national arbitration forum

 

DECISION

 

Bed Bath & Beyond Procurement Co. Inc. v. Privacy Ltd. Disclosed Agent for Yolapt

Claim Number: FA1207001453558

 

PARTIES

Complainant is Bed Bath & Beyond Procurement Co. Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA.  Respondent is Privacy Ltd. Disclosed Agent for Yolapt (“Respondent”), Isle of Man.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <bedbathanadbeyond.com>, <bedbathandbeoynd.com>, <bedbathandbeyobd.com>, <bedbathandbeyomd.com>, <bedbathandbeyoned.com>, <bedbathandbeyund.com>, <bedbathandbond.com>, <bedbathandboyond.com>, <bedbathanddbeyond.com>, <bedbathbeyand.com>, <bedbathbeyhond.com>, <bedbath-beyond.com>, <bedbathbeyoud.com>, <beddathandbeyond.com>, <bwdbathandbeyond.com>, <wbedbathandbeyond.com>, registered with Fabulous.Com Pty Ltd.

 

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.

 

The Honourable Neil Anthony Brown QC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 16, 2012; the National Arbitration Forum received payment on July 17, 2012.

 

On July 18, 2012, Fabulous.Com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <bedbathanadbeyond.com>, <bedbathandbeoynd.com>, <bedbathandbeyobd.com>, <bedbathandbeyomd.com>, <bedbathandbeyoned.com>, <bedbathandbeyund.com>, <bedbathandbond.com>, <bedbathandboyond.com>, <bedbathanddbeyond.com>, <bedbathbeyand.com>, <bedbathbeyhond.com>, <bedbath-beyond.com>, <bedbathbeyoud.com>, <beddathandbeyond.com>, <bwdbathandbeyond.com>, and <wbedbathandbeyond.com> domain names are registered with Fabulous.Com Pty Ltd and that Respondent is the current registrant of the names.  Fabulous.Com Pty Ltd has verified that Respondent is bound by the Fabulous.Com Pty Ltd 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 25, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 14, 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@bedbathanadbeyond.com, postmaster@bedbathandbeoynd.com, postmaster@bedbathandbeyobd.com, postmaster@bedbathandbeyomd.com, postmaster@bedbathandbeyoned.com, postmaster@bedbathandbeyund.com, postmaster@bedbathandbond.com, postmaster@bedbathandboyond.com, postmaster@bedbathanddbeyond.com, postmaster@bedbathbeyand.com, postmaster@bedbathbeyhond.com, postmaster@bedbath-beyond.com, postmaster@bedbathbeyoud.com, postmaster@beddathandbeyond.com, postmaster@bwdbathandbeyond.com, and postmaster@wbedbathandbeyond.com.  Also on July 25, 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 21, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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 names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

 

Complainant made the following contentions.

 

1.    Complainant owns trademark rights in the BED BATH & BEYOND mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,831,709 registered April 19, 1994). See Exhibit E.

2.    Complainant uses the mark in its retail services to sell household items, including linen products, home furnishings, housewares, appliances, supplies, lamps, soaps, bathroom accessories, photo frames, and other similar products. Complainant’s business was formed in 1971, has used the BED BATH & BEYOND mark since October 1, 1988 and currently operates retail stores across North America. Complainant uses the website <bedbathandbeyond.com> to market and sell its goods online.

 

3.    Respondent registered the <bedbathanadbeyond.com>, <bedbathandbeoynd.com>, <bedbathandbeyobd.com>, <bedbathandbeyomd.com>, <bedbathandbeyoned.com>, <bedbathandbeyund.com>, <bedbathandbond.com>, <bedbathandboyond.com>, <bedbathanddbeyond.com>, <bedbathbeyand.com>, <bedbathbeyhond.com>, <bedbath-beyond.com>, <bedbathbeyoud.com>, <beddathandbeyond.com>, <bwdbathandbeyond.com> and <wbedbathandbeyond.com> domain names on September 24, 2004. The disputed domain names are confusingly similar to Complainant’s mark and constitute typosquatting by Respondent. Respondent is not commonly known by the disputed domain name and does not have authorization to use Complainant’s mark in a domain name.

 

4.    The disputed domain names have been registered and are being used in bad faith. Respondent uses the disputed domain names to divert Internet users to its own website in order to offer generic links to websites that sell goods in competition with Complainant’s business. Respondent receives referral fees from the linked websites when Internet users click on the offered hyperlinks. Respondent takes advantage of the fame and reputation associated with Complainant’s mark to lure Complainant’s consumers to its website, which disrupts Complainant’s business.

 

5.    Respondent has been involved in other UDRP decisions in which the domain names were transferred from Respondent.

 

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

 

1. Complainant is a United States company that operates a well known chain of domestic merchandise stores.

 

2 Complainant owns trademark rights in the BED BATH & BEYOND mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,831,709 registered April 19, 1994).

 

3. Respondent registered the <bedbathanadbeyond.com>,  <bedbathandbeoynd.com>, <bedbathandbeyobd.com>, <bedbathandbeyomd.com>, <bedbathandbeyoned.com>, <bedbathandbeyund.com>, <bedbathandbond.com>,  <bedbathandboyond.com>, <bedbathanddbeyond.com>, <bedbathbeyand.com>, <bedbathbeyhond.com>, <bedbath-beyond.com>, <bedbathbeyoud.com>, <beddathandbeyond.com>, <bwdbathandbeyond.com> and <wbedbathandbeyond.com> domain names on September 24, 2004 and linked them to its website which offers generic links to websites that sell goods in competition with Complainant’s business.

 

 

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.

 

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.”).

 

Identical and/or Confusingly Similar

 

The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant claims to own rights in the BED BATH & BEYOND mark via its trademark registration with the USPTO (e.g., Reg. No. 1,831,709 registered April 19, 1994). In Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006), the panel stated that the complainant establishes rights in its nark through registration with the USPTO. The Panel concludes that Complainant’s rights in the BED BATH & BEYOND mark are secured under Policy ¶ 4(a) (i) by having registered the mark with the USPTO.

 

The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s BED BATH & BEYOND mark. Complainant alleges that the disputed domain names are confusingly similar to its BED BATH & BEYOND mark. Complainant contends that each of the disputed domain names include the generic top-level domain (“gTLD”) “.com ” and differ by only one or two characters by either adding an extra letter, removing a letter, replacing one letter with a different letter, or transposing two characters. The Panel observes that the <bedbathanadbeyond.com>, <bedbathandbeoynd.com>, <bedbathandbeyobd.com>, <bedbathandbeyomd.com>, <bedbathandbeyoned.com>, <bedbathandbeyund.com>, <bedbathandbond.com>, <bedbathandboyond.com>, <bedbathanddbeyond.com>, <beddathandbeyond.com>, <bwdbathandbeyond.com> and <wbedbathandbeyond.com> domain names omit the spaces between the words of the mark and also replace the ampersand in the mark with the word “and.” The Panel also notes that the <bedbathbeyand.com>, <bedbathbeyhond.com>, <bedbath-beyond.com>, and <bedbathbeyoud.com> domain names do not include an ampersand and the <bedbath-beyond.com> domain name includes a hyphen in the place of the ampersand in the BED BATH & BEYOND mark. The Panel finds that adding a gTLD and varying the domain names by merely one or two letters, removing the spaces and replacing an ampersand with the word “and” are not changes sufficient to alleviate the domain names’ confusing similarity to Complainant’s mark pursuant to Policy ¶ 4(a) (i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a) (i) analysis.”); see also Myspace, Inc. v. Kang, FA 672160 (Nat. Arb. Forum June 19, 2006) (finding that the <myspce.com> domain name was confusingly similar to the complainant’s MYSPACE mark and the slight difference in spelling did not reduce the confusing similarity); 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)); see also Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding that the <wrightandlato.com> domain name is identical to the complainant’s WRIGHT & LATO mark, because the ampersand symbol (&) is not reproducible in a URL); see also 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 Pep Boys Manny, Moe, and Jack v. E-Commerce Today, Ltd., AF-0145 (eResolution May 3, 2000) (finding that a hyphen between words of the complainant’s registered mark is confusingly similar).

 

Complainant has thus made out the first of the three elements that it must establish.

 

Rights or Legitimate Interests

 

It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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.”).

 

 

The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:

 

(a)  Respondent has chosen to take Complainant’s BED BATH & BEYOND mark  and to use it in its domain names;

 

(b)  Respondent has then made only minor changes to the mark as it is incorporated into the domain names and that the result is that they are confusingly similar to the mark;

 

(c)   The disputed domain names resolve to Respondent’s website containing links to websites which offer goods for sale that are in competition with those of Complainant;

 

(d) Complainant argues that Respondent is not commonly known by any of the disputed domain names, is not affiliated with Complainant and does not have Complainant’s permission to use the BED BATH & BEYOND mark in any way. Complainant provides evidence that shows that the WHOIS information for the disputed domain names identifies “Privacy Ltd. Disclosed Agent for YOLAPT” as the registrant. See Exhibit I. The panel in Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003), stated that the WHOIS information associated with the disputed domain name does not indicate that the respondent was commonly known by the disputed domain name. In IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), the panel concluded that the respondent did not establish rights or legitimate interests in the disputed domain name because the respondent had no authorization to register domain names using the complainant’s mark. The Panel finds that Respondent’s lack of permission to use Complainant’s mark, as well as the WHOIS information for the domain names demonstrate that Respondent is not commonly known by any of the disputed domain names and therefore Respondent does not possess rights or legitimate interests in the domain names under Policy ¶ 4(c) (ii).

 

(e) Complainant contends that Respondent uses the disputed domain names to lead Internet traffic to its website which features hyperlinks to businesses whose offered goods compete with Complainant’s business. Complainant alleges that Respondent receives referral fees in exchange for hosting the hyperlinks and that such use is not in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel finds that diverting Internet users to a website featuring hyperlinks that compete with Complainant’s business 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). See 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 other than 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)).

 

All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.

 

Complainant has thus made out the second of the three elements that it must establish.

 

Registration and Use in Bad Faith

 

It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

 

Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.

 

First, Complainant argues that Respondent was involved in multiple other UDRP domain disputes wherein the domain names were transferred from Respondent to the holder of the mark. See Exhibit N. Complainant further asserts that Respondent currently owns domain names that are typosquatted versions of other entities’ registered trademarks. See Exhibit O. Complainant contends that prior UDRP decisions against Respondent, as well as current registrations for infringing domain names, demonstrate Respondent’s pattern of bad faith registration and use. The Panel also observes that the current dispute involves sixteen domain names that Complainant alleges infringe on its mark. The Panel finds that Respondent has shown a pattern of bad faith registration and use of numerous infringing domain names in past cases, as well as in the current dispute, which is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b) (ii). See Sport Supply Group, Inc. v. Lang, D2004-0829 (WIPO Dec. 10, 2004) (“[Respondent] registered the <usgames.com> domain name in order to prevent [Complainant] from reflecting its U.S. GAMES Mark in a corresponding domain name [pursuant to Policy ¶ 4(b) (ii)].  The pattern of such conduct is established, inter alia, by the public decisions of two different UDRP proceedings [against] Respondent.”); see also Nabisco Brands Co. v. Patron Group, Inc., D2000-0032 (WIPO Feb. 23, 2000) (holding that registration of numerous domain names is one factor in determining registration and use in bad faith); see also Caterpillar Inc. v. Miyar, FA 95623 (Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple domain names in a short time frame indicates an intention to prevent the mark holder from using its mark and provides evidence of a pattern of conduct).

 

Secondly, Complainant asserts that Respondent disrupts Complainant’s business by hosting competitors’ hyperlinks at the resolving websites. Complainant argues that Respondent’s effort to divert customers is evidence of bad faith registration and use. The panel in St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007), stated that the respondent redirected Internet users looking for the complainant’s website to competing websites, which demonstrated bad faith registration and use. The Panel concludes that Respondent’s operation of a website offering competing hyperlinks in order to disrupt Complainant’s business constitutes bad faith registration and use under Policy ¶ 4(b) (iii).

 

Thirdly, Complainant argues that Respondent set up a “click-through” website in order to receive revenue for each diverted Internet user who clicks on the offered links, which demonstrates Respondent’s bad faith. Complainant alleges that Respondent uses the disputed domain names to attract and mislead Internet consumers in order to make a profit. The Panel finds that Respondent’s registration and use of the disputed domain names in bad faith under Policy ¶ 4(b) (iv) is demonstrated by Respondent’s use of confusingly similar domain names to attract Internet traffic for commercial gain. See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites.  Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).

 

Fourthly, Complainant argues that by registering multiple domain names using misspelled versions of its BED BATH & BEYOND mark, Respondent is engaged in typosquatting, which is evidence of bad faith. The Panel notes that the <bedbathanadbeyond.com>, <bedbathandbeoynd.com>, <bedbathandbeyobd.com>, <bedbathandbeyomd.com>, <bedbathandbeyoned.com>, <bedbathandbeyund.com>, <bedbathandbond.com>, <bedbathandboyond.com>, <bedbathanddbeyond.com>, <bedbath-beyond.com><beddathandbeyond.com>, <bwdbathandbeyond.com><wbedbathandbeyond.com> beddathandbeyond.com>, <bwdbathandbeyond.com> and <wbedbathandbeyond.com> domain names replace the ampersand contained in Complainant’s mark with the word “and ” and the <bedbath-beyond.com> domain name includes a hyphen in place of the ampersand. Those variations do not strictly constitute typosquatting.  However, the Panel finds that the <bedbathbeyand.com>, <bedbathbeyhond.com> and <bedbathbeyoud.com> domain names omit the ampersand in the BED BATH & BEYOND mark, misspell the mark by one letter, and add a gTLD. Thus, in regards to the <bedbathbeyand.com>, <bedbathbeyhond.com>, and <bedbathbeyoud.com> domain names, the Panel finds evidence of typosquatting and concludes that Respondent registered and uses these disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003) (holding that the practice of typosquatting “diverts Internet users who misspell Complainant’s mark to a website apparently owned by Respondent for Respondent’s commercial gain.  ‘Typosquatting’ has been recognized as evidencing bad faith registration and use under Policy ¶ 4(b) (iv).”).

 

Fifthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of each of the disputed domain names using the BED BATH & BEYOND mark and in view of the conduct that Respondent engaged in when using them, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.

 

Complainant has thus made out the third of the three elements that it must establish.

 

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 <bedbathanadbeyond.com>, <bedbathandbeoynd.com>, <bedbathandbeyobd.com>, <bedbathandbeyomd.com>, <bedbathandbeyoned.com>, <bedbathandbeyund.com>, <bedbathandbond.com>, <bedbathandboyond.com>, <bedbathanddbeyond.com>, <bedbathbeyand.com>, <bedbathbeyhond.com>, <bedbath-beyond.com>, <bedbathbeyoud.com>, <beddathandbeyond.com>, <bwdbathandbeyond.com>, and <wbedbathandbeyond.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

The Honourable Neil Anthony Brown QC

Panelist

Dated:  August 22, 2012

 

 

 

 

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