Blue Nile, Inc. v. blunile.com c/o Kevin Emanuel
Claim Number: FA0906001269203
Complainant is Blue
Nile, Inc. (“Complainant”), represented by CitizenHawk, Inc.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <blunile.com>, registered with Network Solutions, 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 June 18, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 19, 2009.
On June 19, 2009, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <blunile.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 June 19, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 9, 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 15, 2009, 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 the largest online retailer of certified diamonds and fine jewelry.
Complainant is the owner of the BLUE NILE mark, registered with the United States Patent and Trademark Office (“USPTO”) on May 8, 2001 (Reg. No. 2,450,117, filed September 2, 1999).
Complainant uses its BLUE NILE mark in connection with its Internet ordering services in the field of diamonds, jewelry and watches.
Complainant launched its <bluenile.com> domain name and resolving commercial website on March 26, 1997.
Respondent registered the <blunile.com> domain name on March 29, 1999.
The disputed domain name resolves to a website featuring click-through links that further resolve to websites of Complainant and those of Complainant’s business competitors.
Respondent generates click-through fee revenues from Internet traffic on those links.
Respondent’s <blunile.com> domain name is confusingly similar to Complainant’s BLUE NILE mark.
Respondent is not commonly known by the <blunile.com> domain name.
Respondent does not have any rights to or legitimate interests in the <blunile.com> domain name.
Respondent registered and uses the <blunile.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 trademark in which Complainant has rights; and
(2) Respondent has no rights to 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 BLUE NILE mark under Policy ¶ 4(a)(i) on the strength of its registration of the mark with the USPTO. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006):
Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.
See also Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007):
As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s domain name is confusingly similar to Complainant’s BLUE NILE mark. The domain name incorporates the distinctive portion of Complainant’s BLUE NILE mark with the mere deletion of the letter “e” and the addition of the generic top-level domain name “.com.” Such alterations fail to distinguish Respondent’s <blunile.com> domain name from Complainant’s BLUE NILE mark under Policy ¶ 4(a)(i). See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to a complainant’s PFIZER mark, where a respondent simply omitted the letter “i”); see also Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that a respondent’s <hacrs.com> domain name was confusingly similar to a complainant’s HACRES mark because it merely omitted the letter “e” from the mark and added the generic top-level domain “.com”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Therefore, the Panel concludes that Respondent’s <blunile.com> domain name is confusingly similar to Complainant’s BLUE NILE mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights to and legitimate interests in the disputed domain name. For purposes of a Policy ¶ 4(a)(ii) analysis, Complainant must present a prima facie case in support of its allegations. The burden then shifts to Respondent to show that it indeed has such rights or interests. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008):
It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.
We are satisfied that Complainant has presented a sufficient prima facie case. Respondent, for its part, has failed to respond to Complainant’s allegations. From this failure, we may infer that Respondent lacks any rights to or legitimate interests in the disputed domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for a panel to draw adverse inferences from a respondent’s failure to reply to a complaint); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond to a complaint filed under the Policy allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence).
Nonetheless, we will examine the record before us, by reference to the considerations set out in Policy ¶ 4(c), to determine if there is any basis for concluding that Respondent has any rights to or legitimate interests in the disputed domain name.
We begin by noting that Complainant alleges that Respondent lacks rights to and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii) because Respondent is not commonly known by the <blunile.com> domain name. Respondent does not dispute this allegation. Moreover, the pertinent WHOIS information lists the registrant as “blunile.com c/o Kevin Emanuel.” While the WHOIS information could be taken to indicate a possible identity between Respondent and the disputed domain name, there is no evidence in the record to corroborate such a proposition. We therefore conclude that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although a respondent listed itself as “AIM Profiles” in its WHOIS contact information, there was no other evidence in the record to suggest that that respondent was commonly known by a contested domain name); see also City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004): “Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”
We also observe that there is no dispute as to Complainant’s assertion to the effect that the disputed domain name resolves to a website containing click-through links which further resolve to the websites of Complainant’s business competitors. Complainant further alleges, and, again, Respondent does not deny, that Respondent is generating click-through fees from Internet traffic visitng those links. This use of the contested domain does not constitute either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain under Policy ¶¶ 4(c)(i) or (iii), respectively. See Charles Letts & Co Ltd. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that a respondent’s parking of a domain name containing a complainant’s mark for that respondent’s commercial gain did not satisfy Policy ¶ 4(c)(i) or ¶ 4(c)(iii)); see also Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of a disputed domain name pursuant to Policy ¶ 4(c)(iii), where a respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
In order to succeed under Policy ¶ 4(a)(iii), Complainant must establish that Respondent registered and is using the disputed domain name in bad faith. We cannot address this question in the instant case without examining the element of time. This is because it appears from the record that Respondent first registered the disputed domain name on March 29, 1999, whereas Complainant’s USPTO trademark registration application was not filed until later in the same year, on September 2, 1999, and that the mark was not officially registered with the USPTO until May 8, 2001. Complainant has offered extensive evidence to support the proposition that it has also acquired rights in its mark under the common law. However, such evidence as has been presented does not bring the acquisition of Complainant’s rights in its mark to a point in time prior to the date of Respondent’s registration of the disputed domain name.
These circumstances are problematic because, as a general rule, panels called upon to administer the Policy judge themselves constrained to conclude that, where a domain name is registered before a competing trademark right is established, the registration of the domain name could not fairly be said to have been in bad faith inasmuch a respondent could not likely have contemplated a complainant’s then non-existent rights at the moment of domain registration. See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where a respondent registered a domain prior to a complainant’s use of a mark); see also Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (finding that it is impossible for a respondent to register a disputed domain name in bad faith if a complainant company did not exist at the time of domain registration).
We are, however, also conscious of the fact that other panels have found that, where, for example, it is shown that a respondent was aware of a complainant and that the aim of that respondent’s domain registration was to take advantage of possible confusion between a domain name and a competing mark, bad faith registration and use of the domain can be found. See General Growth Properties, Inc. v. Provo Mall LLC, D2003-0845 (WIPO Jan. 15, 2004), collecting the cases to that point in time.
In the unique circumstances of the present case, we are persuaded that the pivotal fact on the question of Respondent’s bad faith is the date of Complainant’s domain registration for <bluenile.com> and the launching of the corresponding website on or about March 26, 1997. The two years which passed after Complainant registered its <bluenile.com> domain gave Respondent ample time to become aware of its existence and to form the intent to register, in March of 1999, its competing domain, differing from Complainant’s domain by a single letter, a silent “e.”
Viewed in this light, Respondent’s registration of the disputed domain name was a kind of pre-emptive strike, anticipating the economic value of Complainant’s developing mark rights. That Respondent has failed to respond to the allegations of the Complaint, despite having ample opportunities to do so, is itself instructive on the point of its bad faith registration and use of the subject domain. See, for example, Blemain Group v. Frost, D2006-0871 (WIPO Aug. 29, 2006), finding bad faith where:
Respondent failed to respond to the Complaint because he has no answer to the Complaint’s bad faith allegations….
Therefore, the Panel finds that Respondent has engaged in bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii).
For these reasons, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the domain name <blunile.com> be transferred forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 28, 2009
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