Bath & Body Works Brand Management, Inc. v. Daryl Armstrong
Claim Number: FA1005001325905
Complainant is Bath & Body Works Brand Management, Inc. (“Complainant”), represented by Melise R. Blakeslee, of Sequel Technology & IP Law, LLP, Washington, D.C., USA. Respondent is Daryl Armstrong (“Respondent”), Oregon, USA.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <bathandbodywork.info>, <bathandbodyworkscode.info>, <bathandbodyworksprintablecoupons.info>, and <bathandbodyworksscents.info>, registered with GoDaddy.com Inc.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 20, 2010.
On May 23, 2010, GoDaddy.com Inc. confirmed by e-mail to the National Arbitration Forum that the <bathandbodywork.info>, <bathandbodyworkscode.info>, <bathandbodyworksprintablecoupons.info>, and <bathandbodyworksscents.info> domain names are registered with GoDaddy.com Inc. and that Respondent is the current registrant of the names. GoDaddy.com Inc. has verified that Respondent is bound by the GoDaddy.com Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On May 28, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 17, 2010 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@bathandbodywork.info, postmaster@bathandbodyworkscode.info, postmaster@bathandbodyworksprintablecoupons.info, and postmaster@bathandbodyworksscents.info. Also on May 28, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 June 22, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 a Written Notice, as defined in Rule 1. 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 makes the following assertions:
1. Respondent’s <bathandbodywork.info>, <bathandbodyworkscode.info>, <bathandbodyworksprintablecoupons.info>, and <bathandbodyworksscents.info> domain names are confusingly similar to Complainant’s BATH & BODY WORKS mark.
2. Respondent does not have any rights or legitimate interests in the <bathandbodywork.info>, <bathandbodyworkscode.info>, <bathandbodyworksprintablecoupons.info>, and <bathandbodyworksscents.info>domain names.
3. Respondent registered and used the <bathandbodywork.info>, <bathandbodyworkscode.info>, <bathandbodyworksprintablecoupons.info>, and <bathandbodyworksscents.info>domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Bath & Body Works Brand Management, Inc., is a retailer of bath, beauty, and skin care products. Complainant owns eight trademark registrations for the BATH & BODY WORKS marks with the United States Patent and Trademark Office (“USPTO”):
BATH & BODY WORKS Reg. No. 1,742,062 issued Dec. 22, 1992;
BATH & BODY WORKS Reg. No. 1,870,095 issued Dec. 27, 1994;
BATH & BODY WORKS Reg. No. 1,972,514 issued May 7, 1996;
BATH & BODY WORKS Reg. No. 2, 236,860 issued Apr. 6, 1999;
BATH & BODY WORKS Reg. No. 2,396,469 issued Oct. 17, 2000;
BATH & BODY WORKS CLASSICS Reg. No. 3,521,004 issued June 12, 2007;
BATH & BODY WORKS CLASSICS Reg. No. 3, 568,627 issued Jan. 27, 2009;
BATH & BODY WORKS Reg. No. 3,620,013 issued May 12, 2009.
Respondent, Daryl Armstrong, registered the <bathandbodywork.info>, <bathandbodyworkscode.info>, <bathandbodyworksprintablecoupons.info>, and <bathandbodyworksscents.info> domain names on February 11, 2010. All of the disputed domain names resolve to websites featuring links to online sales of what are purportedly Complainant’s products, links to competitors of Complainant and other commercial websites, and general informational content, often referencing Complainant.
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."
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.”).
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.
The Panel finds that Complainant’s trademark registrations are sufficient evidence of Complainant’s rights in the BATH & BODY WORKS mark according to Policy ¶ 4(a)(i). 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 Enter. Rent-a-Car Co. v. BGSvetionik, FA 925273 (Nat. Arb. Forum Apr. 11, 2007) (finding that the complainant’s timely registration with the USPTO and “subsequent use of the ENTERPRISE mark for over 20 years sufficiently establishes its rights in the mark pursuant to Policy ¶ 4(a)(i).”).
The <bathandbodywork.info>, <bathandbodyworkscode.info>, <bathandbodyworksprintablecoupons.info>, and <bathandbodyworksscents.info> domain names are confusingly similar to Complainant’s BATH & BODY WORKS mark. The <bathandbodyworkscode.info>, <bathandbodyworksprintablecoupons.info>, and <bathandbodyworksscents.info> domain names each include Complainant’s mark, omitting the space between the words, replacing the ampersand with the word “and,” and adding one or more of the following generic or descriptive terms: “printable,” “coupons,” code,” or “scents.” The <bathandbodywork.info> domain name also includes Complainant’s mark but without the final letter “s.” All of the disputed domain names append the generic top-level (“gTLD”) domain “.info.” The Panel finds that replacing an ampersand with the word “and” and eliminating spaces do not create a distinct domain name capable of overcoming a claim of confusing similarity because neither ampersands nor spaces are permitted in a domain name. See 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); see also Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”).
The addition of generic or descriptive terms also does not transform a domain name into a domain name separate and distinct from Complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Modifying or misspelling Complainant’s mark by omitting a single letter will not prevent confusing similarity. See State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to the complainant’s STATE FARM mark); see also Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”).
Finally, the affixation of a gTLD is irrelevant to a Policy
¶ 4(a)(i) analysis. See Microsoft Corp. v. Zournas, FA 1093928 (Nat. Arb. Forum Dec.
10, 2007) (“the Panel finds that Respondent’s <windows.info> domain name is identical to Complainant’s
WINDOWS mark as the addition of a gTLD is a necessary addition in the creation
of any domain name and therefore an indistinguishing characteristic under
Policy ¶ 4(a)(i).“); see also Nev. State
Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6,
2003) (“It has been established that the addition of a generic top-level domain
is irrelevant when considering whether a domain name is identical or
confusingly similar under the Policy.”). The Panel accordingly finds that Respondent’s
<bathandbodywork.info>,
<bathandbodyworkscode.info>, <bathandbodyworksprintablecoupons.info>,
and <bathandbodyworksscents.info> domain names are confusingly
similar to Complainant’s BATH & BODY WORKS mark pursuant to Policy ¶
4(a)(i).
The Panel finds
Policy ¶ 4(a)(i) has been satisfied.
When making an allegation against Respondent’s rights and legitimate interests in the disputed domain names, Policy ¶ 4(a)(ii) requires Complainant to present a prima facie case. Once Complainant meets that burden, the responsibility to demonstrate rights and legitimate interests subsequently transfers to Respondent. Respondent’s failure to respond allows the Panel to infer, pursuant to Policy ¶ 4(a)(ii), both that Respondent does not possess rights and legitimate interests in the domain names and that Complainant’s allegations are true as reasonably stated. See Branco do Brasil S.A. v. Sync Tech., D2000-0727 (WIPO Sept. 1, 2000) (“By its default, Respondent has not contested the allegation . . . that the Respondent lacks any rights or legitimate interests in the domain name. The Panel thus assumes that there was no other reason for the Respondent having registered <bancodobrasil.com> but the presumably known existence of the Complainant´s mark BANCO DO BRASIL.”); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the panel and the respondent did not come forward to suggest any right or interest it may have possessed). The Panel elects to consider the evidence presented, however, in light of the Policy ¶ 4(c) to determine whether Respondent has rights and legitimate interests in the disputed domain name.
Complainant asserts that Respondent is not affiliated with Complainant, not licensed to use Complainant’s mark and not commonly known by the disputed domain name. Respondent is identified by the WHOIS information as “Daryl Armstrong,” a name that fails to indicate any association with the disputed domain names. In accordance with Policy ¶ 4(c)(ii), the Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain names as it is not commonly known by the disputed domain names and is not authorized to use Complainant’s mark. 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); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
Complainant contends that Respondent uses the <bathandbodywork.info>, <bathandbodyworkscode.info>,
<bathandbodyworksprintablecoupons.info>, and <bathandbodyworksscents.info>
domain names to redirect Internet users to e-commerce websites created by
Speedlings, a website which builds websites and provides auto-generated content
based on specified keywords in an effort to increase the domain name holder’s
revenue. Complainant argues that these
e-commerce sites offer links to online sales of products purported to be
Complainant’s, competitors’ websites and generally unrelated commercial
websites. The Panel finds that such a
diversion scheme focused on redirecting Internet users away from Complainant’s
online presence to other websites for Respondent’s profit is not a bona fide offering of goods or
services according to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair
use under Policy ¶ 4(c)(iii). See Pioneer
Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003)
(finding that the respondent did not have rights or legitimate interests in a
domain name that used the complainant’s mark and redirected Internet users to a
website that pays domain name registrants for referring those users to its
search engine and pop-up advertisements); see
also Wells Fargo & Co.
v. Lin Shun Shing, FA 205699 (Nat. Arb.
Forum Dec. 8, 2003) (finding that using a domain name to direct Internet
traffic to a website featuring pop-up advertisements and links to various
third-party websites is neither a bona fide offering of goods or
services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under
Policy ¶ 4(c)(iii) because the registrant presumably receives compensation for
each misdirected Internet user).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
A large part of the content displayed on the <bathandbodywork.info>, <bathandbodyworkscode.info>,
<bathandbodyworksprintablecoupons.info>, and <bathandbodyworksscents.info>
websites advertise competing online sales of products purported to be
Complainant’s or similar products sold by Complainant’s competitors. This disrupts
Complainant’s business since Internet users are intentionally diverted to these
e-commerce sites instead of Complainant’s.
The Panel finds Respondent’s activities show an intent to disrupt
Complainant’s business, which is evidence of bad faith registration and use
according to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke,
FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged
in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the
disputed domain names to operate a commercial search engine with links to the
products of the complainant and to complainant’s competitors, as well as by
diverting Internet users to several other domain names); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007)
(finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a
respondent used the disputed domain name to operate a commercial search engine
with links to the complainant’s competitors).
Complainant alleges that, by providing links to products purporting to be Complainant’s and other informational content referencing Complainant at the disputed domain names, Respondent aims to confuse and mislead Internet users into believing they have reached the website they were intending. This confusion commercially benefits Respondent when Internet users click on any of the revenue-generating pay-per-click links featured on Respondent’s sites. The Panel finds Respondent’s efforts to attract, confuse and profit from Complainant’s customers and the goodwill of Complainant’s mark indicate bad faith registration and use under Policy ¶ 4(b)(iv). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bathandbodywork.info>, <bathandbodyworkscode.info>, <bathandbodyworksprintablecoupons.info>, and <bathandbodyworksscents.info> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 1, 2010
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