Bed Bath & Beyond Procurement Co. Inc. (N/K/A Liberty Procurement Co. Inc.) v. Wayne Goldman
Claim Number: FA1306001507524
Complainant is Bed Bath & Beyond Procurement Co. Inc. (N/K/A Liberty Procurement Co. Inc.) (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Wayne Goldman (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bedsbathbeyond.com>, registered with TIERRANET INC. D/B/A DOMAINDISCOVER.
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 June 28, 2013; the National Arbitration Forum received payment on June 28, 2013.
On July 1, 2013, TIERRANET INC. D/B/A DOMAINDISCOVER confirmed by e-mail to the National Arbitration Forum that the <bedsbathbeyond.com> domain name is registered with TIERRANET INC. D/B/A DOMAINDISCOVER and that Respondent is the current registrant of the name. TIERRANET INC. D/B/A DOMAINDISCOVER has verified that Respondent is bound by the TIERRANET INC. D/B/A DOMAINDISCOVER 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 July 9, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 29, 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@bedsbathbeyond.com. Also on July 9, 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 30, 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 <bedsbathbeyond.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, Bed Bath & Beyond Procurement Co. Inc. (N/K/A Liberty Procurement Co. Inc.), operates a chain of domestic merchandise retail stores across United States, Puerto Rico, and Canada. Complainant features mostly medium-ranged, but also a limited selection of high quality, domestic merchandise: items for the bedroom, bathroom, kitchen, and dining room. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the BED BATH & BEYOND mark (e.g., Reg. No. 1,712,392, registered September 1, 1992). The disputed domain name is confusingly similar to Complainant’s mark because it differs by a single character from Complainant’s mark and simply affixes a generic top-level domain (“gTLD”) to the mark.
Respondent has not been commonly known by the disputed domain name and Complainant has never endorsed or approved of Respondent’s use of Complainant’s intellectual property in domain names. 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, and Respondent presumably receives pay-per-click compensation as web surfers click through to the websites of Complainant's competitors. Respondent has registered and used the disputed domain name in bad faith by using the disputed domain name to attract and mislead consumers for its own profit, and Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith. The earliest date on which Respondent registered the disputed domain name was June 17, 1999.
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 operates a chain of domestic merchandise retail stores across United States, Puerto Rico, and Canada and is the owner of trademark registrations with the USPTO for the BED BATH & BEYOND mark (e.g., Reg. No. 1,712,392, registered September 1, 1992). Respondent appears to reside within the United States. Thus, Complainant’s registration of the BED BATH & BEYOND mark with the USPTO sufficiently establishes its rights in the mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
The <bedsbathbeyond.com> domain name is confusingly similar to Complainant’s mark because it differs by only a single character from Complainant’s mark. Respondent adds the letter “s” to Complainant’s BED BATH & BEYOND mark and this inclusion does not negate a finding of confusing similarity under Policy ¶ 4(a)(i). See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)). Also, Respondent removed the “&” in Complainant’s BED BATH & BEYOND mark in the disputed domain name. Deleting generic components of a trademark does nothing to distinguish a domain name from the mark. See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks). Finally, Respondent removes the spaces in Complainant’s BED BATH & BEYOND mark and adds the generic top-level domain (“gTLD”) “.com” to its <bedsbathbeyond.com> domain name. The Panel finds that Respondent’s omission of spaces and addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Accordingly, Respondent’s <bedsbathbeyond.com> domain name is confusingly similar to Complainant’s BED BATH & BEYOND mark pursuant to 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.”).
Respondent has not been commonly known by the <bedsbathbeyond.com> domain name. The WHOIS record lists “Wayne Goldman” as the registrant of the disputed domain name. Further, Respondent is not sponsored by or legitimately affiliated with Complainant in any way. Complainant has not given Respondent permission to use Complainant’s mark in a domain name. Accordingly, Respondent is not commonly known by the <bedsbathbeyond.com> domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Respondent is using the <bedsbathbeyond.com> 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. For example, the disputed domain name leads to a website featuring hyperlinks that directly compete with Complainant’s legitimate business, such as “Bridal Registry” and more. Respondent presumably receives pay-per-click fees from these linked websites. In H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the panel found that, because the “respondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Thus, Respondent is not using the <bedsbathbeyond.com> 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 under Policy ¶ 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent’s advertised pay-per-click links displayed on the resolving website promotes products that compete with Complainant. The Panel notes that the website associated with <bedsbathbeyond.com> features competing hyperlinks titled “Bridal Registry” and more. These links divert potential customers away from Complainant to third-party websites, thus disrupting Complainant’s legitimate business. Respondent’s use of the <bedsbathbeyond.com> domain name disrupts Complainant’s business, demonstrating bad faith use and registration under Policy ¶ 4(b)(iii) because these hyperlinks take Internet users to competing bridal registry and retail services. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).
Further, Respondent has registered and used the disputed domain name in bad faith by using the disputed domain name to attract and mislead consumers for its own profit. Respondent’s <bedsbathbeyond.com> domain name leads to a website providing competing click-through links. Respondent’s use of a domain name to provide competing hyperlinks for which respondent likely profits evidences bad faith use and registration. 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.’”). Consequently, Respondent has registered and is using the <bedsbathbeyond.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) to attract Internet users to its website for its own commercial gain.
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 <bedsbathbeyond.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August, 3, 2013
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