Blue Nile Inc. v. Whois Privacy Protection Services
c/o
Claim Number: FA0910001287218
Complainant is Blue Nile Inc. (“Complainant”), represented by CitizenHawk,
Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <blurnile.com>, registered with Lead Networks Domains Pvt. Ltd.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 1, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 2, 2009.
On October 6, 2009, Lead Networks Domains Pvt. Ltd. confirmed by e-mail to the National Arbitration Forum that the <blurnile.com> domain name is registered with Lead Networks Domains Pvt. Ltd. and that Respondent is the current registrant of the name. Lead Networks Domains Pvt. Ltd. has verified that Respondent is bound by the Lead Networks Domains Pvt. Ltd. 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 October 9, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 29, 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@blurnile.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 4, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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 <blurnile.com> domain name is confusingly similar to Complainant’s BLUENILE mark.
2. Respondent does not have any rights or legitimate interests in the <blurnile.com> domain name.
3. Respondent registered and used the <blurnile.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Blue Nile Inc., is a leading online retailer of certified diamonds and fine jewelry. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the BLUE NILE mark (e.g., Reg. No. 2,450,117 issued May 8, 2001).
Respondent registered the <blurnile.com> domain name on February 4, 2005. Respondent’s disputed domain name resolves to a website displaying third-party links to websites offering online diamond and jewelry sales in competition with Complainant.
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 asserts and has submitted evidence of federal trademark registrations for the BLUE NILE mark with the USPTO (e.g., Reg. No. 2,450,117 issued May 8, 2001). As a result, the Panel finds that Complainant’s federal trademark registration with the USPTO sufficiently establishes Complainant’s rights in the BLUE NILE mark pursuant to Policy ¶ 4(a)(i). See Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i)); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)… .”).
Complainant argues that
Respondent’s <blurnile.com> domain name is confusingly similar to Complainant’s BLUE
NILE mark pursuant to Policy ¶ 4(a)(i).
Respondent’s disputed domain name contains a misspelled version of
Complainant’s mark and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that a disputed domain name that
contains a misspelled version of a complainant’s mark, in this case the
replacement of a “e” with a “r,” fails to distinguish itself and instead
creates a confusing similarity between the disputed domain name and the
complainant’s mark. See Reuters Ltd. v.
Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a
domain name which differs by only one letter from a trademark has a greater
tendency to be confusingly similar to the trademark where the trademark is
highly distinctive); see also Victoria’s
Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding
that, by misspelling words and adding letters to words, a respondent does not
create a distinct mark but nevertheless renders the domain name confusingly
similar to the complainant’s marks). In
addition, the Panel
finds that the addition of a gTLD is irrelevant in distinguishing a disputed
domain name from an established mark. See 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); see
also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding
that the mere addition of the generic top-level domain “.com” is insufficient
to differentiate a disputed domain name from a mark). Therefore, the Panel finds that Respondent’s <blurnile.com> domain name is confusingly similar to Complainant’s
BLUE NILE mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights or legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). 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 Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Complainant contends that Respondent is not commonly known by and has never been licensed to register the <blurnile.com> domain name. The Panel finds that registrant’s WHOIS information demonstrates that Respondent is not commonly known by the disputed domain name. Therefore, pursuant to Policy ¶ 4(c)(ii), Respondent lacks rights and legitimate interests in the disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).
Respondent’s <blurnile.com>
domain name resolves to a website featuring advertisements and links relating
to Complainant’s competitors in the online diamond and jewelry industry.
The Panel may infer that Respondent profits through the generation of
click-through fees from the links to Complainant’s competitors.
Therefore, the Panel finds that Respondent’s use of the disputed domain name is
not in connection with a bona fide offering of goods or services under
Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed
domain name under Policy ¶ 4(c)(iii). See 24 Hour Fitness USA, Inc. v.
24HourNames.com-Quality Domains For
Respondent’s <blurnile.com>
domain name qualifies as typosquatting, given the misspelling of the BLUE NILE
mark. As such, Respondent’s attempt to
capitalize on the typographical errors of Internet users constitutes evidence
that Respondent lacks rights and legitimate interests in the disputed domain
name under Policy ¶ 4(a)(ii). See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14,
2003) (finding that the <ltdcommadities.com>,
<ltdcommmodities.com>, and <ltdcommodaties.com> domain
names were intentional misspellings of Complainant's LTD COMMODITIES mark
and this “‘typosquatting’ is evidence that Respondent lacks rights or
legitimate interests in the disputed domain names”); see also Microsoft Corp. v.
Domain Registration
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <blurnile.com>
domain name resolves to a website that promotes Complainant’s competitors in
the online diamond and jewelry industry through click-through links. Such an activity clearly disrupts
Complainant’s business, as Internet users seeking Complainant’s products will
be redirected to Complainant’s competitors.
This qualifies as bad faith registration and use under Policy ¶ 4(b)(iii). See
Respondent is using the <blurnile.com>
domain name
to intentionally divert Internet users to the associated websites, which
display third-party links to competing websites. In cases such as this, the Panel presumes
that Respondent is collecting click-through fees and attempting to profit by
creating a likelihood of confusion between Complainant’s BLUE NILE mark and the
confusingly similar <blurnile.com> domain name. The Panel finds that Respondent’s use of the
disputed domain name is further evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v.
Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the
respondent engaged in bad faith registration and use by using a domain name
that was confusingly similar to the complainant’s mark to offer links to
third-party websites that offered services similar to those offered by the
complainant); see
also
The Panel has already determined that Respondent has engaged
in typosquatting. The Panel finds this
practice constitutes evidence by itself of bad faith registration and use under
Policy ¶ 4(a)(iii). See, e.g., Nextel Commc’ns
Inc. v. Geer, FA 477183 (Nat.
Arb. Forum July 15, 2005) (finding that the respondent’s registration and use
of the <nextell.com> domain name was in bad faith because the domain name
epitomized typosquatting in its purest form).
Therefore, the Panel finds that Respondent has engaged in bad faith
registration and use under Policy ¶ 4(a)(iii).
See Dermalogica, Inc. v. Domains to Develop, FA
175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that
the <dermatalogica.com> domain name was a “simple misspelling” of the
complainant's DERMALOGICA mark which indicated typosquatting and bad
faith pursuant to Policy 4 ¶ (a)(iii)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <blurnile.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: November 18, 2009
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