national arbitration forum

 

DECISION

 

Macy's West Stores, Inc. v. Above.com Domain Privacy

Claim Number: FA1007001336279

 

PARTIES

Complainant is Macy's West Stores, Inc. (“Complainant”), represented by Chester Rothstein, of Amster, Rothstein & Ebenstein, New York, USA.  Respondent is Above.com Domain Privacy (“Respondent”), Australia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bloomingdalesoutlet.com>, registered with Above.com Pty Ltd.

 

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.

 

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 19, 2010.

 

On July 21, 2010, Above.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <bloomingdalesoutlet.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 July 27, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 16, 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@bloomingdalesoutlet.com.  Also on July 27, 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 August 23, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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" 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <bloomingdalesoutlet.com> domain name is confusingly similar to Complainant’s BLOOMINGDALE’S mark.

 

2.      Respondent does not have any rights or legitimate interests in the <bloomingdalesoutlet.com> domain name.

 

3.      Respondent registered and used the <bloomingdalesoutlet.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Macy's West Stores, Inc., is a national chain of upscale/luxury department stores in the United States.  Complainant owns multiple trademark registrations for the BLOOMINGDALE’S and related marks with the United States Patent and Trademark Office (“USPTO”):

 

Mark                                                    Reg. No.                      Date Issued

BLOOMINGDALE’S                         945,425                       October 17, 1972;

BLOOMINGDALE’S                         1,467,712                    December 1, 1987;

BLOOMINGDALE’S                         1,581,982                    February 6, 1990;

BLOOMINGDALE’S                         1,614,408                    September 18, 1990;

BLOOMINGDALE’S                         2,010,033                    October 22, 1996; and

WWW.BLOOMINGDALES.COM    2,346,849                    May 2, 2000.

 

Respondent, Above.com Domain Privacy, registered the <bloomingdalesoutlet.com> domain name on April 1, 2009.  The disputed domain name resolves to website featuring pay-per-click links to goods competing with those sold by Complainant.

 

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 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.

 

Identical and/or Confusingly Similar

 

Complainant owns multiple trademark registrations for the BLOOMINGDALE’S and related marks with the USPTO.

 

The Panel finds that registering its mark with the USPTO conclusively establishes Complainant’s rights in the BLOOMINGDALE’S mark for the purposes of Policy           ¶ 4(a)(i), regardless of the location of Respondent’s residence or business operations.  See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).

 

Complainant argues that Respondent’s <bloomingdalesoutlet.com> domain name is confusingly similar to Complainant’s BLOOMINGDALE’S mark.  The differences between the disputed domain and the mark are minor and consist only of the deletion of the apostrophe in “Bloomingdale’s” and the addition of the descriptive term “outlet” and the generic top-level domain (“gTLD”) “.com.”  The Panel finds that adding a descriptive term like “outlet,” referring to a new type of store Complainant intends to open, to Complainant’s mark does nothing to lessen the confusing similarity between the disputed domain name and the mark.  See Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent failed to differentiate the <aimprofiles.com> domain name from the complainant’s AIM mark by merely adding the term “profiles”).  The Panel also finds that the removal of the apostrophe and the addition of the gTLD are inconsequential changes that do not create a distinctive domain name separate from Complainant’s mark.  See LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that the omission of an apostrophe did not significantly distinguish the domain name from the mark); see also Daddy’s Junky Music Stores, Inc. v. Kausar, FA 140598 (Nat. Arb. Forum Feb. 11, 2003) (“The lack of an apostrophe in the domain name is not a distinguishing difference because punctuation is not significant in determining the similarity of a domain name and a mark.”); 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 <bloomingdalesoutlet.com> domain name is confusing similar to Complainant’s BLOOMINGDALE’S mark pursuant to Policy ¶ 4(a)(i). 

 

The Panel finds Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name.  Once Complainant has put forth a prima facie case, the burden shifts to Respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  The Panel finds that Complainant has adequately established a prima facie case in these proceedings.  Since Respondent has failed to respond to the allegations against it, the Panel may assume that Respondent lacks any rights or legitimate interests in the disputed domain name.  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 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.”).  However, the Panel will examine the record to determine whether there is any evidence that Respondent owns legitimate rights and interests in the disputed domain name under Policy ¶ 4(c).

 

Complainant asserts that Respondent owns no trademark registrations which are comprised of the <bloomingdalesoutlet.com> domain name, does not do business under that name, and is not commonly known by the disputed domain name.  Complainant further argues that the WHOIS information for the disputed domain name provides no evidence supporting any nominal association between Respondent and the disputed domain name.  The Panel thus finds that Respondent has no rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).  See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent 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 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).

 

Complainant argues that Respondent uses the <bloomingdalesoutlet.com> domain name to direct Internet users to a website featuring a variety of pay-per-click links to third-party websites that sell furniture and other goods sold by Complainant.  As these goods are in competition with Complainant, the Panel finds that this use of the disputed domain name does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(i) or ¶ 4(c)(iii).  ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be 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 pursuant to Policy ¶ 4(c)(iii)); Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).

 

Complainant also alleges that Respondent attempted to sell the <bloomingdalesoutlet.com> via written correspondence on two separate occasions, first for $700 and then for $350.  The Panel finds that offering to sell a disputed domain name for an amount in excess of reasonable compensation reveals that Respondent does not have rights and legitimate interests in the disputed domain name according to Policy         ¶ 4(a)(ii).  See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)). 

 

The Panel finds Policy ¶ 4(a)(ii) has been satisfied.   

 

Registration and Use in Bad Faith

 

Complainant asserts that Respondent registered the <bloomingdalesoutlet.com> domain name in order to attempt to sell it back to Complainant and make a profit.  Complainant alleges that Respondent contacted Complainant via written correspondence two times, offering to sell the disputed domain name first for $700 and then lowering the price to $350 plus escrow fees after the first offer was refused.  The Panel finds that these offers to sell the disputed domain name are evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(i).  See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).

 

Complainant asserts that the links posted at the <bloomingdalesoutlet.com> domain name lead Complainant’s intending customers to other websites where goods competing with Complainant, like furniture, are sold.  Complainant argues that Respondent’s maintenance of the disputed domain name therefore facilitates competition with Complainant and disrupts Complainant’s business.  Accordingly, the Panel finds that Respondent’s registration and use of the <bloomingdalesoutlet.com> domain name reveals bad faith under Policy ¶ 4(b)(iii).  See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).

 

Complainant contends that Respondent’s use of Complainant’s BLOOMINGDALE’S mark in the <bloomingdalesoutlet.com> domain name attracts and confuses Internet users who are searching for Complainant and believe Respondent’s resolving website to be affiliated with Complainant.  Complainant argues that Respondent profits from creating this confusion because the diverted Internet users may click on Respondent’s displayed pay-per-click links, generating revenue for Respondent through click-through fees.  The Panel finds that advertising a list of pay-per-click links at a domain name which confusingly appropriates Complainant’s mark indicates bad faith registration and use according to Policy ¶ 4(b)(iv).  See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“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 Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).

 

The Panel finds Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <bloomingdalesoutlet.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  September 7, 2010

 

 

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