BBY Solutions, Inc. v. Juga Fish
Claim Number: FA1005001326155
Complainant is BBY
Solutions, Inc. (“Complainant”), represented by Brandon M. Ress of Fulbright & Jaworski L.L.P.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <bextbuy.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically May 21, 2010.
On May 25, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <bextbuy.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and thereby has 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 4, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 24, 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@bextbuy.com. Also on June 4, 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 June 30, 2010l, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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" 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:
1. Respondent’s <bextbuy.com> domain name is confusingly similar to Complainant’s BESTBUY.COM mark.
2. Respondent has no rights to or legitimate interests in the <bextbuy.com> domain name.
3. Respondent registered and used the <bextbuy.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, BBY Solutions, Inc., operates retail stores offering consumer electronics and appliances. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the BEST BUY marks:
BESTBUY.COM Reg. No. 2,638,360 filed October 4, 2000,
issued October 22, 2002;
BEST BUY Reg. No. 2,539,223 issued February 19, 2002;
BEST BUY Reg. No. 3,416,626 issued April 29, 2008; and
BEST BUY MOBILE Reg. No. 3,526,666 issued November 4, 2008.
Respondent, Juga Fish, registered the <bextbuy.com> domain name September 6, 2001. The disputed domain name redirects Internet users to the <ebay.com> domain name homepage, passing through the <www.aircanada.org> domain name.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 owns multiple trademark registrations with the USPTO for the BEST BUY marks:
BESTBUY.COM Reg. No. 2,638,360 filed October 4, 2000,
issued October 22, 2002;
BEST BUY Reg. No. 2,539,223 issued February 19, 2002;
BEST BUY Reg. No. 3,416,626 issued April 29, 2008; and
BEST BUY MOBILE Reg. No. 3,526,666 issued November 4, 2008.
The Panel finds that Complainant’s registration of its
BESTBUY.COM mark with the USPTO adequately proves its rights in the mark under
Policy ¶ 4(a)(i), even when Respondent lives or operates
in a different country. See Intel Corp. v. Macare, FA 660685 (Nat.
Arb. Forum Apr. 26, 2006) (finding that the complainant had established
rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks
with the USPTO); see also Renaissance
Hotel Holdings, Inc. v. Renaissance
The Panel also finds that Complainant’s rights in the mark
date back to the filing date of the trademark application. See Hershey
Complainant contends that Respondent’s <bextbuy.com> domain name is confusingly similar to Complainant’s BESTBUY.COM mark because the disputed domain name differs from Complainant’s mark by only one letter: the letter “s” has been replaced with the letter “x.” The Panel finds that misspelling Complainant’s mark and changing only one letter, especially when the letter is phonetically similar and adjacent to the original letter’s position on the QWERTY keyboard, is insufficient to prevent confusing similarity according to Policy ¶ 4(a)(i). 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 Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”). The Panel finds, therefore, that Respondent’s <bextbuy.com> domain name is confusingly similar to Complainant’s BESTBUY.COM mark.
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Policy ¶ 4(a)(ii) requires Complainant to make a prima facie case showing that Respondent lacks rights and legitimate interests in the disputed domain name. In this proceeding, the Panel finds that Complainant made a prima facie showing against Respondent and the burden of proof shifts to Respondent to demonstrate that it does have such rights and legitimate interests in the disputed domain name. Respondent has not contested Complainant’s allegations. The Panel accordingly is permitted to make an inference that Complainant’s contentions are true as stated and that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”); see also Compañia de Radiocomunicaciones Móviles S.A. v. Bolinhas, D2000-0915 (WIPO Oct. 5, 2000) (finding that because Respondent defaulted and did not demonstrate that it had any rights or legitimate interests, the “Panel assumes that there were no other motives for Respondent having registered the three domain names at issue but Respondent’s actual or most likely knowing of the famous or well known marks MOVICOM and BELL SOUTH”).
This Panel elects, however, to examine the evidence presented in the record to see if any evidence suggests that Respondent has such rights using the Policy ¶ 4(c) factors.
Complainant contends that Respondent is not commonly known
by the <bextbuy.com> domain
name. Complainant asserts that
Respondent operates no business under that name and has no connection with
Complainant’s BESTBUY.COM mark.
Additionally, the WHOIS information for the disputed domain name indicates
that the registrant of the disputed domain name is “Juga Fish,” revealing no
apparent association between Respondent and the disputed domain name. The Panel thus finds that, pursuant to Policy
¶ 4(c)(ii), Respondent is not commonly known by the
disputed domain name and has no rights and legitimate interests in the disputed
domain name. See Instron
Corp. v. Kaner, FA
768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the
respondent was not commonly known by the <shoredurometer.com> and
<shoredurometers.com> domain names because the WHOIS information listed
Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of
the disputed domain names and there was no other evidence in the record to
suggest that the respondent was commonly known by the domain names in dispute);
see also G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of
Complainant’s mark there must be strong evidence that Respondent is commonly
known by the disputed domain name in order to find that Respondent has rights
or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). However, there is no evidence
on record, and Respondent has not come forward with any proof to establish that
it is commonly known as CELEBREXRX or <celebrexrx.com>.”).
Complainant further urges that Respondent uses the <bextbuy.com> domain name to redirect
Internet users to the <ebay.com> domain name via the
<www.aircanada.org> domain name.
Complainant alleges that Respondent earns revenue as a member of <ebay.com>’s
affiliate program, profiting each time an Internet user is directed to the
<ebay.com> domain name. The Panel
finds that using the <bextbuy.com>
domain name to redirect Complainant’s customers for profit as part of a third
party’s affiliate program is not a bona
fide offering of goods or services according to Policy ¶ 4(c)(i) and it is
not a legitimate noncommercial or fair
use under Policy ¶ 4(c)(iii). See
Complainant
contends that, since the <bextbuy.com>
domain name differs from Complainant’s mark by only one letter, the disputed
domain name was intentionally registered to take advantage of frequent
typographical errors made by Internet users when searching for Complainant’s
BESTBUY.COM mark. The Panel finds that
the only value of the disputed domain name comes from its association with and
similarity to Complainant’s mark, indicating that Respondent’s registration of
the disputed domain name constitutes typosquatting and fails to give Respondent
rights and legitimate interests in the disputed domain name. See IndyMac Bank
F.S.B. v. Ebeyer, FA
175292 (Nat. Arb. Forum Sept.
19, 2003) (finding that the respondent lacked rights and legitimate interests in
the 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’”); see also 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”).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s <bextbuy.com> domain name diverts
Complainant’s customers to the <ebay.com> domain name where Complainant
has the option to purchase electronics and appliances that compete with those
offered by Complainant. The Panel finds
that Respondent’s diversion of Complainant’s customers constitutes an attempt
to disrupt Complainant’s business.
Respondent’s use of Complainant’s mark in the disputed domain name makes
competing products and websites available to Complainant’s customers from
another source although they were searching for Complainant and intending to
reach Complainant’s site. The Panel
finds that Respondent’s activities support findings of bad faith registration
and use pursuant to Policy ¶ 4(b)(iii). See
EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the
respondent registered and used the domain name <eebay.com> in bad faith
where the respondent has used the domain name to promote competing auction
sites); see
also Puckett, Individually v.
Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has
diverted business from the complainant to a competitor’s website in violation
of Policy ¶ 4(b)(iii)).
Complainant alleges that
Respondent is a member of <ebay.com>’s affiliate program, earning a
commission or affiliate fee each time Respondent directs an Internet user to
the <ebay.com> domain name.
Complainant asserts that by using a variation of Complainant’s
BESTBUY.COM mark as the <bextbuy.com>
domain name, Respondent is trading off the fame of Complainant’s mark to
attract customers to Respondent’s disputed domain name, which will subsequently
divert them to the <ebay.com> and profit Respondent. The Panel finds that appropriating
Complainant’s mark in this manner to attract customers and to commercially gain
from their unintentional mistakes in typing also supports findings of bad faith
registration and use for the purposes of Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v.
Aston, FA 593977 (Nat. Arb.
Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the
complainant’s mark in a confusingly similar domain name for commercial gain,
which is evidence of bad faith registration and use pursuant to Policy
¶4(b)(iv).”); see also Gardens Alive, Inc. v. D&S
Linx, FA 203126 (Nat. Arb. Forum Nov. 20,
2003) (“Respondent registered and used the <my-seasons.com> domain name
in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv) because Respondent is
using a domain name that is confusingly similar to the MYSEASONS mark for
commercial benefit by diverting Internet users to the <thumbgreen.com>
website, which sells competing goods and services.”).
The Panel has previously concluded
that Respondent’s registration of a domain name differing by only one letter
from Complainant’s mark constitutes typosquatting. As typosquatting is an effort to
intentionally profit from unintentional and common typing mistakes, the Panel
finds that registration of the typosquatted <bextbuy.com> domain name is evidence of bad faith registration
and use according to Policy ¶ 4(a)(iii). See Canadian
Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111,
D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and
used the domain name in bad faith because the respondent “created ‘a likelihood
of confusion with the complainant’s mark as to the source, sponsorship,
affiliation, or endorsement of the Respondent’s web site or location’. . .
through Respondent’s persistent practice of ‘typosquatting’”); 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).”).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bextbuy.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: July 12, 2010
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