Bath & Body Works Brand Management, Inc. v. BPN c/o George Cristea
Claim Number: FA1101001369442
Complainant is Bath & Body Works Brand Management, Inc. (“Complainant”), represented by Melise R. Blakeslee of Sequel Technology & IP Law, PLLC, Washington D.C., USA. Respondent is BPN c/o George Cristea (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bathandbodyworkscouponcodes.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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 24, 2011; the National Arbitration Forum received payment on January 25, 2011.
On January 25, 2011, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <bathandbodyworkscouponcodes.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the names. ENOM, INC. has verified that Respondent is bound by the ENOM, INC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 26, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 15, 2011 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@bathandbodyworkscouponcodes.com. Also on January 26, 2011, 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 February 17, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <bathandbodyworkscouponcodes.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 <bathandbodyworkscouponcodes.com> domain name.
3. Respondent registered and used the <bathandbodyworkscouponcodes.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Bath & Body Works Brand Management, Inc., owns the exclusive rights to the BATH & BODY WORKS mark which it uses in association with its retail stores, selling a wide variety of products bearing the BATH & BODY WORKS marks. Complainant holds numerous 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 has also registered the BATH & BODY WORKS mark in Romania (Reg. No. R18923 issued May 19, 1992).
Respondent, BPN c/o George Cristea, registered the <bathandbodyworkscouponcodes.com> domain name on July 7, 2009. The disputed domain name resolves to a website featuring advertisements both related and unrelated to Complainant. The disputed domain name also displays pay-per-click links and a bar which tells Internet users to enter their email address for additional coupons.
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.
Complainant contends that it has established rights in the BATH & BODY WORKS mark. The Panel finds trademark registrations with a federal trademark authority to be sufficient in establishing rights in a mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of 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). Further, Complainant holds a trademark registration for its BATH & BODY WORKS mark in Romania (Reg. No. R18923 issued May 19, 1992). Accordingly, the Panel finds that Complainant has established rights in the BATH & BODY WORKS mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <bathandbodyworkscouponcodes.com> domain name is confusingly similar to Complainant’s BATH & BODY WORKS mark. The disputed domain name contains Complainant’s entire BATH & BODY WORKS mark, removes the spaces between the words in the mark, substitutes the word ‘and’ in place of the ampersand, adds the generic terms “coupon” and “codes,” and adds the generic top-level domain (“gTLD”) “.com.” Previous panels have found that the removal of spaces and the addition of a gTLD are not sufficient in distinguishing a disputed domain name from a mark. Earlier panels have also asserted that the addition of generic terms does not negate confusing similarity between a famous mark and a disputed domain name. And finally, preceding panels have determined that the replacement of an ampersand with the word ‘and’ is irrelevant to a Policy ¶ 4(a)(i) analysis because the ‘&’ symbol cannot be reproduced in a domain name. 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 [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names); see also 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). Therefore, the Panel concludes that Respondent’s <bathandbodyworkscouponcodes.com> domain name is confusingly similar to Complainant’s BATH & BODY WORKS mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <bathandbodyworkscouponcodes.com> domain name. Previous panels have found that once a complainant makes a prima facie case in support of its allegations, the burden of proof shifts to the respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has made a prima facie case. Because Respondent has failed to respond to the complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the <bathandbodyworkscouponcodes.com> 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 Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint). Nonetheless, the Panel will examine the record to determine if Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
When there is no evidence in the record to suggest that a respondent has been commonly known by a disputed domain name, previous panels have found that said respondent does not have rights or legitimate interests under Policy ¶ 4(c)(ii). In this instance, the WHOIS information identifies the domain name registrant as “BPN c/o George Cristea.” Complainant asserts that Respondent is not authorized to use its BATH & BODY WORKS mark, nor has Respondent submitted any evidence to show that it has been commonly known by the <bathandbodyworkscouponcodes.com> domain name. Thus, the Panel finds that Respondent has not established rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See 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); see also 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).
Respondent uses the disputed domain name to display advertisements and click-through links both related, and unrelated, to Complainant. The Panel finds that this does 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). See Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (holding that the respondent’s use of the <hpcanada.com> domain name to post links to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that at least some of the advertisements displayed at the disputed domain name are of Complainant’s competitors. The Panel finds this to constitute a disruption of Complainant’s business and to be evidence of bad faith registration and use under 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 confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also 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).
Respondent takes advantage of the confusingly similarity of the disputed domain name to Complainant’s mark to attract Internet users presumably seeking Complainant’s official site, or at least, a site directly related to Complainant. Respondent likely profits when Internet users click on the links or advertisements displayed at the disputed domain name. The Panel finds that the creation of confusion in an attempt to commercially gain by Respondent falls under bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website” in holding that the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)).
The Panel finds Policy ¶ 4(a)(iii) is 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 <bathandbodyworkscouponcodes.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: March 4, 2011
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