national arbitration forum

 

DECISION

 

Blue Nile Inc. v. Barry Kaplan

Claim Number: FA0911001296053

 

PARTIES

Complainant is Blue Nile Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA.  Respondent is Barry Kaplan (“Respondent”), New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <blueniel.com>, registered with Godaddy.com, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 24, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 25, 2009.

 

On November 24, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <blueniel.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name.  Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 November 30, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 21, 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@blueniel.com by e-mail.

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

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 May 8, 2001).

 

Respondent has no license or agreement with Complainant authorizing Respondent to use its BLUE NILE mark.

 

Respondent registered the <blueniel.com> domain name on August 19, 2003. 

 

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.

 

FINDINGS

(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.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

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 Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that a complainant had established rights to the MILLER TIME mark through its USPTO trademark registrations); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that a complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).

 

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. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from a complainant’s mark under Policy ¶ 4(a)(i); see also Delta Corporate Identity, Inc. v. SearchTerms, FA 590678 (Nat. Arb. Forum Dec. 14, 2005) (concluding that the <dleta.com> domain name is confusingly similar to a complainant’s DELTA mark).

 

The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

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 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.

 

 

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 Oct. 1, 2002):

 

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 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.”

 

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 Dec. 31, 2002) (finding that a respondent’s diversionary use of a complainant’s marks to send Internet users to a website which displayed a series of links, some of which resolved to that complainant’s business competitors, was not a bona fide offering of goods or services); see also 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).

 

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 Aug. 14, 2003) (finding that the domain names <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> were intentional misspellings of a complainant's LTD COMMODITIES mark and that this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”); see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that a respondent lacked rights to and legitimate interests in disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”).

 

The Panel thus finds that Complainant has satisfied its obligations under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

 

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 July 18, 2000) (finding that a respondent acted in bad faith by attracting Internet users to a website that competed with a complainant’s business); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003):

 

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 Nov. 21, 2002) (finding that a respondent registered and used a domain name in bad faith pursuant to Policy ¶ 4(b)(iv) where that respondent used a domain name confusingly similar to a complainant’s mark to attract Internet users to that respondent’s commercial website); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent’s domain name resolved to a website featuring links to third-party websites that offered services similar to a complainant’s services).

 

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 Oct. 15, 2003):

 

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 Sept. 18, 2003) (finding that a respondent’s registration and use of the <philadelphiaenquirer.com> and <tallahassedemocrat.com> domain names capitalized on the typographical errors of Internet users seeking a complainant's THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks, thus evidencing bad faith in the form of typo-squatting pursuant to Policy ¶ 4(a)(iii)).

 

For all of these reasons, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

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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