Bath & Body Works Brand Management, Inc. v. Private Whois bathandbodyworkss.com
Claim Number: FA1201001426802
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 bathandbodyworkss.com (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bathandbodyworkss.com>, registered with Internet.bs Corp.
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 January 27, 2012; the National Arbitration Forum received payment on January 27, 2012.
On January 29, 2012, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <bathandbodyworkss.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 February 1, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 21, 2012 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@bathandbodyworkss.com. Also on February 1, 2012, 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 February 28, 2012, 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 <bathandbodyworkss.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 <bathandbodyworkss.com> domain name.
3. Respondent registered and used the <bathandbodyworkss.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Bath & Body Works Brand Management, Inc., operates retail stores throughout North America, including online stores. Complainant owns multiple registrations for the BATH & BODY WORKS mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,742,062 registered December 22, 1992).
Respondent, Private Whois bathandbodyworkss.com, registered the <bathandbodyworkss.com> domain name on December 10, 2010. The disputed domain name resolves to a website that attempts to gain personal information from Internet users in exchange for a gift card.
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 trademark registrations with the USPTO for its BATH & BODY WORKS mark (e.g. Reg. No. 1,742,062 registered December 22, 1992). The Panel determines that Complainant has established rights in the BATH & BODY WORKS mark via its trademark registrations with the USPTO pursuant to Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also 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). The Panel also finds that there is no requirement that Complainant register its trademark in the country where Respondent resides and operates for the purposes of Policy ¶ 4(a)(i). See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country).
Complainant argues that the <bathandbodyworkss.com> domain name is confusingly similar to its BATH & BODY WORKS mark. Complainant contends that adding an “s,” removing the spaces between the words of the mark, replacing the ampersand of the mark with the word “and,” and attaching the generic top-level domain (“gTLD”) “.com” to the mark do not serve to distinguish the domain name from the mark. The Panel finds that the changes made in the disputed domain name render it confusingly similar to Complainant’s BATH & BODY WORKS mark under Policy ¶ 4(a)(i). See Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the additions of the letter “s” and generic top-level domains to the disputed <barnesandnobles.info> and <barnesandnobles.biz> domain names failed to avoid the confusing similarity between the domain names and the complainant’s BARNESANDNOBLE.COM mark pursuant to Policy ¶ 4(a)(i)); see also 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 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); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). The Panel therefore concludes that Respondent’s <bathandbodyworkss.com> domain name is confusingly similar to Complainant’s BATH & BODY WORKS mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant argues that Respondent has no rights or legitimate interests in the <bathandbodyworkss.com> domain name. Policy ¶ 4(a)(ii) mandates that Complainant establishes a prima facie case in support of the allegations. After Complainant satisfies this requirement, the burden of proof is upon Respondent to demonstrate why it does have rights or 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.”); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech. Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”). The Panel finds that Complainant has successfully established a prima facie case. As a result of Respondent’s failure to respond to these proceedings, the Panel may infer that Respondent lacks rights or legitimate interests in the domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”). However, the Panel will continue to evaluate the evidence on record in making its final determinations under Policy ¶ 4(a)(ii).
Complainant argues that Respondent is not commonly known by the <bathandbodyworkss.com> domain name. The WHOIS information lists the domain registrant as “Private Whois bathandbodyworkss.com”; however, outside of this evidence, nothing on the record provides affirmative evidence that Respondent is commonly known by the disputed domain name. The Panel determines that the absence of conclusive evidence that Respondent is commonly known by the disputed domain name indicates that Respondent does not have any rights or legitimate interests in the domain name under Policy ¶ 4(c)(ii). See Qwest Commc’ns Int’l, Inc. v. Qwest Networking, FA 238004 (Nat. Arb. Forum Apr. 8, 2004) (“The Panel determines that, because of the fame of Complainant’s mark, Respondent does not have rights or legitimate interests in the <qwestcommunications.net> domain name, despite the presence of the word ‘qwest’ in the domain name registration WHOIS information.”); see also Gestmusic Endemol, S.A. v. operaciontriunfo.us, FA 214337 (Nat. Arb. Forum Jan. 14, 2004) (“Though Respondent’s WHOIS information lists Respondent’s name as ‘o. operaciontriunfo.us’ and organization as ‘operaciontriunfo.us,’ there is no evidence before the Panel that Respondent was actually commonly known by the [<operaciontriunfo.us>] domain name.”).
Complainant argues that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services and that Respondent is not making a legitimate noncommercial or fair use of the <bathandbodyworkss.com> domain name. The domain name redirects Internet traffic to a website that offers a “free” $500 gift card to Complainant’s business in exchange for website visitors’ personal information. Complainant contends that Respondent employs a diversion scheme to gain personal information by taking advantage of the goodwill and fame Complainant has built over its existence. Complainant further contends that unauthorized solicitation in its name promotes unrelated businesses on behalf of Respondent, which does not amount to a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). The Panel finds that Respondent’s use of the disputed domain name to redirect Internet traffic to its website for financial gain is not a bona fide offering of goods or service under Policy ¶ 4(c)(i) nor is it a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Victoria’s Secret Stores Brand Mfg., Inc. v. egyGossip.com , FA 1288062 (Nat. Arb. Forum Nov. 20, 2009) (determining that the use of disputed domain name to offer a gift card for Complainant’s products in exchange for providing personal information and completing a survey, which are used to promote unrelated businesses, is not a bona fide offering of goods or services pusuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii)).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent uses the <bathandbodyworkss.com> domain name to intentionally misdirect Internet traffic to the corresponding website for financial gain provides evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). Complainant argues that the disputed domain name causes confusion between Complainant’s BATH & BODY WORKS mark and the domain name and due to the confusion Respondent profits from misled Internet users. Further, Complainant alleges that Respondent capitalizes on the goodwill and fame connected with Complainant’s BATH & BODY WORKS mark by using a confusingly similar name to attract Internet traffic, confuse consumers, and financially gain from the misdirection. The Panel concludes that Respondent’s use of the domain name to intentionally attempt to lure Internet users to its website to commercially benefit is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent has attempted to commercially benefit from the misleading <qwestwirless.com> domain name by linking the domain name to adult oriented websites, gambling websites, and websites in competition with Complainant. Respondent’s attempt to commercially benefit from the misleading domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”); see also H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness).
Complainant argues that because of the fame and reputation of Complainant's BATH & BODY WORKS mark, as well as the fact that the website clearly contains content relating to Complainant’s business, it is implausible that Respondent could have registered the <bathandbodyworkss.com> domain name without actual and constructive knowledge of Complainant's rights in the mark. The Panel concludes that contentions of bad faith based on constructive notice are immaterial. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel does find, however, that Respondent had actual knowledge of Complainant's rights in the BATH & BODY WORKS mark at the time it registered the disputed domain name, and thus finds that actual knowledge is sufficient evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds that Complainant 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 <bathandbodyworkss.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: March 12, 2012
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