Bath & Body Works Brand Management, Inc. v. Namecheap
Claim Number: FA1008001340802
Complainant is Bath & Body Works Brand Management, Inc. (“Complainant”), represented by Melise R. Blakeslee, of Sequel Technology & IP Law, LLP, Washington D.C., USA. Respondent is Namecheap (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bathandbodyworks-coupons.com>, registered with ENOM, INC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 12, 2010.
On August 16, 2010, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <bathandbodyworks-coupons.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, 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 August 24, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 13, 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@bathandbodyworks-coupons.com by e-mail. Also on August 24, 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 September 23, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <bathandbodyworks-coupons.com> domain name is confusingly similar to Complainant’s BATH & BODY WORKS mark.
2. Respondent does not have any rights or legitimate interests in the <bathandbodyworks-coupons.com> domain name.
3. Respondent registered and used the <bathandbodyworks-coupons.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Bath & Body Works Brand Management, Inc., owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its BATH & BODY WORKS mark (e.g., Reg. No. 1,742,062 issued December 22, 1992). Complainant uses its BATH & BODY WORKS mark in connection with the sale of personal care, beauty, and home fragrance products.
Respondent, Namecheap, registered the <bathandbodyworks-coupons.com> domain name on February 26, 2010. The disputed domain names formerly resolved to a website that contained advertisements unrelated to Complainant’s business. Respondent currently does not make an active use of the disputed 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."
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.
In Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) and Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panels determined that a trademark registration with the USPTO is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). Complainant holds multiple trademark registrations with the USPTO for its BATH & BODY WORKS mark (e.g., Reg. No. 1,742,062 issued December 22, 1992). Therefore, the Panel finds Complainant has established rights in its BATH & BODY WORKS mark for purposes of Policy ¶ 4(a)(i).
Complainant contends that the <bathandbodyworks-coupons.com> domain name is confusingly similar to Complainant’s BATH & BODY WORKS mark. Respondent incorporates Complainant’s mark in the disputed domain name after the replacing of the ampersand with the term “and” and the removal of the spaces in Complainant’s mark, which Complainant contends are not reproducible in a domain name. The Panel agrees with Complainant and determines that these changes fail to sufficiently distinguish the disputed domain name from Complainant’s mark. See Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding that the <wrightandlato.com> domain name is identical to the complainant’s WRIGHT & LATO mark, because the ampersand symbol (&) is not reproducible in a URL); see also 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 the complainant’s mark under Policy ¶ 4(a)(i)). Moreover, Respondent adds a hyphen, the generic term “coupon,” and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. The Panel finds that these additions do not sufficiently distinguish the disputed domain name from Complainant’s mark. See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the addition of a hyphen between terms of a registered mark did not differentiate the <p-zero.org> domain name from the P ZERO mark under Policy ¶ 4(a)(i)); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Based on these findings, the Panel concludes that Respondent’s <bathandbodyworks-coupons.com> domain name is confusingly similar to Complainant’s BATH & BODY WORKS mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent is not affiliated with Complainant and that Complainant has not licensed or permitted Respondent to use Complainant’s BATH & BODY WORKS mark in a domain name, website, or for any other manner. The WHOIS information identifies the registrant of the domain name as “Namecheap,” which the Panel determines is not similar to the <bathandbodyworks-coupons.com> domain name. Respondent has failed to respond to Complainant’s assertions and, after an examination of the record, the Panel concludes that Respondent is not commonly known by the <bathandbodyworks-coupons.com> domain name under Policy ¶ 4(a)(i). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent formerly used the <bathandbodyworks-coupons.com> domain name to resolve to a website that contained Complainant’s BATH & BODY WORKS mark and featured pictures relating to Complainant’s products. At the website resolving from Respondent’s disputed domain name, Respondent featured advertisements unrelated to Complainant’s business. In Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) and Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006), previous panels held that a respondent’s use of a confusingly similar disputed domain name to feature advertisements unrelated to a complainant was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of a disputed domain name pursuant to Policy ¶ 4(c)(iii). Based on this past precedent, the Panel concludes that Respondent’s former use of the <bathandbodyworks-coupons.com> domain name did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Respondent currently fails to make an active use of the <bathandbodyworks-coupons.com> domain name. The Panel finds that Respondent’s failure to make an active use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <bathandbodyworks-coupons.com> domain name pursuant to Policy ¶ 4(c)(iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s failure to associate content with its disputed domain name evinces a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s former use of the disputed domain name to resolve to a website containing advertisements unrelated to Complainant’s business likely generated revenue for Respondent through the receipt of click-through fees. Respondent’s use of the confusingly similar <bathandbodyworks-coupons.com> domain name may have caused Internet users to become confused as to Complainant’s affiliation with the former website and disputed domain name. Respondent’s attempt to commercially profit from this confusion constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)).
Respondent’s <bathandbodyworks-coupons.com> domain name does not resolve to an active website. In DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) and Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000), the prior panels concluded that a failure to make an active use is evidence of bad faith registration and use. Similarly, the Panel determines that Respondent’s failure to make an active use of the <bathandbodyworks-coupons.com> domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bathandbodyworks-coupons.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: September 30, 2010
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