Bath & Body Works Brand Management, Inc. v. Transure Enterprise Ltd c/o Host Master
Claim Number: FA1003001313048
Complainant is Bath & Body Works Brand Management, Inc. (“Complainant”), represented by Melise
R. Blakeslee, of Sequel Technology & IP Law, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <bathandbodywokrs.com>, registered with Above.com Pty Ltd.
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 March 11, 2010.
On March 15, 2010, Above.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <bathandbodywokrs.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty 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 March 22, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 12, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@bathandbodywokrs.com. Also on March 22, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 15, 2010, 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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 owner of the Bath & Body Works chain
of 1,600 stores throughout the
Complainant owns several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its BATH & BODY WORKS mark (including Reg. No. 1,742,062, issued on December 22, 1992).
Complainant has not granted Respondent permission to use Complainant’s mark.
Respondent registered the <bathandbodywokrs.com> domain name on May 6, 2008.
Respondent’s domain name resolves to a website that displays links to third-party websites which operate in competition with the business of Complainant.
Respondent collects referral fees for the links displayed on the website resolving from the <bathandbodywokrs.com> domain name.
Respondent’s domain name is confusingly similar to Complainant’s BATH & BODY WORKS mark.
Respondent is not commonly known by the disputed domain name.
Respondent does not have any rights to or legitimate interests in the domain name <bathandbodywokrs.com>.
By using a common misspelling of Complainant’s BATH & BODY WORKS mark in the formation of the disputed domain name, Respondent is taking advantage of Internet users who are trying to reach Complainant’s website.
Respondent’s use of the disputed domain name as described results in a loss of business for Complainant because some Internet users will inevitably buy products from an enterprise in competition with Complainant which is advertised on Respondent’s website.
Respondent registered and uses the disputed <bathandbodywokrs.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 its rights in the BATH &
BODY WORKS trademark pursuant to Policy ¶ 4(a)(i)
through its registration of the mark with the USPTO. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that a complainant’s
registration of the CHEAPTICKETS trademark was adequate to establish its rights
in the mark pursuant to Policy ¶ 4(a)(i)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25,
2007) (finding that it is irrelevant whether a complainant has registered its
trademark in the country of a respondent’s residence).
Respondent’s <bathandbodywokrs.com> domain name contains a commonly misspelled version of Complainant’s mark, created by transposing the letters “r,” and “k” in the word “works” and by deleting the spaces between the words. Neither this device nor Respondent’s use of the word “and” rather than the ampersand symbol found in the competing mark is sufficient to distinguish the resulting domain name from the mark. Similarly, the addition of the generic top-level domain (“gTLD”) “.com” to the mark in forming the domain name does not remove the disputed domain name from the realm of confusing similarity. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007), finding that:
spaces are
impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain
names. Therefore, the panel finds that
the disputed domain name … is confusingly similar to the complainant’s
[AMERICAN GENERAL] mark.
See also Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding that the <wrightandlato.com> domain name is identical to a complainant’s WRIGHT & LATO mark, because the ampersand symbol (&) is not reproducible in a URL); further see Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding the domain name <googel.com> to be confusingly similar to a complainant’s GOOGLE mark, and noting that:
[t]he
transposition of two letters does not create a distinct mark capable of
overcoming a claim of confusing similarity, as the result reflects a very
probable typographical error.
Finally, 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).
The Panel therefore finds that Respondent’s <bathandbodywokrs.com> domain name is
confusingly similar to Complainant’s BATH & BODY WORKS mark pursuant to
Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have any rights to or legitimate interests in the <bathandbodywokrs.com> domain name. Complainant is required to make out a prima facie case in support of these allegations. Once Complainant has produced a prima facie case, the burden of proof shifts to Respondent to show that it has rights to or legitimate interests in the <bathandbodywokrs.com> domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that:
[C]omplainant
must first make a prima facie case
that respondent lacks rights and legitimate interests in the disputed domain
names under Policy ¶ 4(a)(ii), and then the burden
shifts to respondent to show it does have rights or legitimate interests.
See also 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 has produced a prima facie case. Owing to
Respondent’s failure to respond to these proceedings, we may presume that Respondent
does not have any rights to or legitimate interests in the disputed domain
name. See 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.
See also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests in a contested domain name where a respondent fails to respond to a complaint filed under the Policy).
Nonetheless, we will examine the record before us, by reference to the criteria set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
Complainant assert that it has not
granted to Respondent permission to use Complainant’s trademark. Further, Complainant contends that Respondent
is not commonly known by the disputed domain name. Respondent does not deny these allegations.
Moreover, the WHOIS
information for the <bathandbodywokrs.com> domain name does not
indicate that Respondent is commonly known by the disputed domain name. On this record we are constrained to conclude
that Respondent is not commonly known by the contested domain name so as to
have established rights to or legitimate interests in the domain by virtue of
the provisions of Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec.
7, 2006) (finding that s respondent failed to establish rights or legitimate
interests in the <emitmortgage.com> domain name where that respondent was
not authorized to register domain names featuring a complainant’s mark and
failed to submit evidence that it was commonly known by the disputed domain
name); see
also Coppertown Drive-Thru Sys.,
LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding
that a respondent was not commonly known by the <coppertown.com> domain
name where there was no evidence in the record, including the relevant WHOIS
information, suggesting that that respondent was commonly known by the disputed
domain name).
Complainant also
alleges, without objection from Respondent, that Respondent’s <bathandbodywokrs.com> domain name resolves to a
website displaying links to the websites that compete with the business of Complainant,
and that Respondent collects referral fees for the links displayed on the
website resolving from the contested domain name. Respondent’s use of the <bathandbodywokrs.com>
domain name to benefit commercially in the manner alleged is not a use in
connection with a bona fide offering
of goods or services under Policy ¶ 4(c)(i) or a noncommercial or fair use
under Policy ¶ 4(c)(iii). See Expedia,
Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005)
(finding that a respondent’s use of the <expediate.com> domain name to
redirect Internet users to a website featuring links to travel services that
competed with the business of a complainant was not 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 also Jerry Damson, Inc. v.
Finally under this head of the Complaint, Complainant argues
that, in forming the disputed domain name, Respondent is taking advantage of
Internet users who are trying to reach Complainant’s website by using a common
misspelling of Complainant’s BATH & BODY WORKS mark. Respondent does not
deny this allegation, which can be characterized as an assertion of
“typo-squatting.” Respondent’s use of typo-squatting
stands as evidence that Respondent lacks rights to or legitimate interests in
the disputed domain name under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain
Registration
Therefore, the Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).
We have already concluded that Respondent’s <bathandbodywokrs.com> domain name
resolves to a website displaying links to the sites of enterprises that are in
competition with the business of Complainant.
Complainant contends that Respondent’s use of the disputed domain name as
alleged results in a loss of business for Complainant, because some Internet
users will inevitably buy product from a competing business being advertised on
Respondent’s website. Respondent does
not contest this assertion. We conclude, therefore, that Respondent’s use of
the <bathandbodywokrs.com>
domain name to display third-party links to the competitors of Complainant is
evidence of Respondent’s bad faith registration and use of the disputed domain
name pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982
(Nat. Arb. Forum Feb.
13, 2007) (concluding that the use of a contested domain name to attract
Internet users to a website containing links to the websites of a complainant’s
commercial competitors represents bad faith registration and use of the domain under
Policy ¶ 4(b)(iii)); see also David
Hall Rare Coins v.
Additionally, Respondent’s use of the disputed domain name
to attract Internet users to its website, by which it presumably receives
referral fees in relation to the third-party links displayed thereon, is also
evidence of bad faith registration and use of the domain under Policy ¶ 4(b)(iv). See
Respondent is using the disputed domain name
to operate a website which features links to competing and non-competing
commercial websites from which Respondent presumably receives referral
fees. Such use for Respondent’s own
commercial gain is evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(iv).
See also 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 of a domain name that was confusingly similar to a complainant’s mark by using it to display links to third-party websites offering services similar to those offered by that complainant).
Finally, Respondent has engaged in typo-squatting by its registration and use of the <bathandbodywokrs.com> domain name, which was plainly created by the device of employing a common misspelling of Complainant’s mark. This practice has been found by previous UDRP panels to constitute evidence of bad faith registration and use of a domain name under Policy ¶ 4(a)(iii), and we agree. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that a respondent engaged in typo-squatting, which is evidence of bad faith registration and use of a domain name under Policy ¶ 4(a)(iii)); see also The Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004):
By engaging in typosquatting, [r]espondent has registered and used the
<vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
For all of these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
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 <bathandbodywokrs.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 27, 2010
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