Liberty Procurement Co. Inc. formerly known as Bed Bath & Beyond Procurement Co. Inc. v. bedbathandbeyon.com / Hanna El Hinn
Claim Number: FA1301001481721
Complainant is Liberty Procurement Co. Inc. formerly known as Bed Bath & Beyond Procurement Co. Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is bedbathandbeyon.com / Hanna El Hinn (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bedbathandbeyon.com>, registered with eNom, Inc.
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.
Bruce E. Meyerson as Panelist.
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 <bedbathandbeyon.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 January 29, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 19, 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@bedbathandbeyon.com. Also on January 29, 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 25, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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
1. Complainant is the owner of the BED BATH & BEYOND mark. The mark is used in connection with online and retail store services for domestic merchandise and has been registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,831,709 registered Apr. 19, 1994).
2. The <bedbathandbeyon.com> domain name is confusingly similar to the BED BATH & BEYOND mark. Respondent’s deletion of one letter and addition of the generic top-level domain (“gTLD”) “.com” are not enough to distinguish the <bedbathandbeyon.com> domain name from the BED BATH & BEYOND mark.
3. Respondent has no rights or legitimate interest in the <bedbathandbeyon.com> domain name. Respondent is not commonly known by the disputed domain name. The WHOIS information suggests that Respondent is known as an entity other than the trademark associated with Complainant, and Complainant has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant’s mark. Respondent is not sponsored by or legitimately affiliated with Complainant in any way.
4. Respondent is not using the disputed domain name for either a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The <bedbathandbeyon.com> domain name resolves to a website displaying links to Complainant’s goods and services.
5. The <bedbathandbeyon.com> domain name should be considered as having been registered and being used in bad faith.
6. Respondent displays links to Complainant’s products on the <bedbathandbeyon.com> domain name’s resolving website. These links divert potential customers away from Complainant to third-party websites which disrupts Complainant’s business.
7. Respondent is using the <bedbathandbeyon.com> domain name in connection with generating revenue as a “click through” website by providing links to services and products offered by Complainant . See Complainant’s Exhibit H. Respondent is attempting to take advantage of Complainant’s well-known mark and to achieve a wrongful competitive advantage.
8. Respondent has engaged in typosquatting. The <bedbathandbeyon.com> domain name is simply a misspelled version of Complainant’s BED BATH & BEYOND mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the BED BATH & BEYOND mark. Respondent’s domain name is confusingly similar to Complainant’s BED BATH & BEYOND mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <bedbathandbeyon.com> domain name, and that Respondent registered and uses the domain name 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant asserts that it is the owner of the BED BATH & BEYOND mark. The mark is used in connection with online and retail store services for domestic merchandise and has been registered with the USPTO (e.g., Reg. No. 1,831,709 registered Apr. 19, 1994). Registration of a mark with the USPTO establishes rights in the mark without regard to the location of the parties. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also 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; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant has rights in the BED BATH & BEYOND mark under Policy ¶ 4(a)(i).
Complainant asserts that the <bedbathandbeyon.com> domain name is confusingly similar to the BED BATH & BEYOND mark. Complainant states that Respondent’s deletion of one letter and addition of the gTLD “.com” are not enough to distinguish the <bedbathandbeyon.com> domain name from the BED BATH & BEYOND mark. The Panel agrees that the deletion of one letter in a mark and the addition of a gTLD are insufficient to negate a finding of confusing similarity. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); 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 further notes that Respondent also replaces the ampersand in the mark with the term “and” in the disputed domain name. This change also fails to differentiate the <bedbathandbeyon.com> domain name from the BED BATH & BEYOND mark. See Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding that the <wrightandlato.com> domain name is not identical or confusingly similar to the complainant’s WRIGHT & LATO mark, because the ampersand symbol (&) is not reproducible in a URL). Therefore, the Panel finds that Respondent’s <bedbathandbeyon.com> domain name is confusingly similar to the BED BATH & BEYOND mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interest in the <bedbathandbeyon.com> domain name. Complainant argues that Respondent is not commonly known by the disputed domain name. According to Complainant, the WHOIS information indicates that Respondent is known as an entity other than the trademark associated with Complainant, and Complainant has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant’s mark. The WHOIS record for the <bedbathandbeyon.com> domain name lists “bedbathandbeyon.com / Hanna El Hinn” as the domain name registrant. Further, Complainant claims that Respondent is not sponsored by or legitimately affiliated with Complainant in any way. The panel in Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), held that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant next alleges that Respondent is not using the disputed domain name for either a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Complainant asserts that the <bedbathandbeyon.com> domain name resolves to a website displaying links to Complainant’s goods and services. The evidence of the use of the disputed domain name demonstrates that these links are listed under headings such as “Bath Bed Beyond” and “Bed Bath & Beyond Online – Official Site.” Therefore, the Panel may find that Respondent’s use of the <bedbathandbeyon.com> domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name 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).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that the <bedbathandbeyon.com> domain name should be considered as having been registered and being used in bad faith. Complainant notes that Respondent displays links to Complainant’s products on the <bedbathandbeyon.com> domain name’s resolving website. According to Complainant, these links divert potential customers away from Complainant to third-party websites, which disrupts Complainant’s business. The display of competitive links on a disputed domain name is evidence of bad faith. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names). Therefore, the Panel finds that Respondent registered and uses the <bedbathandbeyon.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant argues that Respondent is using the <bedbathandbeyon.com> domain name in connection with generating revenue as a “click through” website by providing links to the services and products offered by Complainant. Complainant asserts that Respondent is attempting to take advantage of Complainant’s well-known mark and to achieve a wrongful competitive advantage. The Panel finds that Respondent is intentionally attempting to attract, for commercial gain, Internet users to the <bedbathandbeyon.com> domain name by creating a likelihood of confusion with Complainant’s mark. 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). Therefore, the Panel finds that Respondent registered and uses the <bedbathandbeyon.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant asserts that Respondent has engaged in typosquatting. The <bedbathandbeyon.com> domain name is simply a misspelled version of Complainant’s BED BATH & BEYOND mark, with the exception that Respondent also replaces the ampersand (&) with the term “and.” Although not the classic case of typosquatting, because “and” is the logical substitute for an ampersand in a domain name where punctuation is prohibited, the Panel agrees that the domain name is a typosquatted version of Complainant’s BED BATH & BEYOND mark, which demonstrates bad faith under Policy ¶ 4(a)(iii). See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bedbathandbeyon.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: March 11, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page