BBY Solutions, Inc. v. Ratana Termapsri
Claim Number: FA1102001372098
Complainant is BBY Solutions, Inc. (“Complainant”), represented by Karla S. Lambert of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is Ratana Termapsri (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bestbuyipadtablet.com> and <bestbuycheapsale.com>, registered with GoDaddy.com, Inc.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 9, 2011; the National Arbitration Forum received payment on February 11, 2011.
On February 10, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <bestbuyipadtablet.com>and <bestbuycheapsale.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 February 11, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 3, 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@bestbuyipadtablet.com, postmaster@bestbuycheapsale.com. Also on February 11, 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 March 9, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <bestbuyipadtablet.com> and <bestbuycheapsale.com> domain names are confusingly similar to Complainant’s BEST BUY mark.
2. Respondent does not have any rights or legitimate interests in the <bestbuyipadtablet.com> and <bestbuycheapsale.com> domain names.
3. Respondent registered and used the <bestbuyipadtablet.com> and <bestbuycheapsale.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, BBY Solutions, Inc., is the owner of the BEST BUY mark. Complainant’s mark has been used since 1983 in connection with operating retail stores and providing consumer electronics and appliances. Complainant holds a number of trademark registrations for its BEST BUY mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,416,626 issued April 29, 2008).
Respondent, Ratana Termapsri, registered the <bestbuycheapsale.com> domain name on January 26, 2010 and the <bestbuyipadtablet.com> domain name on February 6, 2010. The disputed domain names resolve to directory websites which feature links to third-party commercial retailers in direct competition with Complainant’s sale of electronics.
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 rights in the BEST BUY mark. Previous panels have found that a complainant can establish rights in a mark through federal trademark registration. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”) The Panel finds that Complainant is not required to register its mark within the country of Respondent’s residence or operation. See 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); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Here, Complainant holds a number of trademark registrations for its BEST BUY mark with the USPTO (e.g., Reg. No. 3416626 issued April 29, 2008). The Panel finds that Complainant has demonstrated its rights in the BEST BUY mark through its trademark registration, pursuant to Policy ¶ 4(a)(i).
Complainant argues that Respondent’s disputed domain names are confusingly similar to Complainant’s BEST BUY mark . The disputed domain names use Complainant’s mark in its entirety and differ only by adding the descriptive words “ipad tablet” and “cheap sale,” referencing Complainant’s business in retail and in selling electronics, removing a space, and adding the generic top-level domain (“gTLD”) “.com.” The Panel finds that the use of descriptive words insufficiently distinguishes the disputed domain name from Complainant’s mark. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”); 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.”); 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).
The Panel finds that the requirements of Policy ¶ 4(a)(i) have been met.
The Panel finds that Complainant has met its burden of proof by making a prima facie case against Respondent showing that it lacks rights or legitimate interests in the disputed domain names. Previous panels have determined that once Complainant has met its prima facie burden, the onus then shifts to Respondent to show that it has rights or legitimate interests in the disuted domain names. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). In this case, Respondent has failed to rebut the prima facie case made by Complainant and has failed to file a response in the matter which allows this Panel to assume that it lacks any rights of legitimate interests in the disputed domain names. 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.”). Nonetheless, the Panel will examine the entire record before making a determination on Respondent’s rights or legitimate interests in the disputed domain names according to the factors listed in Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the <bestbuyipadtablet.com> and <bestbuycheapsale.com> domain names. Respondent has offered no evidence to support a finding that it is commonly known by the disputed domain names. The WHOIS information identifies registrant as “Ratana Termapsri.” Based on the evidence in the record, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See 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); 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 also asserts that Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain names. The disputed domain names resolve to a directory site offering links to third-party sites, many of which are Complainant’s competitors. It is presumed that Respondent collects click-through revenue from the linked sites. The Panel finds that this usage does not constitute a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant 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)).
The Panel finds that the requirements of Policy ¶ 4(a)(ii) have been met.
Complainant contends that Respondent’s use of the <bestbuyipadtablet.com> and <bestbuycheapsale.com> domain names disrupt its business constituting bad faith use and registration. Respondent’s disputed domain names resolve to a site that offers links to third-party sites which compete directly with Complainant’s business. Internet users may become confused when they use Respondent’s confusingly similar domain names and arrive at a linked site where they may purchase products from Complainant’s competitors rather than Complainant. The Panel finds that the aforementioned use does disrupt Complainant’s business constituting bad faith registration and use on the part of Respondent 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 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).
Complainant also contends that Respondent is using the disputed domain names for its own commercial gain, constituting bad faith registration and use. Respondent, as mentioned prior, offers a list of links to Complainant’s competitors from its own site. Based on this use, it is presumed that Respondent receives a click-through fee for each diverted Internet user from the linked sites when an Internet user clicks on the one of its links. Thus, the Panel finds that Respondent’s use of the disputed domain names for its own commercial gain does constitute bad faith registration and use under 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 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)).
The Panel finds that the requirements of Policy ¶ 4(a)(iii) have been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bestbuyipadtablet.com> and <bestbuycheapsale.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: March 10, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page