Bath & Body Works Brand Management, Inc. v. zheng zhongxing
Claim Number: FA1203001432320
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 zheng zhongxing (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ebathandbodyworks.com>, registered with NameWhite.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 March 1, 2012; the National Arbitration Forum received payment on March 1, 2012.
On March 1, 2012, NameWhite.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <ebathandbodyworks.com> domain name is registered with NameWhite.com, Inc. and that Respondent is the current registrant of the name. NameWhite.com, Inc. has verified that Respondent is bound by the NameWhite.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 March 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 26, 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@ebathandbodyworks.com. Also on March 5, 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 April 9, 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 <ebathandbodyworks.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 <ebathandbodyworks.com> domain name.
3. Respondent registered or used the <ebathandbodyworks.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
A) Complainant alleges the following:
1. Complainant, Bath & Body Works Brand Management, Inc., has used the BATH & BODY WORKS mark continually since 1990 in connection with marketing and selling scented personal care and beauty products in its retail stores throughout North America.
2. Complainant owns the rights in the BATH & BODY WORKS mark by holding several registrations of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,742,062 registered December 22, 1992).
3. Complainant owns rights in the BATH & BODY WORKS mark by holding several registrations with China’s State Administration for Industry and Commerce (“SAIC”) (e.g., G975414 registered April 4, 2008).
4. Respondent, Zheng Zhongxing, registered the <ebathandbodyworks.com> domain name on December 20, 2011.
5. Respondent’s domain name resolves to a website that redirects Internet users to web pages that promote businesses unrelated to Complainant’s business.
6. Respondent receives “click-through” revenue in exchange for directing Internet traffic to the advertisements on the resolving website.
7. Respondent’s domain name is confusingly similar to Complainant’s mark.
8. Respondent does not have license or permission to use Complainant’s BATH & BODY WORKS mark in any way.
9. Respondent had actual knowledge of Complainant’s rights in the BATH & BODY WORKS mark.
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 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.
(4) 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.”).
Complainant claims that it has rights in the BATH & BODY WORKS mark by its registrations with the USPTO (e.g., Reg. No. 1,742,062 registered December 22, 1992) and SAIC (e.g., G975414 registered April 4, 2008). The Panel finds that holding multiple registrations with the USPTO and SAIC establishes Complainant’s rights in its mark under Policy ¶ 4(a)(i). See 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.”); see also Norgren, Inc. v. sh ying zhe, FA 1318448 (Nat. Arb. Forum June 2, 2010) (holding that the complainant’s trademark registration with China’s SAIC was sufficient to establish rights in the mark under Policy ¶ 4(a)(i)).
Complainant alleges that the <ebathandbodyworks.com> domain name is confusingly similar to its BATH & BODY WORKS mark, stating that the domain name uses the entire mark, replacing the ampersand (“&”) symbol with the term “and,” deleting the spaces between words, and adding the letter “e” at the front of the mark and the generic top-level domain (“gTLD”) at the end. The panels in McKinsey Holdings, Inc. v. Indidom, D2000-1616 (WIPO Jan. 31, 2001), and JES Publishing Corp. v. Brand Wellard, FA 1036201 (Nat. Arb. Forum Sept. 11, 2007), found that removing the ampersand and replacing it with the term “and” does not affect a consumer’s understanding of a domain name. In Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007), the panel determined that eliminating punctuation and spaces between words, as well as adding a gTLD, does not establish distinctiveness from the complainant’s mark. Further, in Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000), the panel found that the prefix “e” was a “generic or common descriptive term used to identify electronic commerce activity” and that such an addition to a mark did not distinguish the domain name from the complainant’s mark. The Panel finds that the <ebathandbodyworks.com> domain name is confusingly similar to Complainant’s BATH & BODY WORKS mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent 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 argues that Respondent is not commonly known by the <ebathandbodyworks.com> domain name, either as a business, individual or other organization. Complainant refers to the WHOIS information that identifies the registrant as “zheng zhongxing” as evidence. Complainant asserts that the WHOIS information does not provide evidence that Respondent is commonly known by the <ebathandbodyworks.com> domain name. Complainant also argues that Respondent is not affiliated with Complainant and has not been licensed or permitted to use the mark in any way. The panel in St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007), concluded that the respondent had no rights or legitimate interests in a disputed domain name when there was no supporting evidence to show that the respondent was commonly known by the disputed domain name. In Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), the panel found that the respondent was not commonly known by the disputed domain name because there was no evidence showing the respondent was known as such, including in the WHOIS information. The Panel determines that Respondent is not commonly known by the disputed domain name based on the WHOIS information and conclude that Respondent does not have rights or legitimate interests in the domain name under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent is not permitted to use its BATH & BODY WORKS mark, and that Respondent maintains the <ebathandbodyworks.com> domain name for commercial gain by diverting Internet traffic away from Complainant’s website to its own website which promotes unrelated businesses through pay-per-click advertisements. Complainant argues that such use does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the domain name. The Panel determines that using the disputed domain name to operate a website to redirect Internet users to a site promoting unrelated businesses in exchange for profit is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
Complainant argues that Respondent uses the BATH & BODY WORKS mark to attract traffic to the resolving website in order to make a profit from a “pay-per-click” arrangement with third-parties. Complainant contends that Respondent takes advantage of the fame associated with the mark and intentionally creates a likelihood of confusion between the disputed domain name and the mark to attract Internet users for its own commercial gain, which demonstrates bad faith and registration of the domain name. The panel in Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006), held that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites. In MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006), the panel held that by diverting Internet traffic who sought the complainant’s website, and profiting from the diversion scheme, the respondent registered and used the disputed domain name in bad faith. The Panel determines that Respondent’s registration and use of a confusingly similar domain name to attract Internet traffic to its own website featuring advertisement hyperlinks in order to make a profit is bad faith registration and use under Policy ¶ 4(b)(iv).
Complainant asserts that, because of the fame associated with its BATH & BODY WORKS mark, there is no reason Respondent could have registered the mark other than to take advantage of the mark’s reputation. Alternatively, Complainant contends that due to its multiple international trademark registrations, including in the country where Respondent resides and operates, Respondent has constructive knowledge of Complainant’s rights in the BATH & BODY WORKS mark. While previous panels have not recognized constructive knowledge as sufficient to find bad faith, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark and therefore registered the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); 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").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ebathandbodyworks.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: April 20, 2012
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