name has been registered and used in bad faith.
 
The Panel finds that the Domain Name is confusingly similar to Complainant's common law mark SEARS, ROEBUCK AND CO., and to Complainant's registered marks SEARS and ROEBUCKS. Although Respondent correctly points out that the omission of the words "AND CO." from the Domain Name renders it not identical to Complainant's mark, a finding of confusing similarity need only be made. Because the dominant portions of Complainant's marks are represented in the Domain Name, the Panel finds that the Domain Name is confusingly similar to Complainant's marks noted above. Indeed, the Domain Name is virtually identical to Complainant's mark SEARS, ROEBUCK AND CO., as the only difference is the generic wording "AND CO."

Under the UDRP, the respondent's rights or legitimate interests to the domain name are established by demonstrating any of the following three conditions: "(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

The question is whether Respondent's use of a domain name comprised solely of 
Complainant's marks or virtually identical marks can be used to identify 
Respondent's complaint website without violating Complainant's rights in its marks. Because the Domain Name itself contains no communicative message or expression of Respondent's right to air its negative opinions about Complainant, the Panel rejects Respondent's free speech defence, and finds that Respondent's use of Domain Name is not a legitimate non-commercial use of Complainant's marks, but rather dilutes the distinctive quality of Complainant's marks. 

Respondent's attempt to distinguish Compaignie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020, by arguing that the Domain Name is not identical to Complainant's marks is not persuasive. As noted above, the Domain Name is essentially identical to the mark SEARS, ROEBUCK AND CO. The absence of the wording "AND CO." in the Domain Name does not somehow make the Domain Name a communicative message. If Respondent truly wanted to let Internet users know that its website was a complaint site, it would have initially registered and used a domain name with such a communicative message. In fact, Respondent did register "SEARSROEBUCKSUCKS.COM" after it has received notice of this dispute.  Moreover, Respondent's reliance on Bally Total Fitness Holding Corp. v. Faber, No. CV 98-1278 DDP (MANx), (C.D.Cal. Dec. 29, 1998), is misplaced. That case did not involve use of a domain name consisting solely of another's trademark. At issue in that case was defendant's use of the term "BALLY SUCKS" on its website. Although defendant did not use any BALLY-formative domain names, the court did state in dicta that it believed defendant should be able to use the domain name "ballysucks.com". It made no such statements, however, regarding the domain name "bally.com" or a similar domain name. 

Respondent denies that its use of the Domain Name meets the bad faith element of 
Section 4(b)(iv), citing its non-commercial purpose. Section 4(b)(iv) defines bad faith as: "by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location." The UDRP also allows that the four circumstances of bad faith are "in particular but without limitation."

Consumers commonly expect to locate a company on the Internet by typing in its trade name or trademark followed by ".com" into the address line of a browser. 
This is a well-known fact. Respondent's Domain Name will attract Internet users who are searching for Complainant's commercial business on the Internet. 
Comprised solely of Complainant's marks or virtually identical variations, the 
Domain Name by design is obviously intended to do so. Just as Respondent omitted the generic wording "AND CO.," Internet users searching for Complainant's website on the Internet may omit that generic wording. If Respondent truly wanted to promote a "Sears, Roebuck sucks" website and make it as easy as possible for Internet users to access, it would have used the domain name "SEARSROEBUCKSUCKS.COM" or a similar name that on its face immediately conveyed the purpose or subject matter of the site. While Respondent states it is not seeking commercial gain, Respondent's actions must logically be assumed to benefit Respondent. Although persons looking for Complainant's commercial website who reach Respondent's complaint website will likely realize that they have not reached Complainant's website, those users may be influenced by Respondent's website and decide to not go to their intended destination of Complainant's website. Respondent has thus used the Domain Name to intentionally attract users to its website by creating a likelihood of confusion with Complainant's marks to the commercial detriment of Complainant. Accordingly, the Panel finds that Respondent's registration and use of the Domain Name to be in bad faith. 

Section 4(b)(ii) of the UDRP defines bad faith as follows: "you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct." Respondent's domain names "BARTLESANDJAYMES.COM",  "BARTLESANDJAMES.NET", 
"CLEARLYCANADIAN.COM", and "CLEARLYCANADIAN.NET" are identical to trademarks owned and commercially used by third parties, and Respondent's registration of these domain names prevents those trademark owners from reflecting their marks in domain names. As noted above, Respondent's Domain Name is comprised of the dominant portion of Complainant's marks or virtually identical variations thereof. Because the existence of Respondent's domain names does in fact deprive multiple trademark owners from reflecting their marks in domain names, the Panel finds that the Respondent has engaged in a pattern of registering trademark-related domain names in bad faith.
 

7. Decision

The Panel decides that (1) the domain name "SEARSROEBUCK.COM" is confusingly similar to Complainant's SEARS mark and the SEARS family of marks, and is substantially identical to Complainant's SEARS, ROEBUCK AND CO. mark, (2) that Respondent has no rights or legitimate interests in respect of the Domain Name, and (3) that the Domain Name has been registered and used in bad faith. 

Therefore, the Panel requires that the domain name "SEARSROEBUCK.COM" be transferred to Sears, Roebuck and Co., Complainant.
  David M. Kelly
Panelist