BBY Solutions, Inc. v. Cybidea, Inc.
Claim Number: FA1103001380735
Complainant is BBY Solutions, Inc. (“Complainant”), represented by Brandon M. Ress of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is Cybidea, Inc. (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <http-www-bestbuy.com>, <wvvw-bestbuy.com>, <bestbhy.com>, <www-bestbuystores.com>, and <www-best-buy.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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 28, 2011; the National Arbitration Forum received payment on March 29, 2011.
On March 31, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <http-www-bestbuy.com>, <wvvw-bestbuy.com>, <bestbhy.com>, <www-bestbuystores.com>, and <www-best-buy.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 April 6, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 26, 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@http-www-bestbuy.com, postmaster@wvvw-bestbuy.com, postmaster@bestbhy.com, postmaster@www-bestbuystores.com, postmaster@www-best-buy.com. Also on April 6, 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 April 27, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <http-www-bestbuy.com>, <wvvw-bestbuy.com>, <bestbhy.com>, <www-bestbuystores.com>, and <www-best-buy.com> domain names are confusingly similar to Complainant’s BESTBUY.COM mark.
2. Respondent does not have any rights or legitimate interests in the <http-www-bestbuy.com>, <wvvw-bestbuy.com>, <bestbhy.com>, <www-bestbuystores.com>, and <www-best-buy.com> domain names.
3. Respondent registered and used the <http-www-bestbuy.com>, <wvvw-bestbuy.com>, <bestbhy.com>, <www-bestbuystores.com>, and <www-best-buy.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, BBY Solutions, Inc., has operated retail stores offering consumer electronics, appliances and other consumers products since 1983. Complainant owns multiple trademark registrations for the BESTBUY.COM and related marks with the United States Patent and Trademark Office (“USPTO”):
Mark Reg. No. Date Issued
BESTBUY.COM 2,638,360 October 22, 2002 and
BEST BUY 3,416,626 April 29, 2008.
Respondent, Cybidea, Inc., registered the <www-bestbuy.com> and <http-www-bestbuy.com> domain names on April 16, 2009, the <www-best-buy.com> and <www-bestbuystores.com> domain names on April 29, 2009, and the <bestbhy.com> domain name on May 1, 2009. The disputed domain names redirect to the <elggexchange.com> domain name which does not currently display any active content.
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 owns multiple trademark registrations for the BESTBUY.COM and related marks with the USPTO:
Mark Reg. No. Date Issued
BESTBUY.COM 2,638,360 October 22, 2002 and
BEST BUY 3,416,626 April 29, 2008.
The Panel finds that these USPTO trademark registrations sufficiently demonstrate Complainant’s rights in the BESTBUY.COM mark for the purposes of Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”).
Complainant alleges that Respondent’s <http-www-bestbuy.com>, <www-bestbuy.com>, <bestbhy.com>, <www-bestbuystores.com>, and <www-best-buy.com> domain names are confusingly similar to Complainant’s BESTBUY.COM mark. Each of the disputed domain names makes one or more of the following changes to Complainant’s mark: adding the prefix “http” and/or “www” without separation by a period, inserting one or more hyphens, replacing the letter “u” in “buy” with the letter “h,” and adding the generic term “stores.” The Panel finds that adding the prefixes “http” or “www” without the usual separating period does not succeed in removing the disputed domain names from the realm of confusing similarity. See Sony Kabushiki Kaisha v. EOS1\EOS-1, Inc., FA 493110 (Nat. Arb. Forum July 15, 2005) (“Respondent’s <www-sony.com> domain name is confusingly similar to Complainant’s SONY mark, as the domain name incorporates Complainant’s mark and adds a “www” prefix, a hyphen, and the generic top-level domain (“gTLD”) “.com.”); see also Amazon.com, Inc. v. J J Domains, FA 514939 (Nat. Arb. Forum Sept. 2, 2005) (“…Respondent’s <www-amazon.com> domain name is confusingly similar to Complainant’s AMAZON.COM mark, as the domain name merely adds the prefix “www-” to Complainant’s AMAZON.COM mark. Such changes are not enough to overcome the confusingly similar aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).”); InfoSpace, Inc. v. Horoshiy, Inc., FA 282775 (Nat. Arb. Forum July 23, 2004) (holding that the addition of the prefix “http” does not “negate the confusing similarity” between the disputed domain name and Complainant’s mark). The Panel determines that exchanging one letter for another in the disputed domain names does not distinguish the disputed domain name from Complainant’s mark. See Intelius, Inc. v. Hyn, FA 703175 (Nat. Arb. Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar); 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 holds that adding a generic term to Complainant’s mark does not prevent a finding of confusing similarity. See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end). The Panel finally concludes that the insertion of hyphens into the disputed domain name has no effect on the Policy ¶ 4(a)(i) analysis. See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also 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)). The Panel accordingly determines that Respondent’s disputed domain names are confusingly similar to Complainant’s BESTBUY.COM mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain names. Once Complainant establishes a prima facie case, the burden shifts to Respondent to demonstrate that it does have rights and legitimate interests in the disputed domain names. In this case, the Panel finds that Complainant has adequately presented a prima facie case. Respondent’s failure to respond to Complainant’s allegations allows the Panel to infer that Complainant’s allegations are true in that Respondent lacks rights and 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.”); 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). The Panel, however, elects to consider the evidence in the record in light of the Policy ¶ 4(c) factors to determine if Respondent has any rights and legitimate interests in the disputed domain names.
Complainant asserts that Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. Complainant alleges that Respondent has neither requested nor received any authorization, permission or license to use Complainant’s BESTBUY.COM mark in any domain name. The WHOIS information for all of the disputed domain names identifies the registrant as “Cybidea, Inc.,” which suggests no association between Respondent and the disputed domain names. The Panel thus concludes that Respondent is not commonly known by the disputed domain names and therefore lacks rights and legitimate interests 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 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).
Complainant contends that the disputed domain names currently resolve to the <elggexchange.com> domain name but argues that the website at that domain name is not currently active. The Panel concludes that Respondent’s failure to actively use the disputed domain names to display content is not a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶¶ 4(c)(i) and 4(c)(iii) and therefore Respondent does not possess rights and legitimate interests in the disputed domain names. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for 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)); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
When conducting a Policy ¶ 4(a)(iii) analysis, the Panel finds that it may consider the totality of the circumstances without being limited to the enumerated factors in Policy ¶ 4(b). See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples of [bad faith] are illustrative, rather than exclusive.”); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
Complainant submits a screen shot of the website to which the disputed domain names resolve, which says “Domain Default Page for elggexchange.com. If you are viewing this page, your website does not currently have any content.” Based on this evidence, the Panel finds that Respondent is not actively using the disputed domain names. The Panel determines that this failure to use the disputed domain names signals bad faith registration and use according to Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith).
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 <http-www-bestbuy.com>, <wvvw-bestbuy.com>, <bestbhy.com>, <www-bestbuystores.com>, and <www-best-buy.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: May 6, 2011
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