WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kohl’s, Inc. v. Laporta Design

Case No. D2019-2325

1. The Parties

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

The Respondent is Laporta Design, United Kingdom, self-represented.

2. The Domain Name and Registrar

The disputed domain name <kohls.email> (“Disputed Domain Name”) is registered with Uniregistrar Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2019. On September 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 25, 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 October 3, 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 October 3, 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 October 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 29, 2019. The Response was filed with the Center on October 28, 2019.

On October 30, 2019, the Center received a supplemental filing from the Complainant. On October 31, 2019, the Center received a supplemental filing from the Respondent.

The Center appointed Gabriela Kennedy as the sole panelist in this matter on November 14, 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.

The Complainant and the Respondent submitted one Supplemental Filing each. Neither the Rules nor the Supplemental Rules make provision for supplemental filings, except at the request of the panel (see Rules, paragraph 12). Paragraph 10 of the Rules enjoins the panel to conduct the proceeding “with due expedition”. Therefore, UDRP panels are typically reluctant to countenance delay through additional rounds of pleading and normally accept supplemental filings only to consider material new evidence or provide a fair opportunity to respond to arguments that could not reasonably have been anticipated. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6.

The Complainant’s Supplemental Submissions respond to some new arguments raised and alleged misleading statements in the Response. The Respondent’s Supplemental Submissions mostly re-assert the claims made in the Response, but clarifies its position regarding common ownership. The Panel accepts both the Complainant and Respondent’s Supplemental Filings.

4. Factual Background

Founded in 1962, the Complainant’s Kohl’s retail stores are some of the largest stores by retail sales in the United States. In 2018, the Complainant’s net annual sales totaled over USD 19 billion. The Complainant operates more than 1,150 Kohl’s retail stores and also sells products through its e-commerce website and e-commerce app for mobile phones. The Complainant advertises and promotes its Kohl’s brand on social media and networking websites, including but not limited to Facebook, Twitter, Pinterest, and YouTube.

The Complainant owns numerous trademark registrations for the KOHL’S trademark (“KOHL’S Mark”) worldwide, including but not limited to the United States, Canada, China, and Mexico. One of its earlier trademark registrations for the KOHL’S Mark was in the United States on May 18, 1993, registration number 1772009 in class 42.

The Disputed Domain Name was first registered on March 30, 2014 by Giovanni Laporta. On or around April 1, 2016, the Disputed Domain Name was transferred to the Respondent, who has held the Disputed Domain Name through a proxy service provider. The Respondent is a company based in the United Kingdom. Giovanni Laporta (the original registrant) is a director and the legal representative of the Respondent. The Respondent is in the business of registering and holding domain names for the purpose of monetising them.

5. Parties’ Contentions

A. Complainant

The Complainant’s primary contentions can be summarised as follows:

(a) The Disputed Domain Name is confusingly similar or identical to the Complainant’s registered KOHL’S Mark as it incorporates the KOHL’S Mark in its entirety, minus the apostrophe.

(b) The Complainant has been using the KOHL’S Mark for decades before the Disputed Domain Name was registered. The Complainant has never authorised or licenced the Respondent, who is not affiliated with the Complainant in any way, to use its KOHL’S Mark. The Respondent’s use of and its offer to sell the Disputed Domain Name cannot amount to a bona fide offering of goods or services or use for noncommercial or fair use purposes.

(c) The Disputed Domain Name is ultimately controlled by Giovanni Laporta, the original registrant of the Disputed Domain Name. On October 3, 2019, the WIPO Center notified the Complainant that the actual registrant of the Disputed Domain Name is Laporta Design. Yet, Laporta Design’s contact details correspond to the original registrant Giovanni Laporta’s contact details. The same email address and telephone number cannot be a mere coincidence. Moreover, the Response was submitted by Giovanni Laporta on behalf of Laporta Design, the Respondent.

(d) The original registrant registered and used the Disputed Domain Name in bad faith and has engaged in a pattern of abusive registrations. In numerous UDRP decisions rendered against Giovanni Laporta and/or Yoyo.Email, panels have routinely found Giovanni Laporta and Yoyo.Email’s registration of numerous

well-known brand owners’ trademarks to be in bad faith.

B. Respondent

The Respondent’s primary contentions can be summarised as follows:

(a) Giovanni Laporta, the original registrant of the Disputed Domain Name and a director and the legal representative of the Respondent, claims that he is not the legal owner of the Disputed Domain Name, and that the Disputed Domain Name is the Respondent’s legitimate business asset.

(b) The Respondent has legitimate rights and interests in the Disputed Domain Name as a legitimate domain name investor in “.email” domain names that contain family surnames for use in email addresses.

(c) “Kohl” is a common surname and is not exclusively unique to the Complainant.

(d) The Disputed Domain Name is not being used in bad faith as the Respondent has no intention to profit from or prevent trademark owners from reflecting their marks.

(e) The Respondent has acted in good faith since it purchased the Disputed Domain Name in 2014 and has no intention of causing any confusion or infringing the Complainant’s trademark rights.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in the KOHL’S Mark based on its trademark registrations in multiple jurisdictions.

It is well-established that in making an enquiry as to whether a trademark is identical or confusingly similar to a domain name, the generic Top-Level Domain (“gTLD”) extension “.email” may be disregarded. See section 1.11 of the WIPO Overview 3.0.

The Disputed Domain Name incorporates the Complainant’s KOHL’S Mark in its entirety, except for the apostrophe. Given ICANN limitations, apostrophes cannot be included in domain names. Hence, it is irrelevant that the Disputed Domain Name does not include the apostrophe in the KOHL’S Mark. See L’Oreal v. Lewis Cheng, WIPO Case No. D2008-0437; Kohl’s, Inc. v. Domains by Proxy, LLC / Chloe Black, blackchloe, WIPO Case No. D2019-1454.

As such, the Panel finds that the Disputed Domain Name is identical or confusingly similar to the Complainant’s KOHL’S Mark and accordingly, paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0.

The Panel accepts that the Complainant has not authorised the Respondent to use the KOHL’S Mark, and there is no relationship between the Complainant and the Respondent that would otherwise entitle the Respondent to use the KOHL’S Mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Name.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:

(1) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services; or

(2) the Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trademark or service mark rights; or

(3) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

While the Respondent notes and has provided evidence that “Kohl” is a common surname, “Kohl” and the KOHL’S Mark are different as the KOHL’S Mark adopts a unique punctuation that differentiates it from the common surname Kohl. The KOHL’S Mark has been created by the Complainant and the Respondent has offered no explanation as to why it chose to include the Complainant’s mark in its domain name. The Respondent has not provided any evidence that it has become commonly known by the Disputed Domain Name or has any trademark rights in the Disputed Domain Name.

The Disputed Domain Name currently resolves to a parking page. At one point, the Disputed Domain Name included links to competitors in the same or related industry as the Complainant, such as “Kmart Clothing”. As such links compete with the Complainant’s KOHL’S Mark, the Respondent’s use of the Disputed Domain Names to host a parking page comprising of pay-per-click (“PPC”) links do not represent a bona fide offering of goods or services. See section 2.9 of the WIPO Overview 3.0. The aforementioned links include brand names that are the Complainant’s competitors, and such an inclusion cannot be a mere coincidence.

Currently, the Disputed Domain Name resolves to a parking page which includes a message stating that the Disputed Domain Name is for sale. Additionally, the Disputed Domain Name is listed for sale on the Registrar’s market, Uniregistry Market. While domain names can be used by a domainer as a legitimate business, it appears that the Respondent is targeting the Complainant’s KOHL’S Mark and its reputation as further discussed under bad faith in paragraph C. In fact, the Respondent provided a nine page list of “.email” domain names registered by it. The list includes domain names such as <kenzo.email>, <lays.email> and <whittard.email>, all well-known brands that also resolve to parking pages with the “for sale” message. This cannot be a mere coincidence. Such incorporation of well-known marks in domain names indicates that the Respondent intentionally registers certain domain names to take advantage of third party marks. Such use of the Disputed Domain Name cannot amount to a bona fide offering of goods or services or use for noncommercial or fair use purposes. See Gensight Biologics v. Domain Administrator, See PrivacyGuardian.org, WIPO Case No. D2019-0635.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

In this case, the Panel finds that the holding of the Disputed Domain Name by the Respondent amounts to bad faith registration and use due to the following:

(i) Giovanni Laporta, a director and the legal representative of the Respondent, has over 30 UDRP decisions rendered against him and/or Yoyo.Email during the period 2014 - 2015. The Disputed Domain Name is in the format of a well-known brand name or trademark + the “.email” gTLD. The disputed domain names in the decisions, including but not limited to the following, follow the same format. See Bank of Scotland Plc v. GYoyo Email / Yoyo.Email Limited, WIPO Case No. D2015-1079; The Football Association Ltd. v. Domain Controller, Yoyo Email / Yoyo.Email Limited, Giovanni Laporta, WIPO Case No. D2015-0851; Société Air France v. Giovanni Laporta, Yoyo.Email, WIPO Case No. D2015-0443; L’Oréal SA v. Yoyo.email, Giovanni Laporta, WIPO Case No. D2014-1172; O2 Holdings Limited v. Yoyo.email / Giovanni Laporta, WIPO Case No. D2014-1399; R.C. Purdy Chocolates Ltd. v. Giovanni Laporta, Yoyo.Email Ltd, WIPO Case No. D2014-1670. In addition, the aforementioned nine page list of “.email” domain names registered by the Respondent contains domain names that incorporate well-known brands. The Panel finds that Giovanni Laporta is using the Respondent as a vehicle to continue to register domain names incorporating well-known brands;

(ii) the Respondent claims that it specialises in investing in three letter and family surnames “.email” domain names. The Respondent submits that “Kohl” is a common surname and is not exclusively unique to the Complainant. Yet, the Disputed Domain Name does not reflect the surname “Kohl” but rather “kohls”, which is the Complainant’s KOHL’S Mark minus the apostrophe (as mentioned above, apostrophes cannot be included in domain names given ICANN limitations). The KOHL’S Mark is unique to the Complainant in which it enjoys trademark rights. The Respondent has offered no explanation as to why he registered “kohls” instead of “kohl” if in fact, as he alleges, he had chosen the domain name based on the common surname “Kohl”. The Panel is of the view that using the KOHL’S Mark in its entirety creates a false impression of affiliation with or endorsement by the Complainant for the purpose of misleading users and increasing PPC revenue or selling the Disputed Domain Name for profit;

(iii) in decisions rendered against Giovanni Laporta/Yoyo.Email, panels were of the view that the respondent targeted numerous well-known companies such L’Oréal SA, Bank of Scotland, and British Telecommunications plc. These panels concluded that the respondent’s business model of registering third party trademarks as domain names to set up an email directory and certification service, without authorisation from trademark owners, amounts to bad faith registration and use under paragraph 4(b)(ii) of the Policy. Additionally, given the longevity and geographical reach of the Complainant as a retailer, its KOHL’S Mark is undeniably well known; and

(iv) the Respondent’s concealment of its identity and likely subsequent transfer of the Disputed Domain Name suggest bad faith use. The Disputed Domain Name was first registered in 2014. Giovanni Laporta was listed as the registrant until around April 2016, after which contact details for the registrant became privacy protected as shown by WhoIs records. It is likely there was a subsequent transfer from Giovanni Laporta to his company, the Respondent. It cannot be mere coincidence that the Respondent and Yoyo.Email Limited are under the common ownership and control of Giovanni Laporta. In fact, this is admitted in the Respondent’s Supplementary Submission.

In the circumstances, the Panel finds that the Respondent registered and is using the Disputed Domain Name in bad faith and 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 <kohls.email> be transferred to the Complainant.

Gabriela Kennedy
Sole Panelist
Date: December 5, 2019