Bath & Body Works Brand Management v. Above.com Domain Privacy
Claim Number: FA1104001383344
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 Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bathandbodyworkscoupon.com>, registered with Above Pty Ltd.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 13, 2011; the National Arbitration Forum received payment on April 13, 2011.
On April 14, 2011, Above Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <bathandbodyworkscoupon.com> domain name is registered with Above Pty Ltd and that Respondent is the current registrant of the name. Above Pty Ltd has verified that Respondent is bound by the Above Pty Ltd 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 14, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 4, 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@bathandbodyworkscoupon.com. Also on April 14, 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 May 9, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is the record owner of the BATH & BODY WORKS mark, which is registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,742,062 issued December 22, 1992).
Complainant uses its BATH & BODY WORKS mark to promote the business of more than 1,600 retail stores located throughout the United States and Canada which offer for sale a wide range of personal care and beauty products.
Respondent registered the disputed domain name on March 25, 2009.
The disputed domain name redirects Internet users to <survey.prize-giveaways.com/t/survey/us> where they are offered a “gift” for completing a survey and submitting personal information.
The domain name further resolves to a website featuring links to various pages at <searchportal.information.com>, advertising many businesses unrelated to Complainant, as well as some of Complainant’s competitors.
Respondent likely receives revenue for redirecting Internet users to both the described survey site and the related links site.
Respondent’s <bathandbodyworkscoupon.com> domain name is confusingly similar to Complainant’s BATH & BODY WORKS mark.
Respondent is not affiliated with Complainant, and Respondent has not been licensed or permitted to use the BATH & BODY WORKS trademark in a domain name or otherwise.
Respondent is not commonly known by the disputed domain name, either as a business, individual or other organization.
Respondent does not have any rights to or legitimate interests in the domain name <bathandbodyworkscoupon.com>.
Respondent registered and uses the <bathandbodyworkscoupon.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has rights in its mark BATH & BODY WORKS trademark under Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See 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).
See also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether a complainant has registered its trademark in the country in which a respondent resides, only that it can establish rights in the mark in some jurisdiction).
Respondent’s <bathandbodyworkscoupon.com> domain name is confusingly similar to Complainant’s BATH & BODY WORKS mark. The disputed domain name merely replaces the ampersand (“&”) in Complainant’s mark with the equivalent word “and,” and adds the generic term “coupons,” which is descriptive of an aspect of Complainant’s business. Finally, the disputed domain name removes the spaces between the terms of Complainant’s mark and adds the generic top-level domain (“gTLD”) “.com.”
These changes, whether taken singly or together, do not create a significant distinction between the domain name and the mark for purposes of Policy ¶ 4(a)(i). 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).
Similarly, the addition of the generic term “coupons” does not distinguish the disputed domain name from Complainant’s mark. See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that a respondent’s domain names were confusingly similar to a complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end of the mark).
Likewise, the removal of spaces and the addition of a gTLD to Complainant’s mark in forming the contested domain name do not avoid a finding of confusing similarity. See 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 of a mark and the addition of a gTLD do not establish distinctiveness from the mark under Policy ¶ 4(a)(i).
Therefore, pursuant to Policy ¶ 4(a)(i), the Panel finds that Respondent’s domain name <bathandbodyworkscoupon.com> is confusingly similar to Complainant’s BATH & BODY WORKS trademark.
Policy ¶ 4(a)(ii) requires that Complainant make out a prima facie case in support of its allegations that Respondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to prove that it does have such rights or interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), finding that:
complainant must first make a prima facie case that respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it does have rights or legitimate interests.
The allegations set out in the Complaint filed in this proceeding establish a prima facie case under this head of the Policy. Respondent’s failure to submit a Response to those allegations therefore permits us to conclude, without more, that Respondent lacks rights to and legitimate interests in the contested domain name. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000):
[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.
Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We first note that Complainant asserts, and Respondent does not deny, that Respondent is not affiliated with Complainant, that Respondent has not been licensed or permitted to use the BATH & BODY WORKS mark in a domain name, and that Respondent is not commonly known by the disputed domain name. Moreover, there is nothing in the pertinent WHOIS information identifying the registrant of the contested domain name to suggest that Respondent is commonly known by the disputed domain name. On this record, we are constrained to conclude that Respondent is commonly known by the <bathandbodyworkscoupon.com> domain name so as to have demonstrated that it has rights to or legitimate interests in the disputed domain under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the relevant WHOIS information, as well as all other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name where there was no evidence in the record showing that that respondent was commonly known by that domain name, and where a complainant asserted that it did not authorize or license that respondent’s use of its mark in a domain name).
We next observe that Complainant alleges, without objection from Respondent, that Respondent is using the disputed domain name to redirect Internet users to websites operating in competition with the business of Complainant and from which redirection Respondent likely derives commercial gain. This is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that a respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the websites of a complainant’s competitors in the financial services industry); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that a respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to websites that may be of interest to a complainant’s customers, that respondent presumably receiving “click-through fees” in the process).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s registration and use of Complainant’s BATH & BODY WORKS mark in the contested domain name to redirect Internet users to a website that displays links to websites displaying goods that compete with Complainant’s business demonstrates bad faith registration and use of the domain 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 domain name which was confusingly similar to a complainant’s mark to attract Internet users to a directory website containing links to the websites of a complainant’s commercial competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007):
This Panel concludes that by redirecting Internet users seeking information on Complainant’s … institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
It is apparent that employs the contested domain name with the intent to confuse Internet users as to the possibility of Complainant’s affiliation with or sponsorship of the resolving websites, and that Respondent likely profits from its registration and use of the <bathandbodyworkscoupon.com> domain name as alleged in the Complaint. This is evidence of bad faith registration and use of the disputed domain under 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 which was 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 Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a contested domain name to display links to third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); further see Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003):
As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).
For these reasons, the Panel finds that Complainant has met the proof requirements of Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <bathandbodyworkscoupon.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 17, 2011
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