Bed Bath & Beyond Procurement Co. Inc. (N/K/A Liberty Procurement Co. Inc.) And its Sister Corporation Buy Buy Baby, Inc. (Both Wholly Owned Subsidiaries of Bed Bath & Beyond Inc.) v. Private Registrations Aktien Gesellschaft / Domain Admin
Claim Number: FA1303001489118
Complainant is Bed Bath & Beyond Procurement Co. Inc. (N/K/A Liberty Procurement Co. Inc.) And its Sister Corporation Buy Buy Baby, Inc. (Both Wholly Owned Subsidiaries of Bed Bath & Beyond Inc.) (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Private Registrations Aktien Gesellschaft / Domain Admin (“Respondent”), Saint Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bebathbeyond.com>, <bebbathbeyond.com>, <bedbahtandbeyond.com>, <bedbarhandbeyond.com>, <bedbathabeyond.com>, <bedbathandbbeyond.com>, <bedbathandbeynond.com>, <bedbathandbeyonf.com>, <bedbathanddeyond.com>, <bedbathandebyond.com>, <bedbathbandbeyond.com>, <bedbathbetond.com>, <bedbathbeyone.com>, <bedbatheyond.com>, <bedbathyandbeyond.com>, <bedbbathandbeyond.com>, <bedbsthandbeyond.com>, <brdbathandbeyond.com>, and <buybuybay.com>, registered with Pdr Ltd. D/B/A Publicdomainregistry.Com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 8, 2013; the National Arbitration Forum received payment on March 8, 2013.
On March 11, 2013, Jun 21, 2013, Pdr Ltd. D/B/A Publicdomainregistry.Com confirmed by e-mail to the National Arbitration Forum that the <bebathbeyond.com>, <bebbathbeyond.com>, <bedbahtandbeyond.com>, <bedbarhandbeyond.com>, <bedbathabeyond.com>, <bedbathandbbeyond.com>, <bedbathandbeynond.com>, <bedbathandbeyonf.com>, <bedbathanddeyond.com>, <bedbathandebyond.com>, <bedbathbandbeyond.com>, <bedbathbetond.com>, <bedbathbeyone.com>, <bedbatheyond.com>, <bedbathyandbeyond.com>, <bedbbathandbeyond.com>, <bedbsthandbeyond.com>, <brdbathandbeyond.com>, and <buybuybay.com> domain names are registered with Pdr Ltd. D/B/A Publicdomainregistry.Com and that Respondent is the current registrant of the names. Pdr Ltd. D/B/A Publicdomainregistry.Com has verified that Respondent is bound by the Pdr Ltd. D/B/A Publicdomainregistry.Com 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 June 21, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 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@bebathbeyond.com, postmaster@bebbathbeyond.com, postmaster@bedbahtandbeyond.com, postmaster@bedbarhandbeyond.com, postmaster@bedbathabeyond.com, postmaster@bedbathandbbeyond.com, postmaster@bedbathandbeynond.com, postmaster@bedbathandbeyonf.com, postmaster@bedbathanddeyond.com, postmaster@bedbathandebyond.com, postmaster@bedbathbandbeyond.com, postmaster@bedbathbetond.com, postmaster@bedbathbeyone.com, postmaster@bedbatheyond.com, postmaster@bedbathyandbeyond.com, postmaster@bedbbathandbeyond.com, postmaster@bedbsthandbeyond.com, postmaster@brdbathandbeyond.com, postmaster@buybuybay.com. Also on June 21, 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 July 16, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are two Complainants in this matter: Bed Bath & Beyond Procurement Co. Inc. and its sister corporation Buy Buy Baby, Inc. Complainant alleges that both entities are wholly owned subsidiaries of Bed Bath & Beyond Inc.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The Panel finds that there is a sufficient nexus between the Complainants, and elects to treat them as a single entity in this proceeding. The Complainants will be referred to as “Complainant” throughout this decision.
A. Complainant makes the following assertions:
1. Respondent’s <bebathbeyond.com>, <bebbathbeyond.com>, <bedbahtandbeyond.com>, <bedbarhandbeyond.com>, <bedbathabeyond.com>, <bedbathandbbeyond.com>, <bedbathandbeynond.com>, <bedbathandbeyonf.com>, <bedbathanddeyond.com>, <bedbathandebyond.com>, <bedbathbandbeyond.com>, <bedbathbetond.com>, <bedbathbeyone.com>, <bedbatheyond.com>, <bedbathyandbeyond.com>, <bedbbathandbeyond.com>, <bedbsthandbeyond.com>, <brdbathandbeyond.com>, and <buybuybay.com> domain names are confusingly similar to Complainant’s BED BATH & BEYOND mark.
2. Respondent does not have any rights or legitimate interests in the <bebathbeyond.com>, <bebbathbeyond.com>, <bedbahtandbeyond.com>, <bedbarhandbeyond.com>, <bedbathabeyond.com>, <bedbathandbbeyond.com>, <bedbathandbeynond.com>, <bedbathandbeyonf.com>, <bedbathanddeyond.com>, <bedbathandebyond.com>, <bedbathbandbeyond.com>, <bedbathbetond.com>, <bedbathbeyone.com>, <bedbatheyond.com>, <bedbathyandbeyond.com>, <bedbbathandbeyond.com>, <bedbsthandbeyond.com>, <brdbathandbeyond.com>, and <buybuybay.com> domain names.
3. Respondent registered and used the <bebathbeyond.com>, <bebbathbeyond.com>, <bedbahtandbeyond.com>, <bedbarhandbeyond.com>, <bedbathabeyond.com>, <bedbathandbbeyond.com>, <bedbathandbeynond.com>, <bedbathandbeyonf.com>, <bedbathanddeyond.com>, <bedbathandebyond.com>, <bedbathbandbeyond.com>, <bedbathbetond.com>, <bedbathbeyone.com>, <bedbatheyond.com>, <bedbathyandbeyond.com>, <bedbbathandbeyond.com>, <bedbsthandbeyond.com>, <brdbathandbeyond.com>, and <buybuybay.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns the BED BATH & BEYOND mark and the BUY BUY BABY mark. Complainant uses the BED BATH & BEYOND mark to market linen products, housewares, home furnishings, appliances, accessories, office supplies, and novelties. Complainant uses the BUY BUY BABY mark in relation to its retail sales of baby furniture, bedding, clothes, toys, accessories, and supplies. Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the BED BATH & BEYOND mark (e.g., 1,712,392 registered September 1, 1992), and the BUY BUY BABY mark (e.g., Reg. No. 2,171,479 registered July 7, 1998).
Respondent registered the <bebathbeyond.com>, <bebbathbeyond.com>, <bedbahtandbeyond.com>, <bedbarhandbeyond.com>, <bedbathabeyond.com>, <bedbathandbbeyond.com>, <bedbathandbeynond.com>, <bedbathandbeyonf.com>, <bedbathanddeyond.com>, <bedbathandebyond.com>, <bedbathbandbeyond.com>, <bedbathbetond.com>, <bedbathbeyone.com>, <bedbatheyond.com>, <bedbathyandbeyond.com>, <bedbbathandbeyond.com>, <bedbsthandbeyond.com>, <brdbathandbeyond.com> domain names on December 21, 2004. Respondent registered the <buybuybay.com> domain name on October 24, 2005. Respondent uses the disputed domain names above to resolve to webpages displaying links to third-party websites that compete with Complainant’s business,
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.”).
The Panel finds that Complainant’s USPTO registrations serve to establish Complainant’s rights in both the BED BATH & BEYOND mark and the BUY BUY BABY mark, pursuant to Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). The Panel notes that Respondent is located in Saint Vincent and the Grenadines. However, Policy ¶ 4(a)(i) does not require Complainant to register its mark in Respondent’s country of residence in order to assert rights in the claimed marks. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
The disputed domain names are confusingly similar to Complainant’s BED BATH & BEYOND and BUY BUY BABY marks, as a result of either removing a letter, adding a letter, juxtaposing letters, or misspelling the mark by one letter. The disputed domain names contain other minor changes, such as omitting the space between the words of the mark, replacing the ampersand with the word “and,” and adding the generic top-level domain (“gTLD”) “.com.”
The Panel finds that the changes made to the domain names are of little significance for the purposes of Policy ¶ 4(a)(i). See 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)); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); 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 PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (noting that PG&E’s home web page is found at <pge.com> because the ampersand symbol is not reproducible in a domain name); see also 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. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Thus, the Panel finds that Respondent’s <bebathbeyond.com>, <bebbathbeyond.com>, <bedbahtandbeyond.com>, <bedbarhandbeyond.com>, <bedbathabeyond.com>, <bedbathandbbeyond.com>, <bedbathandbeynond.com>, <bedbathandbeyonf.com>, <bedbathanddeyond.com>, <bedbathandebyond.com>, <bedbathbandbeyond.com>, <bedbathbetond.com>, <bedbathbeyone.com>, <bedbatheyond.com>, <bedbathyandbeyond.com>, <bedbbathandbeyond.com>, <bedbsthandbeyond.com>, <brdbathandbeyond.com> domain names are confusingly similar to Complainant’s BED BATH & BEYOND mark. Likewise, the Panel finds that Respondent’s <buybuybay.com> domain name is confusingly similar to Complainant’s BUY BUY BABY mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 argues that Respondent lacks rights or legitimate interests in the disputed domain names because no evidence, including the WHOIS information, exists to suggest that Respondent is commonly known by any of the disputed domain names. The WHOIS information identifies Respondent as “Private Registrations Aktien Gesellschaft / Domain Admin.” Complainant further attests that Respondent is in no way associated with Complainant, nor is it licensed, authorized, or permitted to use Complainant’s marks to register a domain name. The panel in Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), stated that the respondent was not commonly known by the disputed domain name where the WHOIS information did provide support, combined with the fact that the complainant did not authorize the respondent’s use of the registered mark in a domain name. The Panel similarly finds that Respondent is not commonly known by any of the disputed domain names under Policy ¶ 4(c)(ii).
Complainant contends that Respondent uses the disputed domain names to reroute Internet users to websites that display third-party hyperlinks, many of which compete with Complainant by selling goods or services that are substantially similar to those marketed by Complainant under its registered trademarks. Complainant provides a screen shot of Respondent’s resolving websites, showing that each website includes links to competing entities. The panel in H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), stated that the respondent’s disputed domain name resolves to a website that features advertising links to third parties, which offer products and services competing with those offered by the complainant, and failed to demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel finds that Respondent’s use of the disputed domain names to host competing hyperlinks does not represent a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant provides evidence showing that Respondent has repeatedly engaged in a pattern of registering domain names based on third parties’ trademarks, demonstrating bad faith registration and use. See UnitedHealth Group Inc. v. Private Registrations Aktien Gesellschaft c/o Domain Admin, FA 1277666 (Nat. Arb. Forum Sep. 24, 2009); see also Victoria’s Secret Store Brand Mgmt., Inc. v. Domain Admin c/o Private Registrations Aktien Gesellschaft, FA 1306652 (Nat. Arb. Forum March 23, 2010). The Panel finds that Respondent’s pattern of bad faith registration, based on prior adverse UDRP decisions, is evidence of Respondent’s bad faith registration and use of the disputed domain names under Policy ¶ 4(b)(ii). See Azar Int’l Inc. v. Texas Int’l Prop. Assocs., FA 1122600 (Nat. Arb. Forum Feb. 18, 2008) (determining that the respondent’s forty-one prior UDRP rulings were evidence of bad faith registration under Policy ¶ 4(b)(ii)).
Respondent registered the disputed domain names with the purpose of redirecting Internet users to the corresponding websites featuring hyperlinks to business entities in competition with Complainant. Complainant argues that Respondent’s activities result in disruption to Complainant’s business. The Panel agrees and finds that this is evidence of Respondent’s bad faith registration and use 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 further contends that by attracting Internet users to the resolving websites by using domain names confusingly similar to Complainant’s marks, Respondent gains a commercial benefit, exhibiting bad faith registration and use under Policy ¶ 4(b)(iv). In BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002), the panel stated that the links contained in the resolving website belonged to entities in competition with the complainant, and thus the respondent’s activities amounted to bad faith registration and use. The Panel finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv), due to Respondent’s commercial gain from the use of the confusingly similar domain names.
Respondent purposely misspells Complainant’s marks in the disputed domain names, a classic case of typosquatting, designed to capitalize on Internet users’ typing mistakes, which constitutes additional evidence of bad faith.
The Panel finds that 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 <bebathbeyond.com>, <bebbathbeyond.com>, <bedbahtandbeyond.com>, <bedbarhandbeyond.com>, <bedbathabeyond.com>, <bedbathandbbeyond.com>, <bedbathandbeynond.com>, <bedbathandbeyonf.com>, <bedbathanddeyond.com>, <bedbathandebyond.com>, <bedbathbandbeyond.com>, <bedbathbetond.com>, <bedbathbeyone.com>, <bedbatheyond.com>, <bedbathyandbeyond.com>, <bedbbathandbeyond.com>, <bedbsthandbeyond.com>, <brdbathandbeyond.com>, and <buybuybay.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 29, 2013
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