Blue Nile, Inc. v. Bluenilecanada.com / James Netfield
Claim Number: FA1202001428936
Complainant is Blue Nile, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Bluenilecanada.com / James Netfield (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bluenilecanada.com>, registered with eNom, Inc.
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 electron-ically on February 9, 2012; the National Arbitration Forum received payment on February 9, 2012.
On February 10, 2012, eNom, Inc. confirmed by e-mail addressed to the National Arbitration Forum that the <bluenilecanada.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agree-ment 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 13, 2012, the Forum served the Complaint and all Annexes, in-cluding a Written Notice of the Complaint, setting a deadline of March 5, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all en-tities and persons listed on Respondent’s registration as technical, adminis-trative, and billing contacts, and to postmaster@bluenilecanada.com. Also on February 13, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 March 13, 2012, pursuant to Complainant's request to have the dispute de-cided 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
Complainant, founded in 1999, is an online specialty retailer of certified dia-monds and fine jewelry, and doing business under the BLUENILE trademark.
Complainant owns registrations for the BLUE NILE trademark, on file with the United States Patent and Trademark Office ("USPTO"), including Reg. No. 2,450,117, registered May 8, 2001).
Respondent registered the <bluenilecanada.com> domain name on Septem-ber 3, 2004.
The disputed domain name is confusingly similar to Complainant’s BLUE NILE trademark.
Respondent is not commonly known by the disputed domain name.
Respondent has not been granted permission to use the BLUE NILE mark in any fashion.
Respondent’s disputed domain name resolves to a website that redirects Inter-net users to a website operated by Complainant’s commercial competitors, re-sulting in commercial compensation for Respondent.
Respondent registered and is using the disputed domain name in bad faith by displaying third-party hyperlinks to the websites of Complainant’s competitors in the jewelry industry for Respondent’s commercial gain.
B. Respondent
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."
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 can-celled 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.
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 represent-tations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences as 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 UDRP 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.”
Complainant has rights in its BLUE NILE trademark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that a complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO). This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction other than that of Respondent’s residence or base of operations. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a complainant can demon-strate rights in a mark in some jurisdiction).
The <bluenilecanada.com> domain name is confusingly similar to Complainant’s BLUE NILE trademark. To begin with, under Policy ¶ 4(a)(i) Respondent’s addition of the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in forming the contested domain name is irrelevant to a Policy ¶ 4(a)(i) analysis because gTLD is required of every domain name. See, for example, Trip Net-work Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) anal-ysis). Similarly, the removal of the space between the terms of the mark in creating the domain name is not significant to a Policy ¶ 4(a)(i) analysis. 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 of another in creating a domain name does not establish distinctiveness from that mark under Policy ¶ 4(a)(i)).
Moreover, the addition of the geographic term “canada” to Complainant’s BLUE NILE mark in forming the disputed domain name does not result in a domain name that is distinct from the mark. See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004):
[I]t is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.
Therefore, the Panel finds that the <bluenilecanada.com> domain name is con-fusingly similar to Complainant’s BLUE NILE trademark under Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie case that Respondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to a respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respon-dent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has demonstrated a prima facie showing under this head of the Policy, while Respondent has failed to submit a response to the Complaint filed in this proceeding. We are therefore free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See, for example, BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, when a respondent fails to respond to a UDRP Complaint, a Panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine 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 begin by noting that Complainant asserts, and Respondent does not deny, that Respondent is not commonly known by the domain name at issue, and that Complainant has not given Respondent permission to use its BLUE NILE mark. Moreover, although the pertinent WHOIS information identifies the domain name registrant as “Bluenilecanada.com / James Netfield,” there is no evidence in the record to indicate that Respondent has been commonly known by the domain name before the registration of the domain name. On this record, we conclude that Respondent is not commonly known by the disputed domain name so as to have shown that it has rights to or legitimate interests in the domain under Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that a respondent was not “commonly known by” the domain name <shantiyogaworks.com> despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that, although a respondent was listed as “AIM Profiles” in the relevant WHOIS contact information, there was no evidence in the record to suggest that that respondent was commonly known by the domain name there in issue so as to have demonstrated that it had rights to or legitimate interest in that domain under Policy ¶ 4(c)(ii)).
We next observe that Complainant contends, without objection from Respondent, that Respondent does not have rights to or legitimate interests in the disputed domain name in that Respondent employs the domain to redirect Internet users, who happen upon its resolving website, to the websites of Complainant’s com-petitors in the jewelry industry. In the circumstances here presented, we may comfortably presume that Respondent receives revenue from this use of the domain. This is therefore neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain 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 via a domain name which was confusingly similar to the mark of another 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 Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website, but only links to a variety of third-party websites, it was not using a 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 pursuant to Policy ¶ 4(c)(iii)).
We thus find that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s use of the disputed domain name to display hyperlinks to the websites of Complainant’s commercial competitors, as described in the Complaint, and presumably for commercial gain, is evidence of Respondent’s bad faith registration and use of the domain under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent’s domain name resolved to a website offering links to third-party websites that featured services similar to those of a complainant); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003):
Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the mis-leading domain name by receiving ‘click-through-fees.’
For these reasons, the Panel finds that Complaint has met its obligations of proof under 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 <bluenilecanada.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 27, 2012
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