WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kohl’s, Inc. v. Domains by Proxy, LLC / Chloe Black, blackchloe

Case No. D2019-1454

1. The Parties

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

The Respondent is Domains by Proxy, LLC, United States / Chloe Black, blackchloe, China.

2. The Domain Name and Registrar

The disputed domain name <kohlsheart.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2019. On June 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 25, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details and contact information for the disputed domain name.

The Center verified that the 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 June 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 18, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 19, 2019.

The Center appointed Charters Macdonald-Brown as the sole panelist in this matter on August 1, 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 is a well-established retailer, founded in the United States in 1962. It operates under the name “Kohl’s”, and currently has over 1,150 physical retail outlets as well as an e-commerce website at “www.kohls.com”. The Complainant is one of the largest retailers in the United States when ranked by retail sales, which totaled over USD 19 billion in net sales in 2018.

The Complainant is the owner of a number of registered trade marks for “KOHL’S”, including:

- United States trade mark KOHL’S (word) No. 1772009, registered on May 18, 1993 for goods/services in Class 42;

- Canadian trade mark KOHL’S (word) No. TMA633699, registered on February 24, 2005 for goods/services in Classes 35, 36 and 39;

- Chinese trade mark KOHL’S (word) No. 10927983, registered on April 14, 2015 for goods/services in Class 35; and

- Israeli trade mark KOHL’S (word) No. 300555, registered on November 4, 2018 for goods/services in Classes 25 and 35.

The Complainant has a large presence on social media and networking websites including Facebook, where the Complainant has over 11 million followers, Twitter, where the Complainant has 800,000 followers, and Instagram, where the Complainant has 1.3 million followers.

The disputed domain name was registered on December 11, 2018.

The website at the disputed domain name originally featured the KOHL’S trade mark in several locations on the page, predominantly as part of the combination “KOHL’S HEART”, but in at least one instance, on its own (“KOHL’S”).

Certain text featured on the website at the disputed domain name appears to have been copied from the website of an unrelated retail fashion company, New York & Company.

Following a complaint sent by the Complainant to the Internet service provider that hosts “www.kohlsheart.com”, reporting the infringing use of the KOHL’S trade mark in the website and domain name, the content of the website was changed to remove references to the Complainant’s KOHL’S trade mark.

The Complainant has received complaints from customers who appear to have mistaken the website at the disputed domain name for a website affiliated with the genuine KOHL’S brand. Additionally, there are several poor reviews of the website at the disputed domain name on third party review websites, where customers have complained of poor quality service from the operator of the website at the disputed domain name as well as what appears to be further evidence of confusion with the Complainant’s business and KOHL’S trade mark.

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

1. The disputed domain name is identical or confusingly similar to the Complainant’s KOHL’S trade mark, which is the subject of various registrations (“the Complainant’s KOHL’S Marks”). In particular:

1.1 the Complainant’s KOHL’S Marks are held in various territories around the world and each of them pre-date the registration of the disputed domain name;

1.2 the disputed domain name <kohlsheart.com> consists of the Complainant’s KOHL’S Marks, minus the apostrophe, plus the non-distinguishing term “heart”. It is established case law that where a domain name incorporates a complainant’s registered mark, this is sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy (Kabushiki Kaisha Hitachi Seisakusho (d/b/a/ Hitachi Ltd) v Arthur Wrangle, WIPO Case No. D2005-1105);

1.3 the fact that the disputed domain name does not include the apostrophe found in the Complainant’s KOHL’S Marks is irrelevant for the purposes of determining similarity since it is impossible to include an apostrophe in a domain name;

1.4 the “.com” generic Top Level Domain (“gTLD”) suffix need not be taken into consideration for the purposes of the adjudication on confusing similarity;

1.5 the addition of the generic term “heart” fails to eliminate any confusion between the disputed domain name and the Complainant’s KOHL’S Marks. The addition of the generic term with a famous mark has been found to aggravate the likelihood of confusion (Volvo Trademark Holding AB v Uvelov, WIPO Case No. D2002-0521) and a domain name that wholly incorporates a registered trade mark establishes confusing similarity (Bayerische Motoren Werke AG v bmwcar.com, WIPO Case No. D2002-0615). This is particularly true given the Complainant’s use of a heart-shaped image in connection with its “Kohl’s Cares” program; and

1.6 customer confusion has already resulted from the Respondent’s use of the disputed domain name, which has lead to findings of confusing similarity in past cases (Money Tree Software, Ltd v Javier Martinez, Money Tree Software, LLC, WIPO Case No. D2014-1078; LVMH Swiss Manufactures SA, LVMH Moet Hennessy – Louis Vuitton v TagHeuerWatches.com, WIPO Case No. D2011-1703; Grosvenor Group Limited v. Abhishek Jain, Grosvenor Property Developers Ltd, WIPO Case No. D2018-1759).

2. The Respondent has no rights or legitimate interests in the disputed domain name. In particular:

2.1 there is no evidence that the Respondent has either rights or legitimate interests in the disputed domain name;

2.2 the disputed domain name was registered after the Complainant had obtained both registered rights in the Complainant’s KOHL’S Marks, and unregistered common law rights through extensive use of “Kohl’s” in the United States and in other countries around the world. This places the burden on the Respondent to establish its rights or legitimate interests in the Complainant’s KOHL’S Marks (PepsiCo, Inc v Amilcar Perez Lista d/b/a Cyberson, WIPO Case No. D2003-0174), which it has failed to do;

2.3 the website at the disputed domain name is not a bona fide offering or use of the Complainant’s KOHL’S Marks, as the Respondent merely used the marks on its website without good reason. The Respondent has therefore traded on the fame of the KOHL’S brand which cannot constitute bona fide use (Philip Morris Inc v Alex Tsypkin, WIPO Case No. D2002-0946); and

2.4 the fact that the Respondent’s use of the disputed domain name has caused actual confusion is evidence that the use cannot be considered a legitimate noncommercial or fair use of the disputed domain name (Houghton Mifflin Co v Weathermen, Inc, WIPO Case No. D2001-0211).

3. The disputed domain name was registered and is being used in bad faith. In particular:

3.1 given that registration of the Complainant’s KOHL’S Marks occurred prior to that of the disputed domain name, and that the disputed domain name and the website thereat is obviously connected with the Complainant’s KOHL’S Marks, the Respondent’s bad faith in registering the disputed domain name can be presumed (Deloitte Touche Tohmatsu v Open Water Enterprises Limited, Louise S, WIPO Case No. D2008-1632);

3.2 the very act of having acquired the disputed domain name raises the probability of the Respondent having violated the Complainant’s legal rights and legitimate interests (Comerica Inc v Horoshiy, Inc, WIPO Case No. D2004-0615);

3.3 the Respondent’s use of a privacy protection service suggests bad faith where the disputed domain name is identical to the Complainant’s KOHL’S Marks (Advanced Magazine Publishers, Inc d/b/a Condé Nast Publications v MSA, Inc, WIPO Case No. D2007-1743); and

3.4 the Respondent’s use of the disputed domain name and website thereat has resulted in actual confusion, which is strong evidence of bad faith (Fareportal Inc v Mack, WIPO Case No. D2015-1499).

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that, in order to be entitled to the transfer of a domain name, a complainant shall prove the following three elements:

(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Paragraph 5(f) of the Rules provides that, if the respondent fails to submit a response (as in this case), in the absence of exceptional circumstances, the panel shall decide the dispute based upon the complaint.

A. Identical or Confusingly Similar

The Complainant has submitted evidence demonstrating its rights in the KOHL’S Marks.

The disputed domain name fully incorporates the Complainant’s KOHL’S Marks, and the word “Kohl’s” is recognizable within the disputed domain name, albeit that the apostrophe is absent.

The Panel accepts that the “heart” element of the disputed domain name does not prevent a finding of confusing similarity with the Complainant’s distinctive KOHL’S Mark. See section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Panel accepts that the absence of an apostrophe is irrelevant for the purposes of determining similarity since inclusion of an apostrophe in a domain name is impossible (see McDonald’s Corporation v Wang, WIPO Case No. D2012-0624).

Further, the Panel also accepts that the gTLD suffix in the disputed domain name (“.com”) should not be taken into consideration when examining the similarity between the disputed domain name and the Complainant’s KOHL’S Marks since it is a functional element (see G4S Plc v Noman Burki, WIPO Case No. D2016-1383).

The fact that evidence of actual confusion between the Complainant’s website and the website at the disputed domain name has been shown in the Complaint is indicative of the confusing similarity of the disputed domain name and the Complainant’s KOHL’S Marks. Actual confusion has assisted in findings of confusing similarity in past decisions (see Money Tree Software, Ltd v Javier Martinez, Money Tree Software, LLC, WIPO Case No. D2014-1078; LVMH Swiss Manufactures SA, LVMH Moet Hennessy – Louis Vuitton v TagHeuerWatches.com, WIPO Case No. D2011-1703; Grosvenor Group Limited v. Abhishek Jain, Grosvenor Property Developers Ltd, WIPO Case No. D2018-1759). See also section 1.15 of the WIPO Overview 3.0.

Therefore, the fact that the disputed domain name reproduces “Kohl’s” in its entirety together with the dictionary term “heart”, and the fact that the gTLD suffix and absence of an apostrophe can be ignored, and noting also evidence of actual confusion, leads the Panel to find that the disputed domain name is identical or confusingly similar to the Complainant’s KOHL’S Marks.

The Complaint therefore satisfies paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to provide evidence of its rights or legitimate interests. If a respondent fails to come forward with such evidence, the complainant is deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy.

In the present case, the Complainant asserts that there is no evidence of the Respondent ever having rights or legitimate interests in the disputed domain name or the Complainant’s KOHL’S Marks.

Further, registered rights in the Complainant’s KOHL’S Marks were obtained well before the registration of the disputed domain name.

The Complainant has also made out a prima facie case that the Respondent lacks any legitimate interests in the disputed domain name given the Complainant’s contentions regarding the content of the website at the disputed domain name, above.

The burden of production in this case therefore shifts to the Respondent, who must rebut the prima facie case.

The Respondent has not submitted any response to the Complaint.

Under paragraph 14(b) of the Rules, if a respondent fails to comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.

For the reasons given above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complaint therefore satisfies paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant has asserted that the Respondent’s use of the disputed domain name, given the prior registration of the Complainant’s KOHL’S Marks and the large reputation of the Complainant’s business, leads to the conclusion that registration of the disputed domain name in bad faith can be presumed. This position is supported by previous findings of this Panel (see, for example Deloitte Touche Tohmatsu v Open Water Enterprises Limited, Louise S, WIPO Case No. D2008-1632). The disputed domain name reproduces the word “Kohl’s” in its entirety, minus the apostrophe. The website at the disputed domain name has been used to offer clothing and other goods which compete directly with the Complainant’s product range. Further, actual confusion on the part of consumers has resulted, which has informed previous panel decisions in relation to using a domain name in bad faith (see Fareportal Inc v. Mack, WIPO Case No. D2015-1499).

The website at the disputed domain name used the Complainant’s KOHL’S Marks in various locations until at least April 11, 2019, without authorisation or a license to do so from the Complainant.

Further, the Complainant’s KOHL’S Marks have been subject to continuing use by the Respondent through incorporation in the disputed domain name. The fact that the website at the disputed domain name sells similar categories of goods to the Complainant’s legitimate business reinforces the Respondent’s use of the disputed domain name in bad faith.

Evidence of confusion on the part of consumers, as well as evidence submitted by the Complainant showing the reluctance of the Respondent to offer customers refunds when they have received items of a lower than expected quality from the Respondent, adds to evidence of use in bad faith.

The Respondent has made no submission in relation to this element of the Complaint.

In view of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith. Therefore, paragraph 4(a)(iii) of the Policy has been satisfied.

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 <kohlsheart.com> be transferred to the Complainant.

Charters Macdonald-Brown
Sole Panelist
Date: August 30, 2019