national arbitration forum

 

DECISION

 

Liberty Procurement Co. Inc. formerly known as Bed Bath & Beyond Procurement Co. Inc. v. Domcharme Group / Jean Lucas

Claim Number: FA1301001481719

 

PARTIES

Complainant is Liberty Procurement Co. Inc. formerly known as Bed Bath & Beyond Procurement Co. Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA.  Respondent is Domcharme Group / Jean Lucas (“Respondent”), Canada.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bdbathandbeyond.com>, registered with ENOM, 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.

 

Karl V. Fink (Ret.), as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 23, 2013; the National Arbitration Forum received payment on January 23, 2013.

 

On January 24, 2013, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <bdbathandbeyond.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the names.  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 January 24, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 13, 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@bdbathandbeyond.com.  Also on January 24, 2013, 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 February 19, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Karl V. Fink (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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

  1. Complainant
    1. Complainant, Liberty Procurement Co. Inc. formerly known as Bed Bath & Beyond Procurement Co. Inc., operates a chain of domestic merchandise retail stores across the United States, Puerto Rico, and Canada. Complainant features mostly medium-ranged, and also a limited selection of high quality, domestic merchandise: items for the bedroom, bathroom, ktichen, and dining room. Complainant employs approximately 46,000 associates, mainly in stores, with the balance working in offices and distribution centers.
    2. Complainant provides that it is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the BED BATH & BEYOND mark (e.g., Reg. No. 1,712,392, registered September 1, 1992).
    3. Respondent’s <bdbathandbeyond.com> domain name is confusingly similar to Complainant’s mark because it differs by only a single character from Complainant’s mark.
    4. Respondent has no rights or legitimate interests in respect to the disputed domain name.

                                          i.    Respondent has not been commonly known by the disputed domain name.

                                         ii.    Respondent is using the disputed domain name to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.

    1. Respondent registered and is using the disputed domain name in bad faith.

                                          i.    Respondent is a serial cybersquatter/typosquatter.

                                         ii.    Respondent’s advertised pay-per-click links displayed on Respondent’s resolving website promotes products that compete with Complainant.

                                        iii.    Respondent is using the disputed domain name website in connection with generating revenue as a “click through” website.

                                       iv.    Respondent is engaging in typosquatting behavior.

    1. Respondent registered the <bdbathandbeyond.com> domain name on July 8, 2004.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

For the reasons set forth below, the Panel finds that the Complainant is entitled to the relief requested.

 

 

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, Liberty Procurement Co. Inc. formerly known as Bed Bath & Beyond Procurement Co. Inc., contends that it operates a chain of domestic merchandise retail stores across the United States, Puerto Rico, and Canada. Complainant argues that it features mostly medium-ranged, and also a limited selection of high quality, domestic merchandise: items for the bedroom, bathroom, ktichen, and dining room. Complainant claims that it employs approximately 46,000 associates, mainly in stores, with the balance working in offices and distribution centers. Complainant provides evidence that it is the owner of trademark registrations with the USPTO for the BED BATH & BEYOND mark (e.g., 1,712,392, registered September 1, 1992). The Panel notes that although Respondent appears to reside within Canada, Policy ¶ 4(a)(i) does not require that Complainant register its mark in the country in which Respondent operates. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). The Panel finds that Complainant’s registration of the BED BATH & BEYOND mark with the USPTO demonstrates Complainant’s rights in the mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).

 

Complainant argues that Respondent’s <bdbathandbeyond.com> domain name is confusingly similar to Complainant’s BED BATH & BEYOND mark. Complainant asserts that Respondent’s domain name differs by only a single character from Complainant’s mark. The Panel notes that Respondent eliminates the “e” in the first word of Complainant’s BED BATH & BEYOND mark. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). The Panel also notes that Respondent changes the “&” in Complainant’s BED BATH & BEYOND mark to “and.” The Panel finds that the removal of the ampersand does not affect the user’s understanding of the domain name, and therefore, is confusingly similar to Complainant’s BED BATH & BEYOND mark. See 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). Finally, the Panel notes that Respondent adds the generic top-level domain (“gTLD”) “.com” to the domain name. The Panel determines that the addition of a gTLD to a domain name is insufficient to differentiate Respondent’s disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). Therefore, the Panel finds that Respondent’s <bdbathandbeyond.com> domain name is confusingly similar to Complainant’s BED BATH & BEYOND mark pursuant to Policy ¶ 4(a)(i).

 

Complainant has proven this element.

 

Rights or Legitimate Interests

 

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); 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 contends that Respondent has not been commonly known by the disputed domain name. The Panel notes that the WHOIS record for the disputed domain name lists “Domcharme Group / Jean Lucas” as the registrant. Complainant asserts that Respondent is not sponsored by or legitimately affiliated with Complainant in any way. Complainant claims that it has not given Respondent permission to use Complainant’s mark in a domain name. In Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), the panel concluded that respondent was not commonly known by the domain name because there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <bdbathandbeyond.com> domain name pursuant to Policy ¶ 4(c)(ii).

 

Complainant argues that Respondent is using the disputed domain name to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Complainant contends that Respondent presumably receives pay-per-click fees from these linked websites. The Panel notes that Respondent’s domain name resolves to a website which features competing links “BackToBed.com/bed-sale,” “beddingexperts.com/mattress-sale,” “www.comfortmattressoutlet.com,” and others. The Panel also notes that Respondent’s website features links unrelated to Complainant’s business, such as “www.Hyatt.com.” The Panel finds that Respondent’s domain name is being used to feature competing and unrelated links, and the Panel finds that Respondent’s use of the domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or service nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. 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); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).

 

Complainant has proven this element.

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent is a serial cybersquatter/typosquatter. Complainant claims that searches through the NAF and WIPO UDRP decision databases reveal that Respondent has engaged in an ongoing cybersquatting behavior. Brookstone Company, Inc. v. Domcharme / Jean Lucas, FA 1393874 (Nat. Arb. Forum July 12, 2011); Staples, Inc., and Staples the Office Superstore, LLC v. Domcharme Group c/o Jean Lucas a/k/a Juga Fish, FA1380088 (Nat. Arb. Forum Apr. 19, 2011). The Panel finds that Respondent has been involved in prior UDRP decisions that resulted in findings of bad faith and determines that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”).

 

Complainant contends that Respondent’s advertised pay-per-click links displayed on Respondent’s resolving website promotes products that compete with Complainant. Complainant argues that the links featured on Respondent’s website divert potential customers away from Complainant to third-party websites, which disrupts Complainant’s business. The Panel notes that the links “BackToBed.com/bed-sale,” “beddingexperts.com/mattress-sale,” “www.comfortmattressoutlet.com,” promote products that compete with Complainant. The Panel finds that Respondent’s use of the disputed domain name to offer competing links shows bad faith use and registration under Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).

 

Complainant asserts that Respondent is using the disputed domain name website in connection with generating revenue as a “click through” website. Complainant argues that Respondent is using the <bdbathandbeyond.com> domain name to attract and mislead consumers for its own profit. Complainant claims that Respondent is providing links to the services and products offered by Complainant to take advantage of Complainant’s well known mark to achieve a wrongful competitive advantage and commercial gain. In Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), the panel found that respondent’s use of the domain name was evidence of bad faith pursuant to Policy 4(b)(iv) because the domain name provided links to complainant’s competitors and respondent presumably commercially benefitted from the misleading domain name by receiving ‘click-through-fees.’ Therefore, Panel concludes that Respondent’s use of the <bdbathandbeyond.com> domain name to collect click-through fees shows bad faith registration and use under Policy ¶4(b)(iv).

 

Complainant claims that Respondent is engaging in typosquatting behavior. Complainant asserts that the practice of typosquatting is designed to take advantage of Internet users’ typographical errors. The Panel finds that Respondent’s removal of the letter “e” from Complainant’s BED BATH & BEYOND mark in its domain name constitutes a common misspelling error and therefore typosquatting, showing bad faith registration and use under Policy ¶ 4(a)(iii). See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).

 

Complainant has proven this element.

 

DECISION

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 <bdbathandbeyond.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Karl V. Fink (Ret.), Panelist

Dated:  February 26, 2013

 

 

 

 

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