Best Buy Enterprise Services, Inc. v. Totto Cutugno
Claim Number: FA0712001120155
Complainant is Best Buy Enterprise Services, Inc. (“Complainant”), represented by Michael
Metteauer, of Fulbright & Jaworski L.L.P.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <bestbuycare.com>, registered with Moniker Online Services, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 17, 2007; the National Arbitration Forum received a hard copy of the Complaint on December 18, 2007.
On December 21, 2007, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <bestbuycare.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On January 4, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 24, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@bestbuycare.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 30, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is a Minnesota-based company specializing in retail sales of major home appliances, as well as communication, photographic, and other electronic equipment.
Since 1983, Complainant has operated under the BEST BUY mark (Reg. No. 2,539,223, issued February 19, 2002), which was registered with the United States Patent and Trademark Office (“USPTO”).
Complainant has also owned and operated the <bestbuycares.com> domain name since 2003 in conjunction with its efforts to obtain customer feedback regarding Complainant’s stores and services.
Respondent registered the <bestbuycare.com> domain name on November 26, 2005.
Respondent is using the disputed domain name to resolve to a website that features links with titles such as “Best Buy Survey” and “Customer Survey,” which funnel Internet users to Complainant’s competitors.
The WHOIS domain name registration information previously identified a third-party as the registrant and owner of the disputed domain name.
However, upon commencement of this UDRP proceeding through the filing of the original Complaint, the registration information was altered to reflect the instant Respondent.
Respondent’s <bestbuycare.com> domain name is confusingly similar to Complainant’s BEST BUY mark.
Respondent does not have any rights to or legitimate interests in the <bestbuycare.com> domain name.
Respondent registered and uses the <bestbuycare.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. 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.
Complainant has established rights in the BEST BUY mark
through registration of the mark with the USPTO pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004): “Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.” See also Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003): “Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.”
Respondent’s <bestbuycare.com> domain name incorporates Complainant’s entire BEST BUY mark, merely adding the top-level domain “.com,” as well as the generic word “care.” The addition of a generic word does not overcome a claim of confusing similarity. See Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in a domain name rather than upon the likelihood of confusion test under U.S. trademark law); see also Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word “Net” to a complainant’s ICQ mark makes the <neticq.com> domain name confusingly similar to that complainant’s mark); further see Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding the <bodyshopdigital.com> domain name confusingly similar to a complainant’s THE BODY SHOP trademark).
Moreover, the addition of a generic top-level domain is not
relevant for purposes of a Policy ¶ 4(a)(i) analysis. See,
for example, Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000)
(finding <pomellato.com> identical to a complainant’s mark because the
generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant
to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel finds that the disputed
domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶
4(a)(i).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights to and legitimate interests in the <bestbuycare.com> domain name. Complainant has thus made out a prima facie case supporting its allegations. The burden therefore shifts to Respondent to prove that it does have rights to or legitimate interests in its domain name pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):
Because
Complainant’s Submission constitutes a prima
facie case under the Policy, the burden effectively shifts to Respondent.
Respondent’s failure to respond means that Respondent has not presented any
circumstances that would promote its rights or legitimate interests in the
subject domain name under Policy ¶ 4(a)(ii).
See also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a complainant asserts that a respondent has no rights or legitimate interests with respect to a domain, the burden shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Respondent has failed to respond to the Complaint herein. Therefore, nothing further is required to permit the Panel to conclude that Respondent lacks rights or interests sufficient for purposes of the Policy. However, we will nonetheless examine the evidence of record to determine whether there is any basis for concluding that Respondent has such rights or interests.
We begin by noting that there is no dispute that Respondent
is using the disputed domain name to resolve to a website featuring links to
Complainant’s competitors. Should
Internet users use such links, Respondent would presumably receive click-through
fee compensation from those advertisers.
Such use of the disputed domain name does not constitute a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i), or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am.
Corp. v. Nw. Free Cmty. Access,
FA 180704 (Nat. Arb. Forum
Sept. 30, 2003):
Respondent's demonstrated intent to divert Internet users
seeking Complainant's website to a website of Respondent and for Respondent's
benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii).
See also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that a respondent’s diversionary use of a complainant’s marks to send Internet users to a website which displayed links to that complainant’s competitors, was not a bona fide offering of goods or services).
We next note that no evidence appears in the record,
including the WHOIS domain name registration information, to suggest that
Respondent is commonly known by the <bestbuycare.com>
domain name. Moreover, despite the fact
that the WHOIS domain name registration information has been amended, neither the
former nor the current registrant information indicates any correlation
Respondent and the disputed domain name.
Therefore, we conclude that Respondent lacks rights and legitimate
interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing
in Respondent’s WHOIS information implies that Respondent is ‘commonly known
by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Am. W. Airlines,
Inc. v. Paik, FA 206396 (Nat. Arb. Forum
Dec. 22, 2003): “Respondent has registered the domain name under the
name ‘Ilyoup Paik a/k/a David Sanders.’
Given the WHOIS domain name registration information, Respondent is not
commonly known by the [<awvacations.com>] domain name.”
The Panel thus finds that Policy ¶ 4(a)(ii)
has been satisfied.
On the record before us, it is undisputed that Respondent uses
the <bestbuycare.com> domain
name to resolve to a website featuring links to Complainant’s competitors. It is probable that Internet users seeking
Complainant who happen upon Respondent’s website will be confronted with links
that create a likelihood of confusion for those Internet users as to the
source, affiliation, and endorsement of the disputed domain name that resolves
to the corresponding website. We therefore
conclude that Respondent has engaged in bad faith registration and use of the
disputed domain name pursuant to Policy ¶ 4(b)(iv). See Perot
Sys. Corp. v. Perot.net, FA
95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith
where a domain name is obviously connected with a complainant’s well-known
marks, thus creating a likelihood of confusion created for commercial gain); see
also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003): “Respondent's
prior use of the <mailonsunday.com> domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to
Complainant's competitors and Respondent presumably commercially benefited from
the misleading domain name by receiving ‘click-through-fees.’”
We are also persuaded that Respondent’s undenied alteration of the WHOIS domain name information following commencement of these proceedings constitutes an attempt to evade the Policy, and therefore represents evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Keyes v. Old Barn Studios Ltd., D2002-0687 (WIPO Sept. 23, 2002) (finding that a respondent’s attempt to conceal its identity is indicative of bad faith); see also Medco Health Solutions, Inc. v. Whois Privacy Protection Serv., Inc., D2004-0453 (WIPO Aug. 25. 2004) (holding a respondent’s efforts to disguise its identity to indicate bad faith).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <bestbuycare.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 6, 2008
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