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. Whois Protection
Claim Number: FA1305001501777
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 Whois Protection (“Respondent”), Czech Republic.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bedbathbeyoned.com>, registered with GRANSY S.R.O D/B/A SUBREG.CZ.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 24, 2013; the National Arbitration Forum received payment on May 24, 2013.
On May 29, 2013, GRANSY S.R.O D/B/A SUBREG.CZ confirmed by e-mail to the National Arbitration Forum that the <bedbathbeyoned.com> domain name is registered with GRANSY S.R.O D/B/A SUBREG.CZ and that Respondent is the current registrant of the name. GRANSY S.R.O D/B/A SUBREG.CZ has verified that Respondent is bound by the GRANSY S.R.O D/B/A SUBREG.CZ 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 May 29, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 18, 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@bedbathbeyoned.com. Also on May 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 June 24, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 makes the following assertions:
1. Respondent’s <bedbathbeyoned.com> domain name, the domain name at issue, is confusingly similar to Complainant’s BED BATH & BEYOND mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant uses the BED BATH & BEYOND mark as the name of its business and deals in the operation of retail stores around the United States and Canada, specializing in the sale of household goods. Complainant’s BED BATH & BEYOND mark is protected by United States Patent & Trademark Office (“USPTO”) trademark registrations (e.g., Reg. No. 1,712,392 registered September 1, 1992). Respondent has not been commonly known by the <bedbathbeyoned.com> domain name. Respondent is not a licensee, nor is it a permitted or authorized user of Complainant’s marks. Complainant has never sponsored or affiliated itself with Respondent. Respondent registered <bedbathbeyoned.com> domain name in a classic example of typosquatting. This practice is intended to take advantage of Internet users’ typographical errors. Respondent uses the domain name to redirect unsuspecting Internet users to a website featuring generic links to third-party sponsors. Some of these sponsors are competitors of Complainant. Respondent uses click-through advertisements to competing goods, which illustrates an attempt to divert consumers away from Complainant in order to disrupt Complainant’s business.
In this regard, Respondent uses the <bedbathbeyoned.com> domain name in connection with generating advertising revenue through hyperlink advertisements for Complainant's competitors. The <bedbathbeyoned.com> domain name was registered on August 12, 2008.
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.”).
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are three 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 three Complainants in this matter: Bed Bath & Beyond Procurement Co. Inc. (n/k/a Liberty Procurement Co. Inc.), its sister corporation Buy Buy Baby, Inc., and the parent company Bed Bath & Beyond Inc. Complainants contend that as they are all a part of a single corporate structure, they have standing as a single Complainant.
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.”).
This Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants and it will treat them all as a single entity in this proceeding.
Complainant uses the BED BATH & BEYOND mark as the name of its business operation of retail stores around the United States and Canada, specializing in the sale of household goods. The BED BATH & BEYOND mark is protected by USPTO trademark registrations (e.g., Reg. No. 1,712,392 registered September 1, 1992). USPTO registrations are evidence of Policy ¶ 4(a)(i) rights in a mark, regardless of where Respondent is located. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Respondent’s <bedbathbeyoned.com> domain name features the addition of a single character into the otherwise distinct mark, and the addition of a generic top-level domain (“gTLD”) . Respondent formed this domain name by removing the ampersand and all spacing, and inserting an additional letter “e” along with the gTLD “.com.” The domain name omits the ampersand found within the mark, however, technical restraints upon domain name registration make the presence of an ampersand irrelevant. See, e.g., 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). The addition of a gTLD and the deletion of the mark’s spacing in the domain name are irrelevant as well. 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. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). The addition of an extra letter “e” in the domain name is merely a misspelling that does not distinguish the domain name. 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).”). Accordingly, despite the aforementioned changes made to the mark, the <bedbathbeyoned.com> domain name is confusingly similar to the BED BATH & BEYOND mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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 states that Respondent is not a licensee, or a permitted/authorized user of Complainant’s marks. Complainant has never sponsored or affiliated itself with Respondent. The WHOIS information lists the domain name’s registrant as “Whois Protection.” The Panel finds that there is nothing in this record to support a conclusion that Respondent is commonly known by the <bedbathbeyoned.com> domain name under Policy ¶ 4(c)(ii), particularly since Complainant makes the assertion that Respondent is not permitted to use the mark in any way. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Respondent uses the domain name to redirect unsuspecting Internet users to a website featuring generic links to third-party sponsors; some of these sponsors are competitors of Complainant. The <bedbathbeyoned.com> domain name appears to resolve to a website that features Complainant’s mark in conjunction with hyperlinks to related and competing companies. The use of this domain name to host competitive hyperlink advertisements illustrates that Respondent has failed to make a Policy ¶ 4(c)(i) bona fide offering or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use through this domain name. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Respondent’s registration of the <bedbathbeyoned.com> domain name is a classic example of typosquatting. This practice is intended to take advantage of Internet users’ typographical errors. Respondent’s decision to register a domain name that is essentially a basic misspelling of the BED BATH & BEYOND mark illustrates that Respondent is a typosquatter who has neither rights nor legitimate interests under Policy ¶ 4(a)(ii). See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent’s use of click-through advertisements to competing goods illustrates an attempt to divert consumers away from Complainant in order to disrupt Complainant’s business. The <bedbathbeyoned.com> domain name’s resolving website includes advertisements to companies such as “JCPenney,” “Sears,” and “Victoria’s Secret.” The use of a confusingly similar domain name such as <bedbathbeyoned.com> to solicit hyperlinks that route the user directly to Complainant’s competitors is evidence of Policy ¶ 4(b)(iii) bad faith. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).”).
Respondent’s use of the <bedbathbeyoned.com> domain name in connection with generating advertising revenue through hyperlink advertisements showcases bad faith through the intention to confuse Internet users. Internet users who mistakenly visit the domain name’s website and click on the links result in revenue generated to Respondent. Using the disputed domain name for purposes of generating advertisement revenues through competing and generic hyperlinks showcases Respondent’s Policy ¶ 4(b)(iv) bad faith attempts to capitalize on the confusion of Internet users who enter this domain name in search of Complainant’s business. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Respondent’s registration of a domain name that makes a single-character misspelling of Complainant’s mark evidences a Policy ¶ 4(a)(iii) bad faith use and registration through typosquatting. See Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bedbathbeyoned.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: June 28, 2013
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