national arbitration forum

 

DECISION

 

Macy’s Inc. and its subsidiary Macy's West Stores, Inc v. Jardimar Holdings Corp / Ernesto Charingola

Claim Number: FA1211001473475

 

PARTIES

Complainant is Macy’s Inc. and its subsidiary Macy's West Stores, Inc (“Complainant”), represented by CitizenHawk, Inc., California, USA.  Respondent is Jardimar Holdings Corp / Ernesto Charingola (“Respondent”), Switzerland.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <bloomgingdales.com>, <bloomingdoles.com>, <bloominggdales.com>, and <maycys.com>, registered with URL Solutions Inc.

 

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.

 

Darryl C. Wilson, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 29, 2012; the National Arbitration Forum received payment on November 29, 2012.

 

On December 7, 2012, URL Solutions Inc. confirmed by e-mail to the National Arbitration Forum that the <bloomgingdales.com>, <bloomingdoles.com>, <bloominggdales.com>, and <maycys.com> domain names are registered with URL Solutions Inc. and that Respondent is the current registrant of the names.  URL Solutions Inc. has verified that Respondent is bound by the URL Solutions 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 December 18, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 7, 2013 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@bloomgingdales.com, postmaster@bloomingdoles.com, postmaster@bloominggdales.com, postmaster@maycys.com.  Also on December 18, 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 January 11, 2013 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson 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

 

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Complainant is Macy’s Inc., and its subsidiary, who list their address as Cincinnati, OH USA. Complainant is a well-known retail establishment that operates more than 800 Macy’s and Bloomindale’s stores throughout the USA and its territories. Bloomingdale’s also operates outside the USA. Complainant first adopted the MACY’S and BLOOMINGDALE’S marks during the 19th century and later obtained registrations for the marks which they have maintained and are current today.

 

Respondent is Jardimar Holdings Corp/Ernesto Charingola who list its address as Geneve (FR), 1204 CH. The registrar of the domain names list its address as Panama. The <maycys.com> domain name was registered on April 18, 2004, <bloomgingdales.com> was registered on September 1, 2006, <bloomingdoles.com> was registered on May 20, 2010, and <bloominggdales.com> was registered on January 12, 2006.

 

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

Complainant claims that it owns rights in the BLOOMINGDALE’S and MACY’S marks and uses these marks in the sale of a variety of clothing goods and for the provision of services to customers as a department store.  See, e.g., BLOOMINGDALE’S—department store services (Reg. No. 945,425 registered on October 17, 1972); BLOOMINGDALE’s—selling of apparel (Reg. No. 2,010,033 registered on Oct. 22, 1996); MACY’S—selling of apparel (Reg. No. 78,333 registered on June 7, 1910); MACY’S—department store services (Reg. No. 3,129,938 registered on August 15, 2006).  Complainant argues that it is also important to note that it is irrelevant whether Complainant registered the mark in the country where Respondent operates or resides.  See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). The Panel finds that Complainant’s USPTO registrations are sufficient to establish its rights under Policy ¶ 4(a)(i).  See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).

 

Complainant argues that Respondent’s <maycys.com> domain name is confusingly similar to the MACY’S mark. Complainant asserts that the relevant domain name <maycys.com>  only differs from the MACY’S mark by the addition of a single character and a gTLD.  The Panel notes that beyond the addition of the “y” and “.com” to the domain name, Respondent also removed the apostrophe.  The Panel concludes that these alterations are insufficient to illustrate a distinction between the mark and the disputed domain name.  See LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that the omission of an apostrophe did not significantly distinguish the domain name from the mark); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).  The Panel finds that the <maycys.com> domain name is confusingly similar to the MACY’S mark under Policy ¶ 4(a)(i).

 

Complainant contends that the <bloomgingdales.com>, <bloomingdoles.com>, and <bloominggdales.com> domain names are confusingly similar to the BLOOMINGDALE’S mark. Complainant also asserts that the <bloomgingdales.com>, <bloomingdoles.com>, and <bloominggdales.com> domain names only differ from the mark by a single character, the addition of a gTLD, and the deletion of a hyphen.  The Panel agrees that variation by a single letter to the otherwise distinct BLOOMINGDALE’S mark fails to remove the confusing similarity between the domain names and the mark.  See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive). The Panel also finds that the deletion of a hyphen and addition of a gTLD fail to remove the <bloomgingdales.com>, <bloomingdoles.com>, and <bloominggdales.com> domain names from the realm of confusing similarity. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). The Panel finds that the <bloomgingdales.com>, <bloomingdoles.com>, and <bloominggdales.com> domain names are confusingly similar under Policy ¶ 4(a)(i).

 

Respondent makes no contentions with regards to Policy ¶ 4(a)(i). 

 

The Complainant has proven this element.

 

Rights or Legitimate Interests

The Panel recognizes 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). The Complainant has met this burden.

 

Complainant asserts that Respondent has not been commonly known by the disputed domain names, as the WHOIS information does not indicate that Respondent is known by any of the disputed domain names.  Complainant also asserts that Respondent is not sponsored by or legitimately affiliated with Complainant in any way.  The Panel notes that the WHOIS information lists “Jardimar Holdings Corp / Ernesto Charingola” as the registrant of all of the names.  The Panel finds that Respondent in this case is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). 

 

The Panel notes that in order for Respondent to lack of rights it must be shown that Respondent did not use the disputed domain names in furtherance of a bona fide offering of goods and services or for a legitimate noncommercial or fair use.  The Panel notes that the <maycys.com>, <bloomingdoles.com>, and <bloominggdales.com> domain names resolve to websites that solicit an array of clothing and other unrelated products/services.  Previous panels have found that it is not a bona fide offering of goods or services to solicit competing products either directly or through hyperlinks.  See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).  The Panel therefore concludes that the maycys.com>, <bloomingdoles.com>, and <bloominggdales.com> domain names are not a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor do they present a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).

 

The Panel further notes that the <bloomgingdales.com> domain name is being used to resolve to Complainant’s own domain name.  The Panel additionally notes that Complainant mentions that Respondent is using this domain name in violation of an affiliate agreement between the parties.  Previous panels have found that a respondent does not possess rights or legitimate interest in a domain name that was registered to exploit an affiliate agreement.  See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services).  The Panel finds that Respondent did not use any of the disputed domain names in a Policy ¶ 4(c)(i) bona fide offering or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the disputed domain name.

 

Complainant also contends that Respondent is engaging in a “classic example of typosquatting” designed to take advantage of Internet users’ typographical errors which means the names are confusingly similar by design.  The Panel notes that the slight alterations made to Complainant’s marks do indeed show that these domain names will most likely be visited as a result of mistakes made in the typing of Complainant’s marks.  The Panel finds that Respondent’s domain names are confusingly similar under Policy ¶ 4(a)(ii) because they encapsulate common spelling errors of Complainant’s marks.  See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (holding that the respondent’s disputed domain names were confusingly similar to the complainant’s mark because the disputed domain names were common misspellings of the mark involving keys that were adjacent to the current keys comprising the complainant’s mark).

 

Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).

 

Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain. 

 

The Complainant has proven this element.

 

Registration and Use in Bad Faith

Complainant argues that Respondent has engaged in an ongoing pattern of serial cybersquatting/typosquatting.  The Panel notes that Complainant has provided several other cases in which Respondent was found to have registered and used a domain name in bad faith.  See Mattel, Inc. v. Jardimar Holdings Corp / Ernesto Charingola, FA 14315622 (Nat. Arb. Forum Apr. 10, 2012); see also Standard Bank of South Africa Ltd. v. Jardimar Holdings Corp / Ernesto Charingola, FA 1463904 (Nat. Arb. Forum Nov. 8, 2012).  Previous panels have found that a pattern of bad faith registrations, evidenced by prior UDRP decisions, is indicative of a respondent’s bad faith use and registration.  See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).  The Panel finds that Respondent has engaged in bad faith registrations in its use of the disputed domain names pursuant to Policy ¶ 4(b)(ii).

 

Complainant next contends that Respondent’s hyperlinks resolve to websites promoting products that compete with Complainant.  Complainant contends that these links divert potential customers away from Complainants to the competing websites, thus disrupting Complainant’s business.  The Panel notes that the <maycys.com>, <bloomingdoles.com>, and <bloominggdales.com> domain names domain name resolve to websites that feature hyperlinks that advertise different types of apparel.  See Complainant’s Exhibit H. The Panel finds that because the domain names are offering hyperlinks to Complainant’s competitors,  that the <maycys.com>, <bloomingdoles.com>, and <bloominggdales.com> domain names were registered and are being used in bad faith under Policy ¶ 4(b)(iii).  See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)). 

 

Complainant contends that Respondent is using the <maycys.com>, <bloomingdoles.com>, and <bloominggdales.com> domain names to resolve to websites where Respondent generates revenues through click-through profits.  Complainant argues that Respondent attempts to take advantage of Complainant’s well known marks to profit through wrongful competitive advantage.  The Panel notes that the <maycys.com>, <bloomingdoles.com>, and <bloominggdales.com> domain names resolve to websites that solicit an array of clothing and other unrelated products/services and finds that such use is evidence of Respondent’s bad faith in registering and using the domain names.  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 T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).  The Panel finds that Respondent registered and is using  the <maycys.com>, <bloomingdoles.com>, and <bloominggdales.com> domain names in bad faith pursuant Policy ¶ 4(b)(iv).

 

Complainant argues that Respondent is using the <bloomgingdales.com> domain name to resolve to Complainant’s own domain name in violation of an affiliate agreement between the parties.  Respondent seeks to opportunistically benefit from its registration and use of the disputed domain name at Complainant’s expense.  Previous panels have found bad faith when a respondent enrolls in an affiliate program solely to submit a typosquatted domain

name and profit off of the goodwill of Complainant.  See Sports Auth. Mich., Inc. v. Skander, FA 135598 (Nat. Arb. Forum Jan. 7, 2002) (stating that “[b]y registering the ‘typosquatted’ domain name in [Complainant’s] affiliate program, Respondent profits on the goodwill of [Complainant’s] protected marks and primary Internet domain names,” and therefore registered and used the domain name in bad faith).  The Panel finds that the <bloomgingdales.com> domain name was registered and is being used in bad faith under Policy ¶ 4(a)(iii).

Further the Panel finds that every single one of the disputed domain names appears to be typosquatted and provide further evidence of Respondent’s bad faith use and registration under Policy ¶ 4(a)(iii).  See Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors.  Typosquatting is inherently parasitic and of itself evidence of bad faith.”). 

 

Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).

 

The Complainant has proven this element.

 

DECISION

Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.

 

Accordingly, it is Ordered that the <bloomgingdales.com>, <bloomingdoles.com>, <bloominggdales.com>, and <maycys.com>  domain names be TRANSFERRED from Respondent to Complainant.

 

 

                                    Darryl C. Wilson, Panelist

                                    Dated: January 25, 2013

 

 

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