national arbitration forum

 

DECISION

 

Bath & Body Works Brand Management, Inc. v. Private Whois Service

Claim Number: FA1106001395836

 

PARTIES

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 Private Whois Service (“Respondent”), Bahamas.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bbathandbodyworks.com>, registered with Internet.bs Corp.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 28, 2011; the National Arbitration Forum received payment on June 28, 2011.

 

On June 28, 2011, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <bbathandbodyworks.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name.  Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 June 29, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 19, 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@bbathandbodyworks.com.  Also on June 29, 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 July 25, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <bbathandbodyworks.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 <bbathandbodyworks.com> domain name.

 

3.    Respondent registered and used the <bbathandbodyworks.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Bath & Body Works Brand Management, Inc., owns the BATH & BODY WORKS mark which has been used since 1990 in connection with the sale of scented personal care and beauty products.  Complainant holds numerous trademark registrations for its BATH & BODY WORKS marks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,742,062 registered on December 22, 1992).

 

Respondent, Private Whois Service, registered the <bbathandbodyworks.com> domain name on December 16, 2010.  The disputed domain name resolves to <pampermerewards.com>, which offers a $500 BATH & BODY WORKS gift card in exchange for the personal information of Internet users and participation in sponsored offers from businesses unrelated to Complainant. 

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant argues that it has demonstrated rights in the BATH & BODY WORKS mark.  A complainant may establish rights in a mark by registering such mark with a federal trademark authority.  See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).  Past panels have decided that it is not necessary for a complainant to register its mark in the same country where respondent is located.  See 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); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).  In this proceeding, Complainant holds numerous trademark registrations for its BATH & BODY WORKS mark with the USPTO (e.g., Reg. No. 1,742,062 registered on December 22, 1992).  The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i) and demonstrated rights in the BATH & BODY WORKS mark by registering the mark with the USPTO.

 

Complainant also argues that Respondent’s <bbathandbodyworks.com> mark is confusingly similar to Complainant’s BATH & BODY WORKS mark.  The disputed domain name utilizes Complainant’s entire mark and only alters it by adding a letter “b,” deleting the spaces between the words of the marks, replacing the “&” symbol with the word “and,” and adding the generic top-level domain (“gTLD”) “.com.”  The Panel finds that deleting spaces and adding a gTLD does not sufficiently differentiate the disputed domain name from Complainant’s mark.  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 and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i).  Additionally, the Panel finds that replacing the ampersand in Complainant’s mark does not adequately distinguish the disputed domain name since the “&” symbol is not reproducible in a domain name.  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).  Finally, the Panel holds that the addition of a single letter does not remove the disputed domain name from the realm of confusing similarity.  See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive).  Therefore, the Panel concludes that Respondent’s <bbathandbodyworks.com> domain name is confusingly similar to Complainant’s BATH & BODY WORKS mark pursuant to Policy ¶ 4(a)(i). 

 

The Panel finds that Policy ¶ 4(a)(i) has been met.

 

Rights or Legitimate Interests

 

Complainant contends that Respondent lacks rights and legitimate interests in the <bbathandbodyworks.com> domain name.  In Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000), the panel stated, “Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”  Here, Complainant has presented a prima facie case supporting its allegations against Respondent.  Due to Respondent’s failure to reply to the Complaint, the Panel is allowed to assume that Respondent does not have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond).  However, the Panel opts to look at the record and determine whether Respondent may have rights or legitimate interests under Policy ¶ 4(c).

 

Complainant claims that Respondent is not commonly known by the <bbathandbodyworks.com> domain name.  The WHOIS information indicates that Respondent registered the disputed domain name using a privacy shield dissimilar to the disputed domain name.  Moreover, Complainant charges that it has never granted license or permission to Respondent to use its BATH & BODY WORKS mark in the domain name.  From these findings, the Panel concludes that Respondent is not commonly known by the <bbathandbodyworks.com> domain name under 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).

 

Respondent’s disputed domain name resolves to <pampermerewards.com>, a website offering a $500 gift card to Complainant’s retail and online stores in exchange for personal information and participation in sponsored offers from unrelated businesses.  Respondent likely receives some type of compensation for redirecting Internet users to the website.  The Panel concludes that Respondent’s use of the confusingly similar disputed domain name to operate a website purportedly offering Complainant’s gift cards, without authorization from Complainant, is not 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 Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use).

 

While Complainant does not specifically make this argument, it appears from Respondent’s use of the disputed domain name to solicit personal information from Internet users in exchange for the promise of a gift card, is part of a phishing scheme.  The Panel decides that Respondent’s use of the <bbathandbodyworks.com> domain name to run a phishing operation is further evidence that Respondent does not have rights or legitimate interests under Policy ¶ 4(a)(ii).  See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding that using a domain name to redirect Internet users to a website that imitated the complainant’s credit application website and attempted to fraudulently acquire personal information from the complainant’s clients was not a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s website, and is used to acquire personal information from Complainant’s potential associates fraudulently” does not fall within the parameters of Policy ¶¶ 4(c)(i) or (iii)).

 

The Panel finds that Policy ¶ 4(a)(ii) has been met.

 

Registration and Use in Bad Faith

 

The <bbathandbodyworks.com> domain name resolves to a website which offers BATH & BODY WORKS gift cards to Internet users in exchange for their personal information and participation in sponsored offers by third-party businesses unrelated to Complainant’s personal care and beauty products.  The Panel finds that Respondent’s registration and use of the disputed domain name to attempt to sell Complainant’s gift cards diverts traffic from Complainant’s website and business and therefore, is evidence of bad faith under Policy ¶ 4(b)(iii).  See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”).

 

The Panel infers that Respondent receives revenue from diverting Internet traffic to the <pampermerewards.com> domain name.  The resolving website contains a similar look and feel as Complainant’s website and therefore, creates a likelihood of confusion as to Complainant’s sponsorship of the disputed domain name and offered gift cards.  Respondent tries to profit from this confusion by collecting some type of click-through fees.  The Panel determines that Respondent’s registration and use of the <bbathandbodyworks.com> domain name constitutes bad faith according to Policy ¶ 4(b)(iv).  See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).

 

The resolving website solicits personal information from Internet users in order to purportedly participate in a chance to win gift cards and various sponsored offers.  The Panel finds that this is part of a phishing scheme and is additional evidence of Respondent’s bad faith under Policy ¶ 4(a)(iii).  See Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (finding that using a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients” is evidence of bad faith registration and use); see also Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients).

 

The Panel finds that Policy ¶ 4(a)(iii) has been met.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <bbathandbodyworks.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  August 5, 2011

 

 

 

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