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 WP-1 c/o whoisproxy.com Ltd. / On behalf of begbathandbeyond.com owner and bedbathbbeyond.com owner
Claim Number: FA1306001507544
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.) (collectively “Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is WP-1 c/o whoisproxy.com Ltd. / On behalf of begbathandbeyond.com owner and bedbathbbeyond.com owner (“Respondent”), New Zealand.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <begbathandbeyond.com> and <bedbathbbeyond.com>, registered with Key-Systems GmbH.
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.
Bruce E. Meyerson 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 01, 2013, Key-Systems GmbH confirmed by e-mail to the National Arbitration Forum that the <begbathandbeyond.com> and <bedbathbbeyond.com> domain names are registered with Key-Systems GmbH and that Respondent is the current registrant of the names. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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@begbathandbeyond.com, postmaster@bedbathbbeyond.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 August 1, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.
A. Complainant
1. Complainant owns the BED BATH & BEYOND mark through its trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,712,392, registered September 1, 1992).
2. Complainant uses the BED BATH & BEYOND mark in connection with online, retail store, and mail order services featuring linen products, home furnishings, toys, books, furniture, and kitchen appliances, as well as other household appliances and accessories. Complainant operates a chain of domestic merchandise retail stores across the United States, Puerto Rico, and Canada.
3. Complainant has spent thousands of dollars in advertisement and promotion of the BED BATH & BEYOND mark on television, print media, and the Internet.
4. The disputed domain names are confusingly similar to the BED BATH & BEYOND mark as the disputed domain names merely adds the generic-top level domain name (“gTLD”) “.com”, and differ only by a single character from the mark.
5. Respondent has no rights or legitimate interests in the disputed domain names. The WHOIS records identify the registrant of the disputed domains as “WP-1 c/o whoisproxy.com Ltd. / On behalf of bedbathbbeyond.com owner”. Further, Respondent is not sponsored or affiliated with Complainant in any way.
6. Respondent is not using the disputed domain names to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Respondent is using the disputed domain names to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which compete with Complainant’s business. Respondent presumably profits from the linked websites.
7. Respondent disrupts Complainant’s business as the links displayed on the resolving page promotes products that compete with Complainant.
8. Respondent’s use the disputed domain names in connection with generating revenue as a click-through website demonstrates Respondent’s bad faith.
9. Respondent has caused the websites reachable by the disputed domain names to display Complainant’s BED BATH & BEYOND mark spelled correctly even though the domain names are misspelled versions of the same mark, revealing Respondent had actual knowledge of Complainant’s rights in the mark at the time the disputed domain names were registered.
10. Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the BED BATH & BEYOND mark. Respondent’s domain names are confusingly similar to Complainant’s mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <begbathandbeyond.com> and <bedbathbbeyond.com> domain names, and that Respondent registered and uses the domain names 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.”).
Preliminary Issue: Multiple Complainants
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any 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 its sister corporation Buy Buy Baby, Inc. Complainants allege that both entities are jointly owned by the parent company, Bed Bath & Beyond Inc. Complainants alleges that they operate as one and have standing to bring this claim jointly.
The Forum’s Supplemental Rule 1(e) allows multiple parties to proceed as one party where they can show a sufficient link to each other. 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 finds sufficient evidence that there is the requisite nexus or link between the Complainants such that they may be treated as a single entity in this proceeding.
Complainant argues that the disputed domain names are confusingly similar to the BED BATH & BEYOND mark as the disputed domain names merely add the gTLD “.com”, and differ only by a single character from the mark. The affixation of a gTLD is irrelevant for the purposes of a Policy ¶ 4(a)(i) analysis. See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Moreover, replacing a letter or adding a letter to a mark does not sufficiently differentiate the domain name from the mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding the respondent’s <microssoft.com> domain name to be confusingly similar to the complainant’s MICROSOFT mark because they differ by only one letter, and “such a small alteration is insufficient to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)”).
The domain names also differ from Complainant’s mark in that the domain names either delete the ampersand symbol “&” in Complainant’s BED BATH & BEYOND mark, or replace it with “and.” These changes are also insufficient to distinguish the domain names from the mark. See Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000); McKinsey Holdings, Inc. v. Indidom, D2000-1616 (WIPO Jan. 31, 2001). The Panel also notes that the disputed domain names further differ from Complainant’s mark as the domain names eliminate the spaces in Complainant’s mark. The elimination of spaces between the words of a complainant’s mark does not sufficiently distinguish the disputed domain name from the mark. 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 does not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Therefore, the Panel concludes that Respondent’s alterations to Complainant’s BED BATH & BEYOND mark are insufficient to differentiate the <begbathandbeyond.com> and <bedbathbbeyond.com> domain names from the mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names. The WHOIS records identify the registrant of the disputed domains as “WP-1 c/o whoisproxy.com Ltd. / On behalf of bedbathbbeyond.com owner”. Further, Complainant contends, without contradiction, that Respondent is not sponsored or affiliated with Complainant in anyway. Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain names. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant also claims that Respondent is not using the disputed domain names to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Complainant contends that Respondent is using the disputed domain names to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which compete with Complainant’s business. Complainant presumes that Respondent profits from the linked websites through click-through fees. Complainant includes a screenshot of the page reachable through the <begbathandbeyond.com> domain name. The screenshot shows links to Complainant’s competitors, including Macy’s, JCPenney, and Target. Such resolving websites that divert users to third-party sites that are unrelated to the complainant, or to websites that compete with the complainant, show that the respondent is not providing a bona fide offering of goods or services, or a legitimate noncommercial or fair use. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees). Therefore, the Panel finds that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent disrupts Complainant’s business as the links displayed on the resolving page promote products that compete with Complainant. Complainant has provided evidence that the <begbathandbeyond.com> domain name provides links to Complainant’s competitors, including Macy’s, JCPenney, and Target. Evidence of bad faith exists where a respondent provides links to competitors of the complainant through a confusingly similar domain name. 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).”). This constitutes evidence of bad faith under Policy ¶ 4(b)(iii).
Complainant also argues that Respondent’s use the disputed domain names in connection with generating revenue as a click-through website demonstrates Respondent’s bad faith. The Panel agrees and finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant contends that Respondent has caused the websites reachable by the disputed domain names to display Complainant’s BED BATH & BEYOND mark spelled correctly even though the domain names are misspelled versions of the same mark. Complainant argues that this reveals Respondent had actual knowledge of Complainant’s rights in the mark at the time the disputed domains were registered. The Panel agrees that Respondent had actual knowledge of Complainant’s rights in the mark therefore finds that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Complainant further argues that Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith. Typosquatting has consistently been found to be a practice that takes advantage of common and basic typographical errors, and is thus motivated by bad faith. See Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003) (holding that the practice of typosquatting “diverts Internet users who misspell Complainant’s mark to a website apparently owned by Respondent for Respondent’s commercial gain. ‘Typosquatting’ has been recognized as evidencing bad faith registration and use under Policy ¶ 4(b)(iv).”).
The Panel finds 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 <begbathandbeyond.com> and <bedbathbbeyond.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: August 13, 2013
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