Bed Bath & Beyond Procurement Co. Inc. v. c/o Bedbathsandbeyond.com / c/o Bedbathbeyond.com
Claim Number: FA1207001453350
Complainant is Bed Bath & Beyond Procurement Co. Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is c/o Bedbathsandbeyond.com / c/o Bedbathbeyond.com (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bedbathsandbeyond.com> and <bedbathbeyond.com>, registered with Domain.com, LLC.
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 July 13, 2012; the National Arbitration Forum received payment on July 13, 2012.
On July 13, 2012, Domain.com, LLC confirmed by e-mail to the National Arbitration Forum that the <bedbathsandbeyond.com> and <bedbathbeyond.com> domain names are registered with Domain.com, LLC and that Respondent is the current registrant of the names. Domain.com, LLC has verified that Respondent is bound by the Domain.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 July 24, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 13, 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@bedbathsandbeyond.com and postmaster@bedbathbeyond.com. Also on July 24, 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 August 16, 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 names be transferred from Respondent to Complainant.
A. Complainant
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Bed Bath & Beyond Procurement Co. Inc., was formed in 1971 and operates a chain of domestic merchandise retail stores throughout the United States under the BED BATH & BEYOND mark. Complainant owns trademark registrations for the BED BATH & BEYOND mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,831,709 registered April 19, 1994).
Respondent, c/o Bedbathsandbeyond.com / c/o Bedbathbeyond.com, registered the <bedbathsandbeyond.com> and <bedbathbeyond.com> domain names no earlier than January 27, 2004. Respondent uses the <bedbathsandbeyond.com> domain name to resolve to a website that contains hyperlinks resolving to third-party websites, some of which directly compete with Complainant. Respondent does not make an active use of the <bedbathbeyond.com> domain name.
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 owns trademark registrations for the BED BATH & BEYOND mark with the USPTO (e.g., Reg. No. 1,831,709 registered April 19, 1994). The Panel finds that Complainant’s USPTO trademark registrations are sufficient evidence that Complainant holds rights in the BED BATH & BEYOND mark pursuant to Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
Complainant argues that Respondent’s <bedbathsandbeyond.com> and <bedbathbeyond.com> domain names are confusingly similar to Complainant’s BED BATH & BEYOND marks. Both of the disputed domain names remove the ampersand from Complainant’s mark. In the <bedbathsandbeyond.com> domain name, Respondent also adds the term “and” and the letter “s.” Both of the disputed domain names remove the spaces found in Complainant’s mark and contain the generic top-level domain (“gTLD”) “.com.” As these alterations fail to adequately distinguish the disputed domain names, the Panel finds that Respondent’s <bedbathsandbeyond.com> and <bedbathbeyond.com> domain names are confusingly similar to Complainant’s BED BATH & BEYOND mark under Policy ¶ 4(a)(i). See McKinsey Holdings, Inc. v. Indidom, D2000-1616 (WIPO Jan. 31, 2001) (finding that the removal of the ampersand from “McKinsey & Company” does not affect the user’s understanding of the domain name, and therefore the domain name <mckinseycompany.com> is identical and/or confusingly similar to the mark “McKinsey & Company”); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end); see also Keystone Publ’g., Inc. v. UtahBrides.com, D2004-0725 (WIPO Nov. 17, 2004) (finding that the <utahwedding.com> domain name was confusingly similar to the complainant’s UTAHWEDDINGS.COM mark because the domain name simply lacked the letter “s”); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”).
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 alleges that Respondent is not commonly known by the <bedbathsandbeyond.com> and <bedbathbeyond.com> domain names. Complainant contends that Respondent is not sponsored by, or legitimately affiliated with, Complainant in any way. Complainant asserts that Respondent is not permitted to use Complainant’s BED BATH & BEYOND mark. The WHOIS information identifies the registrant of the disputed domain names as “c/o Bedbathsandbeyond.com / c/o Bedbathbeyond.com,” which is similar to the <bedbathsandbeyond.com> and <bedbathbeyond.com> domain names. Nevertheless, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii) based on Complainant’s allegations and Respondent’s failure to provide any evidence in support of the WHOIS information. See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name 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”).
Respondent uses the <bedbathsandbeyond.com> domain name to resolve to a website that contains hyperlinks resolving to third-party websites. Complainant argues that some of the websites directly compete with Complainant. The Panel finds that the Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <bedbathsandbeyond.com> domain name under Policy ¶ 4(c)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither 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).”).
Respondent does not make an active use of the <bedbathbeyond.com> domain name. The Panel finds that Respondent’s failure to make an active use of the <bedbathbeyond.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). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).
Complainant asserts that Respondent’s registration and use of the <bedbathsandbeyond.com> domain name disrupts Complainant’s business. Respondent hosts competing hyperlinks that redirect Internet users to Complainant’s competitors which disrupts Complainant’s business. The Panel finds that Respondent registered and uses the <bedbathsandbeyond.com> domain name in bad faith under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant also contends that Respondent registered and uses the <bedbathsandbeyond.com> domain name in bad faith under Policy ¶ 4(b)(iv). Complainant claims that Respondent receives click-through fees from the hyperlinks found on the resolving website. Complainant argues that Respondent registered and uses the confusingly similar disputed domain name to attract and mislead consumers. As the Panel determines that Respondent is attempting to commercially benefit by confusing Internet users as to Complainant’s affiliation with the <bedbathsandbeyond.com> domain name, the Panel finds that Respondent registered and uses the domain name in bad faith under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel notes that the examples of bad faith registration and use prescribed in Policy ¶ 4(b) are intended to be illustrative and not exhaustive. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith) Thus, the Panel may find bad faith beyond the parameters of Policy ¶ 4(b) in regards to the <bedbathbeyond.com> domain name. See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).
Respondent’s failure to make an active use of the <bedbathbeyond.com> domain name is evidence of bad faith registration and use. Therefore, the Panel finds that Respondent registered and uses the <bedbathbeyond.com> domain name in bad faith under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s failure to make an active use of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Complainant argues that Respondent is guilty of typosquatting with the <bedbathsandbeyond.com> and <bedbathbeyond.com> domain names. However, the Panel notes that both disputed domain names involve the removal of the ampersand, which the Panel finds is a portion of Complainant’s mark. Therefore, the Panel concludes that the disputed domain names are not examples of typosquatting and are not evidence of bad faith registration and use under Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bedbathsandbeyond.com> and <bedbathbeyond.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 29, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page