Bath & Body Works Brand Management, Inc. v. Jason Rager
Claim Number: FA1203001433329
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 Jason Rager (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bathandbodyworksfranchise.com>, registered with FastDomain Inc.
The undersigned certifies that he has acted independently and impartially, and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 7, 2012; the National Arbitration Forum received payment on March 7, 2012.
On March 7, 2012, FastDomain Inc. confirmed by e-mail to the National Arbitration Forum that the <bathandbodyworksfranchise.com> domain name is registered with FastDomain Inc. and that Respondent is the current registrant of the name. FastDomain Inc. has verified that Respondent is bound by the FastDomain 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 9, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 29, 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@bathandbodyworksfranchise.com. Also on March 9, 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 11, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant adopted the BATH & BODY WORKS mark and has continually used it in commerce since at least as early as 1990 in connection with the sale of personal care and beauty products and as the name of more than 1,600 retail stores throughout the U.S. and Canada.
2. Complainant has used the mark on the Internet since 2002 at Complainant’s domain name <bathandbodyworks.com>, which was first registered on September 15, 1997.
3. Complainant has registered the BATH & BODY WORKS mark multiple times with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,742,062 registered December 22, 1992).
4. Respondent’s <bathandbodyworksfranchise.com> domain name is confusingly similar to Complainant’s BATH & BODY WORKS mark.
5. The disputed domain name currently resolves to a website offering pay-per-click links to various businesses, some of which compete with Complainant.
6. The disputed domain name previously resolved to a website that promoted various franchise opportunities unrelated to Complainant and then requested Internet users’ personal information before providing additional information.
7. Complainant has no relationship or affiliation with Respondent and has not licensed or permitted Respondent’s use of the mark.
8. Respondent presumably receives commercial gain from diverting Internet users to the prior and current resolving website.
9. Respondent is not commonly known by the disputed domain name.
10. Respondent registered the disputed domain name in bad faith by attempting to attract and confuse consumers for its own profit and disrupt Complainant’s business.
11. Respondent clearly had knowledge of Complainant’s mark when it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Bath & Body Works Brand Management, Inc., has continually used the BATH & BODY WORKS mark in commerce since at least as early as 1990 in connection with the sale of personal care and beauty products and as the name of more than 1,600 retail stores throughout the U.S. and Canada. Complainant has used the mark on the Internet since 2002 at Complainant’s domain name <bathandbodyworks.com>, which was first registered on September 15, 1997. Complainant has registered the BATH & BODY WORKS mark multiple times with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,742,062 registered December 22, 1992).
The <bathandbodyworksfranchise.com> domain name currently resolves to a website offering pay-per-click links to various businesses, some of which compete with Complainant. The disputed domain name previously resolved to a website that promoted various franchise opportunities unrelated to Complainant and then requested Internet users’ personal information before providing additional information.
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.
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 has rights in the BATH & BODY WORKS mark pursuant to Policy ¶ 4(a)(i) because it owns multiple trademark registrations for the mark with the USPTO (e.g., Reg. No. 1,742,062 registered December 22, 1992). See SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007) (holding that “[t]his trademark registration [with the USPTO] establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).
Complainant asserts that the <bathandbodyworksfranchise.com> domain name is confusingly similar to Complainant’s BATH & BODY WORKS mark because it incorporates the mark in its entirety and then deletes spaces between the terms, replaces the ampersand (which cannot be included in a domain name) with the term “and,” and adds the terms “franchise” and the generic top-level domain (“gTLD”) “.com.” Previous panels have found that removing spaces, adding a gTLD, and replacing an ampersand with the term “and” do not remove a disputed domain name from the realm of confusing similarity. See 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 Morris & Spottiswood Ltd. v. Montgomery, FA 1235256 (Nat. Arb. Forum Jan. 5, 2009) (stating that the addition of a gTLD and the substitution of “and” for an ampersand were irrelevant under 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)). UDRP precedent has also concluded that combining a mark with a generic term is insufficient to prevent a finding of confusing similarity. See Yahoo! Inc. v. Casino Yahoo, Inc., D2000-0660 (WIPO Aug. 24, 2000) (finding the domain name <casinoyahoo.com> is confusingly similar to the complainant’s mark); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark). The Panel therefore finds that Respondent’s <bathandbodyworksfranchise.com> domain name is confusingly similar to Complainant’s BATH & BODY WORKS mark according to 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).
Complainant contends that it is not affiliated with Respondent and has not licensed or permitted Respondent to use the BATH & BODY WORKS mark in a domain name or in any other way. Complainant denies that either the former or current resolving website is affiliated with, or endorsed by, Complainant. Complainant further argues that Respondent is not commonly known by the disputed domain name as a business, individual, or other organization, referring to the WHOIS information that lists the domain name registrant as “Jason Rager.” Complainant therefore asserts that nothing in the WHOIS information implies that Respondent is commonly known by the disputed domain name. The Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Complainant alleges that the disputed domain name currently resolves to a website that offers pay-per-click links to various businesses, some of which compete with Complainant’s business. Complainant asserts that Respondent presumably receives pay-per-click revenue from these links. Complainant also contends that the disputed domain name previously resolved to a website that provided information and advertisements related to franchise opportunities unconnected with Complainant. Complainant asserts that Respondent’s former resolving website attempted to collect personal information from the Internet users that indicated they were interested in the franchise opportunities. Complainant argues that Respondent presumably profits from both of these resolving websites, either as a result of pay-per-click fees or from promoting or referring traffic to other businesses offering franchise opportunities. The Panel finds that Respondent’s efforts to profit by using Complainant’s mark for purposes unrelated to, or competing with, Complainant is not consistent with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under 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 Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name 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).”).
Complainant alleges that Respondent uses the <bathandbodyworksfranchise.com> domain name to drive traffic to the current resolving website promoting businesses and products that compete with Complainant’s products. Complainant contends that this effort to divert consumers constitutes a disruption to Complainant’s business and supports a finding of bad faith registration and use. In Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007), and David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007), prior panels concluded that using pay-per-click links at the resolving website to advertise and direct consumers to competitors demonstrated bad faith under Policy ¶ 4(b)(iii). The Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant also asserts that Respondent has used and continues to use Complainant’s BATH & BODY WORKS mark to attract traffic to Respondent’s websites not affiliated with, or sponsored by, Complainant. Complainant contends that Respondent presumably benefits from the prior and current resolving website and thus Respondent registered the disputed domain name in bad faith with the intent of attracting consumers and creating confusion for its own personal profit. The Panel finds Respondent’s actions at both the prior and current resolving websites are evidence of bad faith registration and use 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 the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also 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).
Finally, Complainant alleges that it is clear from the content of the former resolving website that Respondent was aware of Complainant’s famous mark when he registered the disputed domain name. Therefore, Respondent registered the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject 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 <bathandbodyworksfranchise.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 25, 2012
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