Blue Nile Inc. v. Barry Kaplan
Claim Number: FA0911001296053
Complainant is Blue Nile Inc. (“Complainant”), represented by CitizenHawk,
Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <blueniel.com>, registered with Godaddy.com, 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
On
On
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 28, 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, founded in 1999, sells certified diamonds and fine jewelry online.
Complainant holds registrations of the BLUE NILE trademark with
the United States Patent and Trademark Office (“USPTO”) (e.g.: Reg. No.
2,450,117, issued
Respondent has no license or agreement with Complainant authorizing Respondent to use its BLUE NILE mark.
Respondent registered the <blueniel.com>
domain name on
The disputed domain name resolves to a website displaying links to third-party websites, some of which are Complainant’s direct business competitors.
Respondent’s <blueniel.com> domain name is confusingly similar to Complainant’s BLUE NILE mark.
Respondent does not have any rights to or legitimate interests in the <blueniel.com> domain name.
Respondent registered and uses the <blueniel.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 its BLUE NILE trademark
under Policy ¶ 4(a)(i) via registration of the mark
with the USPTO. See Miller Brewing
Respondent’s <blueniel.com>
domain name varies from Complainant’s BLUE NILE mark by (1) removing the space
between the words of the mark, (2) transposing the letters “e” and “l” in the
mark, and (3) adding the generic top-level domain (“gTLD”) “.com.” These insignificant changes create a domain
name that is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Bond &
Co. Jewelers, Inc. v.
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(i).
Pursuant to Policy
¶ 4(a)(ii), Complainant must first establish a prima
facie case that Respondent has no rights to or legitimate interests in the <blueniel.com> domain name. Once
that is done, the burden shifts to Respondent to show that it does indeed have
rights to or legitimate interests in the disputed domain name. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb.
Forum
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.
Complainant’s allegations are sufficient to establish a prima facie case that Respondent has no
rights to or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). And, because
no response was submitted in this case, we may presume, without more, that
Respondent has no rights to or legitimate interests in
the disputed domain name. See G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum
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).
We will nonetheless examine the record before us, in consideration of the factors listed in Policy ¶ 4(c), to determine if there is in it any basis for concluding that Respondent has rights or interests in the contested domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent
does not deny, that Respondent has no license or agreement with Complainant
authorizing Respondent to use its BLUE NILE mark. We also observe that the pertinent
WHOIS information identifies the registrant of the contested domain name only as
“Barry Kaplan.” From this we conclude that Respondent is not
commonly known by the <blueniel.com>
domain name and has therefore not established rights or legitimate interests in
the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee
Yi, FA 139720 (Nat. Arb. Forum
We next consider that there is no dispute as to Complainant’s
allegation to the effect that Respondent’s <blueniel.com>
domain name resolves to a website that offers links to third-party websites,
some of which are business competitors of Complainant. This use of the disputed domain name is 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 the domain name pursuant to Policy
¶ 4(c)(iii). See TM
Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum
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).
Finally under this head, typo-squatting occurs when a
respondent purposefully includes typographical errors in the mark portion of a
disputed domain name to divert Internet users who commit those typographical
errors. The disputed domain name is an example of
typo-squatting in that it plainly takes advantage of Internet users who inadvertently
mistype Complainant’s BLUE NILE mark.
This is further evidence that Respondent does not have rights to or
legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See LTD Commodities LLC v. Party
Night, Inc., FA 165155 (Nat. Arb. Forum
The Panel thus finds that Complainant has satisfied its obligations under Policy ¶ 4(a)(ii).
We have already concluded that Respondent is using the <blueniel.com> domain name to
redirect Internet users to Respondent’s website, which features links to
third-party sites. The links listed on
the resolving website include “Unique Engagement Rings,” “Penny Preville
Jewelry,” and “Ring diamonds.” The
businesses associated with these links directly compete with Complainant’s jewelry
business. The Panel finds that such use
constitutes disruption and is evidence of bad faith registration and use of the
contested domain name pursuant to Policy ¶ 4(b)(iii). See S.
Exposure v. S. Exposure, Inc., FA 94864 (Nat.
Arb. Forum
Respondent registered a domain name confusingly similar to
Complainant's mark to divert Internet users to a competitor's website. It is a
reasonable inference that Respondent's purpose of registration and use was to
either disrupt or create confusion for Complainant's business in bad faith
pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).
In the circumstances
here presented, we may infer that Respondent receives click-through fees for
diverting Internet users to third-party websites as alleged in the Complaint. Because Respondent’s domain name is
confusingly similar to Complainant’s BLUE NILE mark, Internet users accessing Respondent’s
disputed domain name may become confused as to Complainant’s possible affiliation
with the resolving website. Thus
Respondent’s use of the <blueniel.com>
domain name constitutes bad faith
registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb.
Forum
Respondent’s practice of typo-squatting is also evidence
that Respondent registered and is using the <blueniel.com>
domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
See Zone Labs, Inc.
v. Zuccarini, FA 190613 (Nat. Arb. Forum
Respondent’s
registration and use of [the <zonelarm.com> domain name] that capitalizes
on the typographical error of an Internet user is considered typosquatting.
Typosquatting, itself is evidence of bad faith registration and use pursuant to
Policy ¶ 4(a)(iii).
See also K.R. USA, INC. v. SO SO
DOMAINS, FA 180624 (Nat. Arb. Forum
For all of these reasons, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
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 <blueniel.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 11, 2010
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