Strathmore Partners LP v. thusawan c/o suriya thusawan
Claim Number: FA0905001264649
Complainant is Strathmore Partners LP (“Complainant”), represented by Sean D. Detweiler, of Lahive & Cockfield, LLP, Massachusetts, USA. Respondent is thusawan c/o suriya thusawan (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <bjs-wholesale-club.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 22, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 5, 2009.
On May 27, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <bjs-wholesale-club.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com 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 June 10, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 30, 2009 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@bjs-wholesale-club.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 6, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
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:
1. Respondent’s <bjs-wholesale-club.com> domain name is confusingly similar to Complainant’s BJ’S WHOLESALE CLUB mark.
2. Respondent does not have any rights or legitimate interests in the <bjs-wholesale-club.com> domain name.
3. Respondent registered and used the <bjs-wholesale-club.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Strathmore Partners LP, is the owner of the BJ’S WHOLESALE CLUB mark, registered with the United States Patent and Trademark Office (Reg. No. 1,643,993 issued May 7, 1991). Complainant uses its BJ’S WHOLESALE CLUB mark in connection with its retail sales of food and general merchandise, particularly through the use of its club-membership services.
Respondent registered the <bjs-wholesale-club.com> domain name on January 18, 2009. The disputed domain name is being used to resolve to a commercial website offering goods for sale that are similar to the goods that Complainant sells at its retail stores and through its own website.
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 the 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:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or 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 domain name has been registered and is being used in bad faith.
Complainant’s registration of the BJ’S WHOLESALE CLUB mark with the USPTO is sufficient to satisfy Policy ¶ 4(a)(i). The Policy does not require Complainant to have registered the BJ’S WHOLESALE CLUB mark in the country of Respondent’s residence. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s <bjs-wholesale-club.com> domain name is confusingly similar to its BJ’S WHOLESALE CLUB mark under Policy ¶ 4(a)(i). The disputed domain name incorporates the entirety of Complainant’s BJ’S WHOLESALE CLUB mark with the deletion of the apostrophe, the addition of hyphens between the words, and the affixation of the generic top-level domain “.com.” The deletion of an apostrophe and the addition of hyphens between the words in a mark does not sufficiently distinguish Respondent’s disputed domain name from Complainant’s mark. The Panel also finds that affixation of a generic top-level domain is insignificant under Policy ¶ 4(a)(i). See LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that the omission of an apostrophe did not significantly distinguish the domain name from the mark); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Thus, the Panel finds that Respondent’s <bjs-wholesale-club.com> domain name is confusingly similar to Complainant’s BJ’S WHOLESALE CLUB mark under Policy ¶ 4(a)(i).
Complainant has satisfied Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain name. Once a prima facie case has been established by Complainant, the burden then shifts to Respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c). The Panel finds that Complainant has adequately established a prima facie case in these proceedings. Since Respondent has failed to respond to the allegations against it, the Panel may assume that Respondent lacks any rights or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). The Panel nevertheless chooses to examine the record to determine whether Respondent has any relevant rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Respondent’s <bjs-wholesale-club.com> domain
name resolves to a commercial website which offers goods for sale that are
similar to the goods Complainant sells under its BJ’S WHOLESALE CLUB mark. Respondent is undoubtedly profiting from such
use. Respondent
is utilizing a confusingly similar domain to divert Internet users to a website
in direct competition with Complainant and thus, is not using the disputed
domain name in connection with a bona fide offering of goods or services
nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or
(iii), respectively. See Computerized Sec. Sys., Inc. v.
Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation
of [Complainant’s] SAFLOK mark to market products that compete with
Complainant’s goods does not constitute a bona fide offering of goods and
services.”); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that
the respondent was not using the domain name within the parameters of Policy ¶
4(c)(i) or (iii) because the respondent used the domain name to take advantage
of the complainant's mark by diverting Internet users to a competing commercial
site).
Respondent is not commonly known
by the disputed domain name. The WHOIS
information identifies the registrant as “thusawan c/o suriya
thusawan.” This information suggests
that Respondent is not commonly known by the <bjs-wholesale-club.com>
domain name and there is no evidence in the record to the contrary. See
Coppertown Drive-Thru Sys., LLC v. Snowden, FA
715089
(Nat.
Arb. Forum July 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name); see also Instron Corp. v. Kaner,
FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the
respondent was not commonly known by the <shoredurometer.com> and
<shoredurometers.com> domain names because the WHOIS information listed
Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of
the disputed domain names and there was no other evidence in the record to
suggest that the respondent was commonly known by the domain names in dispute)
Therefore, the Panel finds that Respondent is not commonly known by the
disputed domain name under Policy ¶ 4(c)(ii).
Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is using a confusingly similar domain name to
attract Internet users to Respondent’s competing commercial website. The Panel finds that such use likely disrupts
Complainant’s business and constitutes bad faith registration and use under
Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc.,
FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad
faith by attracting Internet users to a website that competes with the
complainant’s business); see also Lambros v. Brown, FA
198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that the respondent registered
a domain name primarily to disrupt its competitor when it sold similar goods as
those offered by the complainant).
Respondent’s registration and use of the disputed domain name also constitutes bad faith under Policy ¶ 4(b)(iv) because Respondent intentionally attempts to attract Internet users to its competing website. Respondent is presumably generating revenue from such use. The Panel thus finds that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bjs-wholesale-club.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 20, 2009
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