The TJX Companies, Inc. v. Whois-Privacy.Net ltd / DN Manager
Claim Number: FA1309001519645
Complainant is The TJX Companies, Inc. (“Complainant”), represented by Kitty Bina of Alston & Bird, LLP, Georgia, USA. Respondent is Whois-Privacy.Net Ltd / Dn Manager (“Respondent”), Vanuatu.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tjmaxxx.com>, registered with BIGROCK SOLUTIONS LIMITED.
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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 16, 2013; the National Arbitration Forum received payment on September 16, 2013.
On September 17, 2013, BIGROCK SOLUTIONS LIMITED confirmed by e-mail to the National Arbitration Forum that the <tjmaxxx.com> domain name is registered with BIGROCK SOLUTIONS LIMITED and that Respondent is the current registrant of the name. BIGROCK SOLUTIONS LIMITED has verified that Respondent is bound by the BIGROCK SOLUTIONS LIMITED 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 September 17, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 7, 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@tjmaxxx.com. Also on September 17, 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 October 8, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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, The TJX Companies, Inc., operates retail store chains in the United States under the T.J. MAXX mark. Complainant has used the T.J. MAXX mark extensively to promote retail stores services since 1977, and currently operates over 1,000 stores under the mark. Complainant owns the <tjmaxx.com> domain name and uses the resolving website in conjunction with its retail store services. Complainant spends a substantial sum of money on advertising and promoting its services under the T.J. MAXX mark and owns registrations of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,495,462 registered July 5, 1988).
Respondent registered the infringing <tjmaxxx.com> domain name on October 27, 2005, and currently uses the domain name as the address for a website that consists of a parked page displaying links to third-party websites selling adult-oriented items and displaying adult-oriented content, including pay-per-click links that generate revenue for Respondent each time a website visitor clicks on the links.
The <tjmaxxx.com> domain name is confusingly similar to Complainant’s T.J. MAXX mark, and was registered long after Complainant’s trademark registration of the mark.
Respondent registered the domain name in a blatant attempt to benefit from the goodwill and fame associated with Complainant’s mark, and Respondent does not appear to have legitimate rights in the mark. Respondent is presumed to lack rights or legitimate interests in the <tjmaxxx.com> domain name.
Respondent registered and uses the <tjmaxxx.com> domain name in bad faith, as shown by its use of the resolving website to host advertisements for adult-oriented businesses, and its actual awareness of the mark at the time of the domain name’s registration. Respondent has demonstrated a pattern of registering domain names that consist of typosquatted versions of other marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, The TJX Companies, Inc., operates retail store chains in the United States under the T.J. MAXX mark. Complainant owns registrations of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,495,462 registered July 5, 1988).
Respondent, Whois-Privacy.Net ltd / DN Manager, registered the infringing <tjmaxxx.com> domain name on October 27, 2005, and currently uses the domain name as the address for a website that consists of a parked page displaying links to third-party websites selling adult-oriented items and displaying adult-oriented content, including pay-per-click links that generate revenue for Respondent each time a website visitor clicks on the links.
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 owns rights in the T.J. MAXX mark under Policy ¶ 4(a)(i) through numerous USPTO registrations (e.g., Reg. No. 1,495,462 registered July 5, 1988). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant argues that the <tjmaxxx.com> domain name is confusingly similar to Complainant’s T.J. MAXX mark, based on the addition of an extra letter “x” to the mark. The extra letter does not distinguish the domain name from the mark. See Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark). The domain name contains neither the spaces nor the punctuation that are present in the mark, and adds the generic top-level domain (“gTLD”) “.com.” None of those alterations make a significant difference between the mark and the disputed domain name. 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).”). The Panel finds that the <tjmaxxx.com> domain name is confusingly similar to Complainant’s T.J. MAXX mark pursuant to 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).
Complainant claims that Respondent lacks rights or legitimate interests in the disputed domain name. The WHOIS information discloses that “Whois-Privacy.Net ltd / DN Manager” is the domain name’s registrant. The Panel finds that Respondent is not commonly known by the <tjmaxxx.com> domain name under Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Complainant argues that Respondent attempts to benefit from the goodwill and fame associated with Complainant’s mark by registering a domain name based on the mark, and hosting pay-per-click links from which Respondent receives payment. Complainant asserts that Respondent attempts to lure consumers who mistakenly access Respondent’s website and then click on the offered links. The panel in Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006), stated that the respondent’s use of the complainant’s mark to redirect Internet users to the respondent’s own website for commercial gain failed to show either a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel finds that Respondent does not make a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant further contends that Respondent hosts adult-oriented content at the resolving website, and submits evidence labeled as Exhibit F which displays links advertising adult-specific clothing, video, and media. The Panel finds that displaying advertising and links to adult-oriented businesses fails to show a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or 4(c)(iii). See Am. Online, Inc. v. Boch, FA 209902 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent uses <aol-x.com> in connection with [adult-oriented] material, which is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the domain name, pursuant to Policy ¶¶ 4(c)(i) [and] (iii).”).
Complainant asserts that Respondent has a history of bad faith registration and use. Respondent is the respondent in other URDP cases where the domain names were transferred to the complainant. See Mary Kay, Inc. v. Whois-Privacy.Net Ltd. c/o DN Manager, FA 1286104 (Nov. 6, 2009); see also BO p.l.c. v. Whois-Privacy.Net Ltd c/o DN Manager, FA 1292649 (Nat. Arb. Forum Dec. 18, 2009). These prior cases show that Respondent has a history of bad faith registration and use pursuant to Policy ¶ 4(a)(ii). 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).
Complainant contends in its Policy ¶ 4(a)(ii) section that Respondent uses the <tjmaxxx.com> domain name to host pay-per-click links and invites website visitors to click on the links, with the intent of making a profit. Respondent’s use of a confusingly similar domain name to draw traffic to the resolving website with the purpose of making a financial gain is bad faith registration and use under Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
Complainant argues that Respondent engages in bad faith registration and use by offering hyperlinks to adult-oriented businesses and websites. The Panel finds that Respondent registered and uses the <tjmaxxx.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Google Inc. v. Bassano, FA 232958 (Nat. Arb. Forum Mar. 8, 2004) (holding that the respondent’s use of the <googlesex.info> domain name to intentionally attract Internet users to a website featuring adult-oriented content constituted bad faith registration and use under Policy ¶ 4(b)(iv)).
Complainant claims that Respondent must have been aware of Complainant’s T.J. MAXX mark at the time Respondent registered the <tjmaxxx.com> domain name, considering the substantial fame and notoriety of the mark. The Panel finds that at the time of registration Respondent was aware of Complainant’s mark, and thus registered the <tjmaxxx.com> 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").
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tjmaxxx.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 22, 2013
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