BBY Solutions, Inc. v. Rivers Of Honey ltd / Khayam Iftikhar
Claim Number: FA1208001460763
Complainant is BBY Solutions, Inc. (“Complainant”), represented by Brandon M. Ress of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is Rivers Of Honey ltd / Khayam Iftikhar (“Respondent”), British Virgin Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bestbuyrewards.com>, registered with eNom, Inc.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 30, 2012; the National Arbitration Forum received payment on August 30, 2012.
On August 30, 2012, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <bestbuyrewards.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 August 31, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 20, 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@bestbuyrewards.com. Also on August 31, 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 September 26, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
Best Buy is the owner of the BEST BUY mark and trade name (collectively the BEST BUY Mark). Best Buy commenced use of the BEST BUY Mark at least as early as 1983 in connection with operating retail stores offering consumer electronics and appliances. Since that time, Best Buy has continuously used the BEST BUY Mark and name in commerce in the United States.
Best Buy markets its products and services under the BEST BUY Mark through its website at http://www.bestbuy.com, which has been in operation since at least as early as 1996.
Since July 2003, Best Buy has offered a national customer loyalty program in connection with the BEST BUY REWARD ZONE composite mark.
Best Buy also markets its products and services under the BEST BUY mark through a variety of ancillary websites hosted on domain names that incorporate the BEST BUY mark and a descriptive or generic term, including http://bestbuybusiness.com, http://bestbuytradein.com, http://bestbuymobile.com, http://bestbuy-jobs.com, and http://bestbuy-communityrelations.com.
Best Buy currently owns a number of United States registrations and applications for the BEST BUY Mark and variations thereof, including the following: BESTBUY.COM (Reg. Nos. 2,638,360), BEST BUY (Reg. No. 3,416,626) and BEST BUY MOBILE & Design (Reg. No. 3,526,666), as well as a United States registration for its REWARD ZONE mark (Reg. No. 2,811,384) that it uses in conjunction with the BEST BUY mark.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)(ix).
[a.] The bestbuyrewards.com domain name is identical to the BEST BUY Marks in which Best Buy has trademark rights worldwide.
[i] Best Buy has rights in its trademarks.
The BEST BUY Marks have been used in commerce in connection with, among other things, operating retail stores offering consumer electronics and appliances since at least as early as 1983. In addition, Best Buy has registered and uses the domain name bestbuy.com in connection with the operating retail stores offering consumer electronics and appliances on the Internet. Best Buy first registered the bestbuy.com domain name in 1996 and has continuously maintained the registration for bestbuy.com since that time. Best Buy has offered a national customer loyalty program in connection with the BEST BUY REWARD ZONE composite mark since July 2003.
The BEST BUY Marks have become highly valuable assets of Best Buy, representing substantial goodwill. The value of these assets has been cultivated as a result of Best Buy’s continuous and exclusive use of the marks for many years, and because of Best Buy’s efforts to promote the mark through the expenditure of substantial sums and careful control of the public perception of both the nature and quality of the goods and services provided in connection with the marks.
It is well established under the Policy that Best Buy’s registration of a mark with federal authority establishes a prima facie case of Best Buy’s rights. See, e.g., Delta Corporate Identity, Inc. and Delta Air Lines, Inc. v. dltaairlines.com and deltaaairlines.com c/o Hanna El Hinn, FA548217 (NAF Oct. 12, 2005), citing Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (“Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.”), and Innomed Techs., Inc. v. DRP Servs., FA221171 (NAF Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes complainant's rights in the mark”).
[ii] The bestbuyrewards.com domain name is identical to the BEST BUY Marks.
Best Buy has used its BEST BUY Marks in commerce since at least 1983. As noted above, such long-standing and continuous use gives Best Buy exclusive rights in the BEST BUY Marks. ICANN panels have found that, where, as in this case, a domain name incorporates a distinctive mark in its entirety, it creates sufficient similarity between the mark and the domain name to render it confusingly similar. See Lowen Corp. v. Henry Chan, D2004-4030 (WIPO August 5, 2004) (finding that the domain name lowensigns.com is confusingly similar to LOWEN).
The addition of the common or generic term “rewards” to Best Buy’s famous BEST BUY trademark does not negate the confusing similarity between bestbuyrewards.com and the BEST BUY Marks under Policy ¶4(1)(i). See Exxon Mobil Corporation v. mga enterprises limited, FA1273445 (NAF Aug. 26, 2009) (finding that the addition of the terms “travel” and “club,” which related to Complainant’s mark and business, in the disputed domain name <exxontravelclub.com> created a confusing similarity between the disputed domain name and the registered mark); Homer TLC, Inc. v. WhoisGuard c/o WhoisGuard Protected, FA619597 (NAF Feb. 14, 2006) (finding that the addition of common word “realty” to Complainant’s registered mark did not negate the confusing similarity of the <homedepotrealty.com> domain name). Furthermore, Best Buy’s use of the BEST BUY REWARD ZONE composite mark in connection with its retail store and customer loyalty program services makes Respondent’s use of the common “rewards” term more likely to confuse consumers. Finally, the addition of a generic top-level domain, such as “.com,” is irrelevant in determining similarity of Respondent’s bestbuyrewards.com domain to Best Buy’s BEST BUY Marks. See, e.g., Delta Corporate Identity, Inc. and Delta Air Lines, Inc, citing Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (“[t]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants”); See also, Thomas B. Hudson v. Ted Machi & Associates, FA133759 (NAF Jan. 21, 2003).
In this case, the bestbuyrewards.com domain name is identical to and incorporates in its entirety the BEST BUY Marks. The domain name differs from the BEST BUY Marks only by the additions of the descriptive word “rewards” and the top-level domain, .com. These minor differences are insufficient to distinguish the bestbuyrewards.com domain name from the BEST BUY Marks, particular where, as discussed below, Registrant has used the domain name in connection with an apparent phishing scam involving a purported offer of BEST BUY gift cards, and currently uses the domain name to direct consumers to products and services offered by Best Buy’s competitors.
[b.] Respondent Has No Rights or Legitimate Interests in the Domain Name.
Because Best Buy has made a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests in the Domain Name. See, e.g., Tejon Ranchcorp and Tejon Ranch Co. v. J & L Enterprises, FA524749 (NAF September 20, 2005), citing Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (where complainant has asserted that respondent has no rights or legitimate interests with respect to domain name, respondent must come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent.”), and G.D. Searle v. Martin Mktg., FA118277 (NAF Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent”).
Moreover, Respondent must show it has rights or legitimate interest in respect of the domain name at issue by “concrete evidence.” See Kate Spade, LLC v. Darmstadter Designs, No. D2001-1384 (WIPO Jan. 3, 2002) citing UDRP Policy 4(c). “Concrete evidence” requires more than personal assertions; it requires documents or third party declarations in support of such assertions. Id. A failure to produce such concrete evidence entitles a panel to conclude that the respondent has no such rights or legitimate interest. Id.
From the evidence discussed below, it is clear that Respondent has no rights or legitimate interest in the bestbuyrewards.com domain name.
[i] Respondent has no relationship with Best Buy.
Respondent has no relationship, affiliation, connection, endorsement or association with Best Buy. Respondent has never requested or received any authorization, permission or license from Best Buy to use the BEST BUY Marks in any way.
[ii] Respondent has never been commonly known by the domain name bestbuyrewards.com or by the BEST BUY Marks and has never acquired any trademark rights in the same.
There is no evidence in the WHOIS information to suggest that Respondent is known by the bestbuyrewards.com domain name. Indeed, given Best Buy’s long-time and extensive world-wide rights in the BEST BUY Marks in connection with consumer electronics retail stores and related goods and services, Respondent could not have rights in the BEST BUY Marks unless Best Buy granted them. However, that has not occurred.
[iii] Respondent has not used the domain name in good faith and in connection with a bona fide offering of goods or services.
The website that resolves from the subject domain name has previously displayed the BEST BUY mark and BEST BUY tag logo and played an audio recording that congratulates the user for being the day’s winner of a $500 BEST BUY gift card. The website then directed the user to enter his/her name, phone number, and email address to “Activate my Gift Card.”
Respondent’s use of bestbuyrewards.com in connection with a phony gift card award constitutes apparent “phishing.” Upon information and belief, Respondent is not engaged in a bona fide offering of goods and services, but rather has used the subject domain name in an attempt to divert Best Buy’s customers and potential customers to its website in order to obtain personal information for commercial gain. Such use is not legitimate or a bona fide offering of goods and services. See, e.g., Edible Communities, Inc. v. Patrick Thoreau, FA0803001158554 (NAF Apr. 16, 2008) (“Respondent’s use of the disputed domain name to collect personal information from Complainant’s consumers and advertisers is not 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)”); Juno Online Servs., Inc. v. Nelson, FA 241972 (NAF Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Further, this website gave the appearance of being associated or affiliated with Complainant by incorporating Complainant’s BEST BUY Mark and distinctive yellow tag logo. Respondent’s attempt to pass itself off as Complainant or an affiliate or associate thereof is a blatant unauthorized use of Complainant’s marks and evidence that Respondent has no rights or legitimate interests in the subject domain names. See American International Group, Inc. v. Busby, FA 156251 (NAF May 30, 2003) (finding that Respondent’s attempt to pass itself off as Complainant online was evidence that Respondent has no rights or legitimate interests in the disputed domain name).
Respondent’s current website rotates a series of sponsored links, which include a number of online retail stores that compete against Best Buy. Such use is not legitimate because it diverts Complainant’s customers and potential customers to Respondent’s website and to the websites of Complainant’s competitors. See Athanasios Sermbizis, D2000-0923 (finding that Respondent’s domain name which linked visitors to a directory of regional competitors was not a legitimate use). See also Homer, TLC Inc. v. Kang, FA573872 (NAF Nov. 22, 2005) (“Respondent’s use of ‘a’ domain name that is identical to Complainant’s mark to divert Internet users to third-party websites for Respondent’s own commercial gain does not constitute a bona fide offering . . . or a legitimate noncommercial or fair use . . . .”). Such use of Best Buy’s trademarks is clearly confusing and deceptive to consumers. As such, Respondent’s website at bestbuyrewards.com is not used or maintained in good faith and in connection with a bona fide offering of goods or services.
[c.] Respondent Registered and Used the Domain Name in Bad Faith.
Respondent’s registration and use of the bestbuyrewards.com domain name clearly demonstrate its bad faith because: (1) Respondent has used Best Buy’s trademark in the subject domain name and on the website to which it resolves in an attempt to obtain personal information from Best Buy’s customers; (2) Respondent currently uses the subject domain name to display sponsored links that misdirect consumers to Best Buy’s competitors, and (3) Respondent has actual knowledge of Best Buy’s trademark rights in its BEST BUY Marks.
As discussed above, Respondent has used the bestbuyrewards.com domain name, which wholly incorporates the BEST BUY Marks, to display to Internet users that they have won a $500 BEST BUY gift card in an attempt to obtain personal information from Complainant’s customers and potential customers. See Juno Online Servs., Inc. v. Nelson, FA 241972 (NAF Mar. 29, 2004) (finding that use of the domain name <billing-juno.com> in a phishing scam demonstrated bad faith use and registration); Wells Fargo & Co. v. Maniac State, FA 608239 (NAF Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers).
Respondent’s past use of the domain name, by itself, is sufficient to establish bad faith for the purposes of this proceeding. See Ingersoll-Rand Co. v. Gullly, D2000-0021 (WIPO Mar. 2, 2000) (“If at any time following registration the name is used in bad faith, the fact of bad faith use is established.”); see also Bass Hotels v. Rodgerall, D2000-0568 (WIPO Aug. 7, 2000) (“Moreover, the fact that the offending use of the website ceased sometime prior to the issuance of the Panel’s decision, does not change the fact that the domain name at issue has been registered and is being used in bad faith, since the phrase ‘is being used’ has been interpreted to refer not to a particular point in time, but to any time during the period of time following registration of the domain name at issue.”)
Respondent is currently using the bestbuyrewards.com domain name to direct Internet users to a commercial directory website featuring links to competitor websites offering goods and services of the nature offered by Complainant. Such use is concrete evidence of bad faith registration and use. See, e.g., Society for the Promotion of Japanese Animation v. In Stealth Mode, citing S. Exposure v. S. Exposure, Inc., FA 94864 (NAF July 18, 2000) (respondent acted in bad faith by attracting Internet users to website that competes with complainant’s business), and Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (respondent diverted business from complainant to competing website in violation of Policy ¶4(b)(iii)).
Furthermore, it is clear that Respondent registered the disputed domain name with actual notice of the BEST BUY Marks in light of the obvious link between Best Buy and the content of the website, as well as the blatant and unauthorized use of the BEST BUY Marks. See MIVA, Inc. v. WhoIs Privacy Inc., citing Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (because link between complainant’s mark and content advertised on respondent’s website obvious, respondent “must have known about the complainant’s mark when it registered the subject domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant to prove each of the following three elements to obtain an order canceling or transferring a domain name:
(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 is the owner of the BEST BUY mark and trade name which it uses in connection with the operation of retail stores offering consumer electronics and appliances. Complainant has offered a national customer loyalty program in connection with the “Best Buy Reward Zone” composite mark since July 2003. Complainant also owns several trademark registrations with the United States Patent & Trademark Office (“USPTO”), including the following:
BESTBUY.COM (Reg. No. 2,638,360 registered October 22, 2002);
REWARD ZONE (Reg. No. 2,811,384 registered February 3, 2004); and
BEST BUY (Reg. No. 3,416,626 registered April 29, 2008).
The Panel concludes Complainant has sufficiently established its rights in the BESTBUY.COM, REWARD ZONE, and BEST BUY marks under Policy ¶4(a)(i), through its trademark registrations with the USPTO. 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 Respondent’s <bestbuyrewards.com> domain name is identical and confusingly similar to the BEST BUY marks. Complainant contends Respondent’s addition of the generic term “rewards” to the BEST BUY mark does not negate the confusing similarity of the domain name. The term “rewards” appears to refer to Complainant’s rewards program under the REWARD ZONE program, making the term descriptive. The disputed domain name removes the space from between the terms of Complainant’s mark, which is an immaterial change in a UDRP analysis. Furthermore, the addition of the gTLD “.com” is also irrelevant to a Policy ¶4(a)(i) analysis. The Panel finds Respondent’s disputed domain name is confusingly similar to the BEST BUY mark under Policy ¶4(a)(i). See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶4(a)(i) because the appended term related directly to the complainant’s business); 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)).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 Respondent has no relationship, affiliation, connection, endorsement or association with Complainant and Respondent is not commonly known by the disputed domain name. Respondent is identified in the WHOIS information as “Rivers Of Honey ltd / Khayam Iftikhar.” The Panel finds Respondent is not commonly known by the <bestbuyrewards.com> domain name under Policy ¶4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Complainant also claims Respondent’s previously use of the disputed domain name in connection with a “phony gift card award constitutes apparent ‘phishing.’” Complainant’s screenshot shows Respondent’s website offers a $500 BEST BUY gift card in exchange for Internet users’ names, mobile phone numbers, and e-mail addresses. Complainant argues such previous use, along with Respondent’s display of the BEST BUY and yellow tag logo on the resolving website, constituted an attempt to pass itself off as Complainant in order to conduct its phishing scheme. The Panel agrees. Respondent’s use of the disputed domain name to collect the personal information of Complainant’s customers is not a bona fide use of the disputed domain name. This means Respondent’s initial use of the disputed domain name is not 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 Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
Complainant claims Respondent currently uses the disputed domain name to resolve to a web site with a series of sponsored links to various competing and unrelated businesses and retailers. Presumably, Respondent directly or indirectly receives “click through” revenue from these links. Respondent’s current use of the disputed domain name is not 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 H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent previously used the domain name to pass itself off as Complainant in offering a $500 BEST BUY gift card so it could phish for Internet users’ personal information. Respondent’s prior use of the domain name appeared to offer a gift card for Complainant’s stores, while also collecting Internet users names, mobile phone numbers, and e-mail addresses. It appears to the Panel Respondent was using Complainant’s mark to phish for Internet users personal information. This Panel finds such use is sufficient evidence of bad faith under Policy ¶4(a)(iii). See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (determining that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name).
Complainant claims Respondent is currently using the disputed domain name to commercially benefit from its offering of third-party links to competing websites and such use is evidence of bad faith under Policy ¶4(b)(iii). Respondent’s current use of the domain name involves the use of third-party links resolving to competing websites and businesses. The Panel agrees with Complainant and finds Respondent’s use of the disputed domain name to advertise Complainant’s competitors is sufficient evidence of bad faith under Policy ¶4(a)(i). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii).”).
Complainant claims Respondent clearly had actual knowledge of Complainant’s rights in the BEST BUY mark prior to registering the disputed domain name. Based upon Respondent’s prior use of the domain, it appears clear Respondent had actual knowledge of Complainant's mark, logo and rights. This leads the Panel to conclude Respondent registered the disputed domain name in bad faith under 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").
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered the <bestbuyrewards.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, October 10, 2012
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