Bed Bath & Beyond Procurement Co. Inc. v. Nijat Hassanov
Claim Number: FA1301001481727
Complainant is Bed Bath & Beyond Procurement Co. Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Nijat Hassanov (“Respondent”), Azerbaijan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue, <bedbathandbeyound.com> and <bedbathandveyond.com>, are registered with MONIKER.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on January 23, 2013; the National Arbitration Forum received payment on January 23, 2013.
On February 4, 2013, MONIKER confirmed by e-mail to the National Arbitration Forum that the <bedbathandbeyound.com> and <bedbathandveyond.com> domain name is registered with MONIKER and that Respondent is the current registrant of the names. MONIKER has verified that Respondent is bound by the MONIKER 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 February 4, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 25, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all en-tities and persons listed on Respondent’s registration as technical, administra-tive, and billing contacts, and to postmaster@bedbathandbeyound.com, post-master@bedbathandveyond.com. Also on February 4, 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, administra-tive and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 5, 2013, pursuant to Complainant's request to have the dispute decid-ed by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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
Complainant operates retail stores under the name and mark BED BATH & BEYOND from locations across the United States, Puerto Rico and Canada, through which it markets merchandise for bedrooms, bathrooms, kitchens and dining rooms.
Complainant holds registrations for the BED BATH & BEYOND service mark, on file with the United States Patent and Trademark Office (“USPTO”), including Reg. No. 1,831,709, registered April 19, 1994.
The <bedbathandbeyound.com> domain name was by Respondent registered on August 23, 2000, and the <bedbathandveyond.com> domain name was regis-tered by Respondent on August 17, 2000.
Respondent’s <bedbathandbeyound.com> and <bedbathandveyond.com> do-main names are confusingly similar to Complainant’s BED BATH & BEYOND service mark.
Respondent has not been commonly known by either of the domain names.
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Respondent is not sponsored by or legitimately affiliated with Complainant in any and way, and Complainant has not given Respondent permission to use Complainant's mark mark in a domain name. |
Respondent’s use of the domain names is not in connection with either a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent uses both domain names to redirect unsuspecting Internet users to websites featuring links to third-party websites which compete with the business of Complainant, and from which Respondent presumably receives click-through advertising revenue.
Respondent lacks rights to and legitimate interests in either of the disputed domain names.
Respondent registered and uses the domain names to disrupt Complainant’s business.
Respondent’s employment of the domain names confuses Internet users into associating them with Complainant.
Respondent’s use of the domain names constitutes typo-squatting.
Respondent registered and uses the contested domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of either of the domain names; and
(3) the same domain names were registered and are being used by Respondent 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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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 has rights in the BED BATH & BEYOND service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trade-mark authority, the USPTO. See, for example, Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark regis-tration adequately demonstrates a UDRP complainant’s rights in a mark under Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Azerbaijan). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant under Policy ¶ 4(a)(i) whether a UDRP complainant has acquired rights in a mark by means of registration of the mark in the country of a respond-ent’s residence, it being sufficient that a complainant can demonstrate rights in its mark in some jurisdiction).
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that both of the domain names <bedbathandbeyound.com> and <bedbathandveyond.com> are confusingly similar to Complainant’s BED BATH & BEYOND service mark. In each instance, Respondent has formed the domain name by eliminating the ampersand and spaces between the terms of the mark, altering a single character in the mark and adding the generic top level domain (‘gTLD”) “.com.” These alterations of the mark, made in creating the domain names, do not save them from a finding of confusing similarity under the stand-ards of the Policy. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007), finding that:
spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. There-fore, the panel finds that the disputed domain name is confusingly similar to the complainant’s mark.
See also PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (noting that UDRP complainant PG&E’s home web page is found at <pge.com> because the ampersand symbol is not reproducible in a domain name).
Further 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 the trade-mark of another has a tendency to be confusingly similar to that mark).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain names, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a UDRP complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made a sufficient prima facie showing under this branch of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain names. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain names which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny,
that Respondent has not been commonly known by the disputed domain names,
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that Respondent is not sponsored by or legitimately affiliated with Complainant way, in any way, and that Complainant has not given Respondent permission to use Complainant's mark in a domain name. Moreover, the pertinent WHOIS information |
neither the relevant WHOIS information nor any other evidence in the record demonstrated that that respondent was commonly known by the domain names).
We next observe that Complainant asserts, without objection from Respondent, that Respondent’s use of the contested domain names is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, in that Respond-ent uses them to redirect unsuspecting Internet users to websites featuring links to third-party websites which compete with the business of Complainant, and from the operation of which Respondent presumably receives click-through ad-vertising revenue. We concur that this employment of the domain names is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website resolving from domain name which was confusingly similar to the mark of another was neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are convinced from the evidence that, singly and together, the domain names <bedbathandbeyound.com> and <bedbathandveyond.com> represent instances of typo-squatting, that is, the deliberate creation of a domain name which differs from the mark of another only by way of a common misspelling of the mark in a manner which occurs when an Internet user innocently mis-types the name of a familiar enterprise into a web browser when seeking to do business with that enterprise. Typo-squatting is evidence of bad faith in the registration and use of these domain names. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that a UDRP respondent engaged in typo-squatting, which is evidence of bad faith registration and use of a domain name under Policy ¶ 4(a)(iii)).
We are likewise persuaded from the evidence that Respondent registered and uses the <bedbathandbeyound.com> and <bedbathandveyond.com> domain names to disrupt Complainant’s business in the manner described in the Com-plaint. This is evidence of bad faith registration and use of the domain names under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using a website resolving from a domain name which is confusingly similar to the mark of another to divert Internet users to websites offering goods or services of that UDRP complainant’s competitors constituted proof of bad faith registration and use of the domain name under Policy ¶ 4(b)(iii)).
Similarly, the evidence shows that Respondent has registered and uses the <bedbathandbeyound.com> and <bedbathandveyond.com> domain names to confuse Internet users into associating the domain names with Complainant for Respondent’s commercial gain. This stands as evidence of bad faith registration and use of the domain names under Policy ¶ 4(b)(iv). See Associated News-papers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003):
Respondent's … use of the … domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the domain names <bedbathandbeyound.com> and <bedbathandveyond.com> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 15, 2013
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