Bed Bath & Beyond Procurement Co. Inc. (n/k/a Liberty Procurement Co. Inc.) v. Hsien En Chang PRIVATE
Claim Number: FA1307001510957
Complainant is Bed Bath & Beyond Procurement Co. Inc. (n/k/a Liberty Procurement Co. Inc.) (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Hsien En Chang PRIVATE (“Respondent”), Taiwan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bedbatheandbeyond.com>, registered with Nanjing Imperiosus Technology Co. Ltd.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 22, 2013; the National Arbitration Forum received payment on July 22, 2013. The Complaint was submitted in both English and Chinese.
On July 26, 2013, Nanjing Imperiosus Technology Co. Ltd confirmed by e-mail to the National Arbitration Forum that the <bedbatheandbeyond.com> domain name is registered with Nanjing Imperiosus Technology Co. Ltd and that Respondent is the current registrant of the name. Nanjing Imperiosus Technology Co. Ltd has verified that Respondent is bound by the Nanjing Imperiosus Technology Co. Ltd 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 August 6, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of August 26, 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@bedbatheandbeyond.com. Also on August 6, 2013, the Chinese language 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 September 3, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
a. Complainant’s mark:
i. 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).
ii. 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.
iii. Complainant has spent thousands of dollars in advertisement and promotion of the BED BATH & BEYOND mark on television, print media, and the Internet.
b. Respondent’s infringing activities:
i. Policy ¶ 4(a)(i)
1. The <bedbatheandbeyond.com> domain name is confusingly similar to the BED BATH & BEYOND mark as the domain name merely adds the generic-top level domain name (“gTLD”) “.com,” and differs only by a single character from the mark.
ii. Policy ¶ 4(a)(ii)
1. Respondent has not been commonly known by the disputed domain as demonstrated by the WHOIS record. Further, Complainant has not authorized Respondent’s use of the mark.
2. Respondent is not using the disputed domain name to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use. 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. Respondent presumably receives pay-per-click fees from the linked websites.
iii. Policy ¶ 4(a)(iii)
1. Respondent disrupts Complainant’s business as the links displayed on the resolving pages promote products that compete with Complainant. This constitutes bad faith.
2. Bad faith is further demonstrated by Respondent’s use of the disputed domain name to generate revenue as a click-through website.
3. Respondent had knowledge of Complainant’s rights in the BED BATH & BEYOND mark as the resolving page displays the mark spelled correctly despite the misspelling of the mark in the domain name. This provides evidence of Respondent’s bad faith.
4. Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1.Complainant is a United States company with a prominent business in 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.
2.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).
3.Respondent registered <bedbatheandbeyond.com> on November 27, 2005 and uses it to redirect Internet users to a website featuring generic links to third-party websites, some of which directly 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.”).
Language of the Proceedings
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s BED BATH & BEYOND mark trademark. Complainant contends that the <bedbatheandbeyond.com> domain name is confusingly similar to the BED BATH & BEYOND mark as the domain name merely adds the generic-top level domain name (“gTLD”) “.com,” and differs only by a single character from the mark. The Panel notes that the disputed domain name inserts the letter “e” into the mark. Previous panels have found that such alternations are insufficient to differentiate the resulting domain name from the integrated mark. In Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004), the panel wrote, “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).” In addition, the Panel also notes that the disputed domain name differs from the BED BATH & BEYOND mark in that the domain name eliminates the spaces in mark and replaces the ampersand, “&.” with the word “and.” Previous panels have determined that the inclusion of a gTLD, the elimination of the spaces in a complainant’s mark, and the replacement of an ampersand “&” with the word “and,” are irrelevant in 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).”); see also Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding that the <wrightandlato.com> domain name is identical to the complainant’s WRIGHT & LATO mark, because the ampersand symbol (&) is not reproducible in a URL). The Panel thus holds that the <bedbatheandbeyond.com> domain name is confusingly similar to the BED BATH & BEYOND mark pursuant to Policy ¶ 4(a)(ii) as the alterations are insufficient to differentiate the domain name from the mark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has taken Complainant’s trademark and used it in its domain name, making only one minor spelling alteration and representing the ampersand in the trademark as “and” in the domain name, thus implying that the domain name is an official domain name of Complainant and that it will lead to an official website of Complainant which is not true;
(b) Respondent has then caused the 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;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant argues that Respondent has no rights or legitimates interests in the disputed domain name. In so arguing, Complainant contends that Respondent has not been commonly known by the disputed domain as demonstrated by the WHOIS record. The Panel notes that the WHOIS information provided by the domain registrar indicates that “Hsien En Chang” is the registrant of the disputed domain name. Further, Complainant contends that it has not authorized Respondent’s use of the mark. The Panel notes that Respondent failed to submit a Response in the proceeding, and therefore, has not refuted Complainant’s contentions. As such, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record);
(e) In addition, Complainant argues that Respondent is not using the disputed domain name to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Complainant urges that 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. Complainant presumes that Respondent receives pay-per-click fees from the linked websites. The Panel notes that Complainant includes screenshots of the websites reachable through the disputed domain name in Exhibit H. The resolving page includes links to Bed Bath and Beyond, as well as Sears, a competitor of Complainant. Previous panels have found that resolving websites that promote links to Complainant and its competitors does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use. See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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 Respondent is not using the disputed domain name to provide 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).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent disrupts Complainant’s business as the links displayed on the resolving pages promote products that compete with Complainant. Complainant argues that such disruption constitutes bad faith. The Panel again notes that Complainant’s Exhibit H includes screen shots of the resolving page, which includes links to Complainant’s competitors, including Sears. Previous panels have found evidence of bad faith where a respondent provides links to competitors of the complainant through the 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).”). The Panel finds evidence of bad faith under Policy ¶ 4(b)(iii) because Complainant has provided the Panel with evidence that Respondent promotes links to Complainant’s competitors.
Secondly, Complainant argues that Respondent’s bad faith is further demonstrated by Respondent’s use of the disputed domain name to generate revenue as a click-through website. Complainant claims Respondent is taking advantage of Complainant’s well known mark to achieve its own commercial gain, which shows Respondent’s bad faith. The Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name’s resolving page provides links to Complainant’s competitors, including Sears (see Complainant’s Ex. H), and Respondent likely generates click-through fees from the linked websites. 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).”). Therefore, the Panel finds that Respondent is attempting to create a likelihood of confusion so as to take commercial advantage of Internet users’ mistakes pursuant to Policy ¶ 4(b)(iv).
Thirdly, Complainant argues that Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith. Past panels have consistently held that typosquatting is a practice that takes advantage of common and basic typographical errors, and is thus motivated by bad faith. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The Panel finds evidence of bad faith under Policy ¶ 4(a)(iii) as Respondent appears to have registered the domain name to divert Internet users who misspell Complainant’s mark given that Respondent merely adds one letter and represents the ampersand as “and” in the domain name.
Fourthly, Complainant asserts that Respondent had knowledge of Complainant’s rights in the BED BATH & BEYOND mark as the resolving page displays the mark spelled correctly, despite the misspelling of the mark in the domain name. Complainant argues that this provides evidence of Respondent’s bad faith registration. The Panel notes Complainant’s Exhibit H, which shows the BED BATH & BEYOND mark properly spelled on the resolving and reachable pages. The Panel determines that Respondent had actual knowledge of Complainant’s rights given Respondent’s incorporation of a common misspelling in the domain name and the inclusion of the mark properly spelled on the resolving page, and therefore, finds that Respondent registered the disputed domain name 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").
Fifthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the Complainant’s trademark and its subsequent use of the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bedbatheandbeyond.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 6, 2013
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