Blue Nile, Inc. v. Jiewei Li
Claim Number: FA1110001411371
Complainant is Blue Nile, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Jiewei Li (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bluenole.com>, registered with GoDaddy.com, Inc.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 13, 2011; the National Arbitration Forum received payment on October 13, 2011.
On October 14, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <bluenole.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. 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 October 14, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 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@bluenole.com. Also on October 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 November 10, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <bluenole.com> domain name is confusingly similar to Complainant’s BLUE NILE mark.
2. Respondent does not have any rights or legitimate interests in the <bluenole.com> domain name.
3. Respondent registered and used the <bluenole.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Blue Nile, Inc., is an online specialty retailer that deals in certified diamonds and other fine jewelry. Complainant operates its official business through its website located at <bluenile.com>. Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") as follows:
BLUE NILE (Reg. No. 2,450,117 registered May 8, 2001)
BLUE NILE (Reg. No. 2,559,555 registered April 9, 2002)
B N BLUE NILE (Reg. No. 2,518,387 registered December 11, 2001)
B N BLUE NILE (Reg. No. 2,565,804 registered April 30, 2002)
BN BLUE NILE (Reg. No. 2,613,119 registered August 27, 2002)
BLUE NILE B N (Reg. No. 2,621,806 registered September 17, 2002)
Respondent, Jiewei Li, registered the <bluenole.com> domain name on July 18, 2011. Respondent’s disputed domain name resolves to Complainant’s official website.
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 presents evidence that it owns several trademark registrations with the USPTO that contain its BLUE NILE mark as follows:
BLUE NILE (Reg. No. 2,450,117 registered May 8, 2001)
BLUE NILE (Reg. No. 2,559,555 registered April 9, 2002)
B N BLUE NILE (Reg. No. 2,518,387 registered December 11, 2001)
B N BLUE NILE (Reg. No. 2,565,804 registered April 30, 2002)
BN BLUE NILE (Reg. No. 2,613,119 registered August 27, 2002)
BLUE NILE B N (Reg. No. 2,621,806 registered September 17, 2002)
The Panel finds that such evidence is sufficient for Complainant to establish rights in its marks under Policy ¶ 4(a)(i). 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 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 further finds that Complainant does not need to own trademark rights in the country where Respondent resides for purposes of Policy ¶ 4(a)(i). 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).
Complainant further alleges that Respondent’s <bluenole.com> domain name is confusingly similar to Complainant’s BLUE NILE mark. Complainant contends that the domain name in question is merely a typosquatted version of its mark, where Respondent has replaced the letter “i” in Complainant’s mark with the letter “o.” Further, Complainant asserts that the addition of the generic top-level domain (“gTLD”) “.com” is irrelevant to a Policy ¶ 4(a)(i) analysis. The Panel notes that domain name also removes the space between the terms of the mark in question. The Panel finds that the domain name is clearly confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i), where the only substantive change to the mark is the replacement of the letter “i” in the mark with the letter “o.” 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)); 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 finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have rights or legitimate interests in the <bluenole.com> domain name under Policy ¶ 4(a)(ii). Complainant is required to produce a prima facie case in support of its allegations and then the burden shifts to Respondent to prove it possesses rights or legitimate interests in the disputed domain name. See TotalFinaElf E&P USA, Inc. v. Farnes, FA 117028 (Nat. Arb. Forum Sept. 16, 2002) (“In order to bring a claim under the Policy, Complainant must first establish a prima facie case. Complainant’s [initial burden] is to provide proof of valid, subsisting rights in a mark that is similar or identical to the domain name in question.”). The Panel finds Complainant has adequately established a prima facie case. Due to Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not possess rights or legitimate interests in the disputed domain name. See Am. Express Co. v. Fan 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.”). The Panel, however, will examine the record to determine whether Respondent possesses rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Complainant alleges that Respondent is neither commonly known by the <bluenole.com> domain name nor has Complainant given Respondent permission to use Complainant’s BLUE NILE mark. The WHOIS information identifies “Jiewei Li” as the registrant of the <bluenole.com> domain name, and there is no further evidence on record that Respondent is commonly known by the disputed domain name. The Panel finds that, without affirmative evidence of Respondent being commonly known by the disputed domain name, Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant argues that Respondent is using the disputed domain name in violation of an affiliate agreement that it signed onto with Complainant by redirecting the <bluenole.com> domain name to Complainant’s official website. Complainant contends that such use cannot be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. The Panel agrees and finds that Respondent’s use of the domain name in question, in violation of an affiliate agreement, does 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). See Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the respondent’s use of the disputed domain names to divert Internet users attempting to reach the complainant’s website and in breach of the complainant’s affiliate program is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also See Altavista Co. v. Brunosousa, D2002-0109 (WIPO Apr. 3, 2002) (holding that the respondent was attempting to build up “mistaken confidence” in the disputed domain name by having it resolve to the complainant’s official website and that “an unconnected party has no right or legitimate interest to use an otherwise deceptive trademark, name or indicia to redirect Internet traffic, even if it is directed to the legitimate owner of the trademark”).
Lastly, Complainant contends that Respondent’s registration and subsequent use of the <bluenole.com> domain name constitutes typosquatting. Complainant notes the domain name replaces the letter “i” in Complainant’s mark with the letter “o,” thereby using a slight misspelling of the mark to gain Internet traffic to Respondent’s website. The Panel agrees and finds that Respondent’s typosquatting is further evidence that it lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant’s evidence indicates that Respondent’s domain name resolves to Complainant’s official website, and that Respondent is a listed affiliate who recievies commercial benefit from such use. Under the circumstances, the Panel finds that Respondent registered and is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); 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).”).
Complainant has presented evidence that Respondent’s disputed domain name resolves directly to Complainant’s official website in violation of an affiliate agreement between the parties. In prior decisions, such as Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002), and Cricket Commc’ns, Inc. v. Oliver, FA 954005 (Nat. Arb. Forum May 29, 2007), the panels determined that, where a respondent was redirecting the domain names to complainants official website after registering for the respective affiliate programs, bad faith registration and use had occurred. The Panel agrees with such prior precedent and finds that Respondent’s use of the domain name to redirect Internet users to Complainant’s official website in violation of an affiliate agreement is evidence of bad faith registration and use under Policy ¶ 4(a)(iii).
Complainant also contends that Respondent’s engagement in typosquatting through its registration and use of the <bluenole.com> domain name also constitutes bad faith registration and use under Policy ¶ 4(a)(iii). The Panel agrees and finds that Respondent registered and uses the domain name in bad faith pursuant to Policy ¶ 4(a)(iii), where it registered a commonly misspelled version of Complainant’s mark in the disputed domain name. See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form); see also Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.).
Lastly, Complainant argues that, as a member of Complainant’s affiliate program, it is clear that Respondent was aware of Complainant and its rights in the BLUE NILE mark. Complainant alleges that such knowledge of Complainant and its rights is evidence that Respondent registered and uses the domain name at issue in bad faith. The Panel agrees that Respondent had actual knowledge of Complainant’s rights in the BLUE NILE mark before it registered the disputed domain name, and that as such Respondent registered and is using the domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration); see also Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bluenole.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: November 23, 2011
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