national arbitration forum

 

DECISION

 

BLUE NILE, INC v. NiLe Blue

Claim Number: FA1205001444089

 

PARTIES

Complainant is BLUE NILE, INC (“Complainant”), represented by CitizenHawk, Inc., California, USA.  Respondent is NiLe Blue (“Respondent”), United Arab Emirates.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bluenilejewellery.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 15, 2012; the National Arbitration Forum received payment on May 15, 2012.

 

On May 15, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <bluenilejewellery.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 May 21, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 11, 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@bluenilejewellery.com.  Also on May 21, 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 June 13, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

a)            Complainant has rights in the BLUE NILE mark, which it uses in connection with diamonds, jewelry, and watches;

b)            Complainant has registered the BLUE NILE mark (Reg. No. 2,450,117 registered May 8, 2001) with the United States Patent and Trademark Office (“USPTO”);

c)            The <bluenilejewellery.com> domain name is confusingly similar to the BLUE NILE mark;

d)            Respondent is not commonly known by the <bluenilejewellery.com> domain name;

e)            The <bluenilejewellery.com> domain name resolves to a website that offers products similar to what Complainant offers and that includes a tab where Internet users may contact the Respondent in exchange for providing personal information;

f)             The disputed domain name is for sale;

g)            Respondent intentionally uses Complainant’s trademark in its domain name and on its website in order to improperly capitalize on Complainant’s mark;

h)            Respondent has engaged in a phishing scheme;

i)              Respondent engaged in typosquatting.

 

B. Respondent

Respondent failed to submit a response in this proceeding.

 

FINDINGS

Complainant holds a registered trademark for the BLUE NILE mark with the USPTO.  Respondent did not submit a Response in this proceeding.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant contends that it has rights in the BLUE NILE mark. Complainant asserts that it uses its mark in connection with diamonds, jewelry, and watches and that it has a registration with the USPTO for the BLUE NILE mark (Reg. No. 2,450,117 Registered May 8, 2001).   It is well established that the registration of a mark with a trademark authority is sufficient evidence of rights so as to satisfy Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).  Furthermore, the Complainant need not register its mark in the country where the Respondent is located.   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). The Panel finds that Complainant has rights in the BLUE NILE mark pursuant to Policy ¶ 4(a)(i).

 

Complainant asserts that the <bluenilejewellery.com> domain name is confusingly similar to the BLUE NILE mark. Complainant argues that Respondent simply took Complainant’s mark, without the space between words and added a misspelling of the word “jewelry,” which describes Complainant’s business and a generic top-level domain (“gTLD”). The Panel finds that Respondent’s addition of the descriptive term “jewellery” and the gTLD “.com” fail to make the <bluenilejewellery.com> domain name distinct from the BLUE NILE mark. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). The Panel also finds that Respondent’s deletion of spaces between words is irrelevant for a finding of confusing similarity. 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)). Therefore, the Panel finds that the <bluenilejewellery.com> domain name is confusingly similar to Complainant’s BLUE NILE mark under Policy ¶ 4(a)(i).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.

 

Complainant contends that Respondent is not commonly known by the <bluenilejewellery.com> domain name. Complainant asserts that Respondent is not sponsored by, or legitimately affiliated with, Complainant in any way and has not been given permission by Complainant to use the BLUE NILE mark. Additionally, Complainant argues that Respondent does not have trademark or service mark rights similar to the <bluenilejewellery.com> domain name.  The WHOIS record and other relevant information available are illustrative of whether a respondent is commonly known by a disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). Therefore, the Panel finds that Respondent is not commonly known by the <bluenilejewellery.com> domain name pursuant to Policy ¶ 4(a)(iii).

 

Complainant argues that Respondent lacks rights and legitimate interests in the <bluenilejewellery.com> domain name. Complainant puts forth arguments and supporting evidence of the fact that the <bluenilejewellery.com> domain name resolves to Respondent’s website, which Complainant claims sells goods that are similar to those that Complainant sells under the BLUE NILE mark.  Complainant further alleges that there is a contact option that solicits personal information from Internet users as part of a phishing scheme. The panel in Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006), held that the sale of competing products is evidence of a lack of rights and legitimate interests. The panel in Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004), similarly held that a respondent’s use of a disputed domain name is not protected by Policy ¶¶ 4(c)(i) and 4(c)(iii) when operating a phishing scheme. Therefore, the Panel finds that Respondent’s use of the <bluenilejewellery.com> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).

 

Complainant contends that Respondent’s lack of rights and legitimate interests is further evidenced by the fact that Respondent has listed the <bluenilejewellery.com> domain name for sale. Complainant asserts that Respondent has displayed, through the <hugedomains.com> domain name, an offer to sell the <bluenilejewellery.com> domain name for $2,695.  The offering to sell a disputed domain name demonstrates a lack of rights and legitimate interests. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)). Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the <bluenilejewellery.com> domain name pursuant to Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

First, Complainant asserts that Respondent’s bad faith is demonstrated by the fact that Respondent has made the <bluenilejewellery.com> domain name available for sale. Complainant provides evidence of the display of Respondent’s offer to sell the <bluenilejewellery.com> domain name through the <hugedomains.com> domain name. The panel in Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000), held the offering of a disputed domain name for sale is evidence of bad faith. Therefore, the Panel finds that Respondent registered and is using the <bluenilejewellery.com> domain name in bad faith pursuant to Policy ¶ 4(b)(i).

 

Second, Complainant asserts that Respondent intentionally used Complainant’s trademark in its domain name and on its website in order to improperly capitalize on Complainant’s mark. Complainant asserts that Respondent’s <bluenilejewellery.com> domain name resolves to a website which, in part, sells competing products in the diamond, jewelry, and watch industry. Complainant argues that Respondent uses Complainant’s mark in its domain name and on its website in order to create confusion and a false association between the two parties. Therefore, the Panel finds that Respondent acted in bad faith by registering and using the <bluenilejewellery.com> domain name in order to attract, for commercial gain, by creating a likelihood of confusion as to the source of the disputed domain name under Policy ¶ 4(b)(iv). See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market).

 

Finally, Complainant contends that Respondent, in registering and using the <bluenilejewellery.com> domain name, has engaged in a phishing scheme. Complainant asserts that on the <bluenilejewellery.com> domain name’s resolving website, where competing goods are sold, there is a “contact us” tab that Internet users may contact Respondent so long as they first provide certain personal information. The solicitation of personal information by fraudulent means is evidence of bad faith. See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”). Therefore, the Panel finds that Respondent’s use of the bluenilejewellery.com> domain name to create a phishing scheme is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(i).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <bluenilejewellery.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Bruce E. Meyerson, Panelist

Dated:  June 19, 2012

 

 

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page