national arbitration forum

 

DECISION

 

Bath & Body Works Brand Management, Inc. v. Optura Pty Ltd / Greg Rips

Claim Number: FA1107001400253

 

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 Optura Pty Ltd / Greg Rips (“Respondent”), Australia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bedbathandbodyworks.net>, registered with GoDaddy.com.

 

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.

 

Judge Harold Kalina (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 26, 2011; the National Arbitration Forum received payment on July 26, 2011.

 

On July 26, 2011, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <bedbathandbodyworks.net> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name.  GoDaddy.com has verified that Respondent is bound by the GoDaddy.com 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 July 28, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 17, 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@bedbathandbodyworks.net.  Also on July 28, 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 August 22, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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, 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 <bedbathandbodyworks.net> domain name is confusingly similar to Complainant’s BATH & BODY WORKS mark.

 

2.    Respondent does not have any rights or legitimate interests in the <bedbathandbodyworks.net> domain name.

 

3.    Respondent registered and used the <bedbathandbodyworks.net> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Bath & Body Works Brand Management, Inc., is a multi-national producer, distributor, and operator of retail stores offering BATH & BODY WORKS branded personal care and beauty products.  Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for its BATH & BODY WORKS mark (e.g., Reg. No. 1,742,062 registered December 22, 1992).

 

Respondent, Optura Pty Ltd / Greg Rips, registered the <bedbathandbodyworks.net> domain name on September 23, 2010.  Respondent’s disputed domain name resolves to a website that appears to contain news articles with various third-party advertisements and links to competing and unrelated companies. 

 

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 has submitted evidence to show that it owns trademark registrations with the USPTO for its BATH & BODY WORKS mark (e.g., Reg. No. 1,742,062 registered December 22, 1992).  Therefore, the Panel finds that Complainant has submitted sufficient evidence to establish rights in the BATH & BODY WORKS mark under Policy ¶ 4(a)(i), despite the fact that Respondent is located in a different country than Complainant.  See Metro. Life Ins. Co. v. Glu, FA 874496 (Nat. Arb. Forum Feb. 13, 2007) (finding that the complainant had rights in the METLIFE mark as a result of its registration of the mark with the United States federal trademark authority); 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).

 

Complainant contends that the <bedbathandbodyworks.net> domain name is confusingly similar to Complainant’s BATH & BODY WORKS mark.  Complainant first notes that the domain name contains its mark entirely, while omitting the spaces between the terms of the mark and replacing the ampersand symbol with the term “and.”  Complainant argues that spaces and the ampersand symbol are not reproducible in a domain name.  Further, Complainant argues that the additions of the generic term “bed” and the generic top-level domain (“gTLD”) “.net” are not sufficient to render the domain name distinct from its mark.  The Panel agrees, and finds that Respondent’s <bedbathandbodyworks.net> domain name is confusingly similar to Complainant’s BATH & BODY WORKS mark under Policy ¶ 4(a)(i).  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 JES Publishing Corp. v. Brand Wellard, FA 1036201 (Nat. Arb. Forum Sept. 11, 2007) (finding that the replacement of the ampersand in the mark with the word “and” is a change without legal significance); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

 

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

 

Rights or Legitimate Interests

 

Complainant has contended that Respondent does not have any rights or legitimate interests in the <bedbathandbodyworks.net> domain name.  Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  The Panel finds Complainant has made a sufficient prima facie case.  Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name.  See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“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.”); 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).  However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).

 

Complainant contends that Respondent is not affiliated with Complainant, and has not been licensed or permitted to use the BATH & BODY WORKS mark in any way.  Complainant further notes that the WHOIS information for the disputed domain name identifies “Optura PTY Ltd/ Greg Rips” as the registrant, which Complainant claims is not similar to the domain name at issue.  The Panel, absent evidence from Respondent indicating otherwise, finds that Respondent is not commonly known by the disputed 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 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 goes on to argue that Respondent’s disputed domain name resolves to a website that contains “a generic article and posts, which appear to contain nothing more than strung together keywords forming incomprehensible sentences; and prominently displays banner advertisements and Google advertisements.”  Complainant notes that the advertisements and links are for both competing and unrelated businesses and websites.  Complainant contends that Respondent receives click-through or pay-per-click revenue from its use of the disputed domain name.  The Panel agrees and finds that Respondent is not using the <bedbathandbodyworks.net> domain name in connection with 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 Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was 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 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 that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Complainant has submitted evidence and arguments describing Respondent’s website as hosting third-party links to competitors of Complainant in the beauty and personal care product industry.  Respondent has not come forward with any arguments in its favor.  The Panel therefore finds that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii), as the third-party links on its website divert Internet users to Complainant’s competitors.  See 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 educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).

 

Complainant further argues that Respondent was motivated to register the disputed domain name for commercial profit through its use of third-party pay-per-click links on the resolving website.  Complainant contends that Respondent has intended to create confusion between its domain name and Complainant’s mark, which results in Internet users following Respondent’s posted third-party links.  Complainant argues that such links result in commercial gain for Respondent in such a manner.  The Panel agrees and finds that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).  See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).

 

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

 

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 <bedbathandbodyworks.net> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Judge Harold Kalina (Ret.), Panelist

Dated: September 1, 2011

 

 

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