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. Michele Dinoia
Claim Number: FA1305001502693
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 Michele Dinoia (“Respondent”), Italy.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bednbathbeyond.com>, registered with Name.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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 31, 2013; the National Arbitration Forum received payment on May 31, 2013.
On June 4, 2013, Name.com confirmed by e-mail to the National Arbitration Forum that the <bednbathbeyond.com> domain name is registered with Name.com and that Respondent is the current registrant of the name. Name.com has verified that Respondent is bound by the Name.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 7, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 27, 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@bednbathbeyond.com. Also on June 7, 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 3, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two 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. (N/K/A Liberty Procurement Co. Inc.) and Buy Buy Baby, Inc. The Complaint asserts that these entities are sister corporations, and that each is a wholly-owned subsidiary 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 accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and elects to treat them all as a single entity in this proceeding.
i. Complainant has rights in the BED BATH & BEYOND mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,712,392 registered September 1, 1992). Complainant uses this mark in connection with retail store services in the field of linen products, housewares, and home furnishings.
ii. The <bednbathbeyond.com> domain name is confusingly similar to Complainant’s BED BATH & BEYOND mark.
i. Respondent has not been commonly known by the <bednbathbeyond.com> 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. Presumably, Respondent receives pay-per-click fees from these linked websites.
i. Respondent is a recalcitrant, serial cybersquatter.
ii. Respondent’s advertised pay-per-click links displayed on the resolving website promote products that compete with Complainant, thereby diverting potential customers away from Complainant to third-party websites and disrupting Complainant’s business.
iii. Respondent has registered and used the disputed domain name in bad faith by using it to attract and mislead consumers for its own profit.
iv. Respondent’s registration of the <bednbathbeyond.com> domain name constitutes typosquatting.
B. Respondent did not respond to this proceeding.
1. Respondent’s <bednbathbeyond.com> domain name is confusingly similar to Complainant’s BED BATH & BEYOND mark.
2. Respondent does not have any rights or legitimate interests in the <bednbathbeyond.com> domain name.
3. Respondent registered or used the <bednbathbeyond.com > 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 claims rights in the BED BATH & BEYOND mark, which it uses in connection with retail store services in the field of linen products, housewares, and home furnishings. Complainant provides evidence of its registration of the mark with the USPTO (e.g., Reg. No. 1,712,392 registered September 1, 1992). The Panel determines that Complainant’s registration of the mark with the USPTO is sufficient to confer rights under Policy ¶ 4(a)(i), notwithstanding the fact Respondent appears to reside in Italy. See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (holding that the complainant’s trademark registrations with the USPTO had established rights in the BLOOMBERG mark); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant further claims that Respondent’s <bednbathbeyond.com> domain name is confusingly similar to Complainant’s BED BATH & BEYOND mark. Complainant argues that the only relevant comparison to be made for Policy ¶ 4(a)(i) purposes is between the second-level portion of the disputed domain name and Complainant’s mark. The Panel agrees, finding that the generic top-level domain (“gTLD”) “.com” is inconsequential for Policy ¶ 4(a)(i) purposes. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). The Panel also notes that the disputed domain name adds the letter “n” to Complainant’s mark between the terms “BED” and “BATH” while eliminating the ampersand and spaces between words in Complainant’s mark. The Panel finds that these alterations are insufficient to distinguish the disputed domain name from the mark as well. 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 McKinsey Holdings, Inc. v. Indidom, D2000-1616 (WIPO Jan. 31, 2001) (finding that the removal of the ampersand from “McKinsey & Company” does not affect the user’s understanding of the domain name, and therefore the domain name <mckinseycompany.com> is identical and/or confusingly similar to the mark “McKinsey & Company”); see also 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)). The Panel concludes that Respondent’s <bednbathbeyond.com> domain name is confusingly similar to Complainant’s BED BATH & BEYOND mark within the meaning of Policy ¶ 4(a)(i).
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 posits that Respondent has not been commonly known by the <bednbathbeyond.com> domain name. According to Complainant, Respondent had no trademark or other intellectual property rights in the disputed domain name upon registration. Complainant further posits that the WHOIS information suggests that Respondent is known as an entity other than the trademark associated with Complainant. The Panel notes that the WHOIS information lists Respondent as “Michele Dinoia.” Finally, Complainant asserts that Respondent is not sponsored by or legitimately affiliated with Complainant in any, and Complainant has not given Respondent permission to use Complainant's mark in a domain name. In light of this evidence, as well as Respondent’s failure to submit a response, the Panel holds that Respondent is not commonly known by the <bednbathbeyond.com> domain name for the purposes of Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant alleges that Respondent is not using the contested domain in connection with a bona fide offering of goods or services as allowed under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use as allowed under Policy ¶ 4(c)(iii), because Respondent uses 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 presumes Respondent receives pay-per-click fees from these linked websites. Previous panels have declined to recognize a respondent’s rights or legitimate interests in a domain name that is being used to hosting competing pay-per-click links. See ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees. . . . is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Accordingly, the Panel holds that Respondent is not using the <bednbathbeyond.com> domain name in connection with a bona fide offering of goods or services as allowed under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use as allowed under Policy ¶ 4(c)(iii).
Complainant contends that Respondent is a recalcitrant, serial cybersquatter, as searches through the NAF and WIPO UDRP decision databases reveal that Respondent has engaged in an ongoing pattern of such behavior. See Electronic Arts Inc. v. Michele Dinoia, FA 1403750 (Nat. Arb. Forum Sep. 30, 2011); see also The Knot, Inc. v. Michele Dinoia, FA 1350450 (Nat. Arb. Forum Nov. 15, 2010); see also Real Madrid Club De Futbol v. Michele Dinoia, D2010-0261 (WIPO Mar. 28, 2009). Complainant urges that multiple prior UDRP decisions be considered sufficient evidence indicating Respondent’s bad faith use and registration in the instant proceeding. The Panel finds precedential support for this notion. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). Consequently, the Panel determines that Respondent has established a pattern of bad faith registration, which evidences registration and use of the <bednbathbeyond.com> domain name in bad faith pursuant to Policy ¶ 4(b)(ii).
Next, Complainant contends that Respondent’s advertised pay-per-click links displayed on Respondent’s website promote products that compete with Complainant, thereby diverting potential customers away from Complainant to third-party websites and disrupting Complainant’s business. The Panel finds that Respondent’s effort to divert consumers and disrupt Complainant’s business is evidence of 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)).
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Complainant further contends that Respondent has registered and used the <bednbathbeyond.com> domain name in bad faith by using it to attract and mislead consumers for Respondent’s own profit. Complainant believes that Respondent has registered a confusingly similar domain name for the purpose of creating confusion with Complainant in an attempt to divert Internet users to Respondent’s website at the expense of Complainant. Complainant asserts that Respondent’s use of the resolving website as a click-through website from which Respondent likely receives revenue for each misdirected Internet user demonstrates Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv). The Panel agrees with Complainant’s characterization of Respondent’s activities, and finds that Respondent registered and is using the <bednbathbeyond.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> 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.’”).
Finally, Complainant claims that Respondent’s registration of the <bednbathbeyond.com> domain name constitutes typosquatting, which is evidence of bad faith in and of itself. The Panel notes that past panels have defined typosquatting as the “diver[sion] [of] Internet users who misspell [c]omplainant’s mark to a website apparently owned by [r]espondent for [r]espondent’s commercial gain.” See Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003). The Panel notes that the second-level portion of the <bednbathbeyond.com> domain name appears to misspell Complainant’s BED BATH & BEYOND mark by adding an extra “n” and eliminating the ampersand and spaces between words. The Panel finds that these changes fall within the purview of typosquatting doctrine, and further finds that Respondent has registered and used the <bednbathbeyond.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) on this basis as well. 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.).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bednbathbeyond.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: July 16, 2013
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