Bed Bath & Beyond Procurement Co. Inc. (n/k/a Liberty Procurement Co. Inc.) v. Ready Asset
Claim Number: FA1310001527429
Complainant is Bed Bath & Beyond Procurement Co. Inc. (n/k/a Liberty Procurement Co. Inc.) (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Ready Asset (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <bedbarthandbeyond.com>, <bedbathandbetond.com>, and <bedbathandneyond.com>, registered with PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically October 30, 2013; the National Arbitration Forum received payment October 30, 2013.
On November 2, 2013, PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <bedbarthandbeyond.com>, <bedbathandbetond.com>, and <bedbathandneyond.com> domain names are registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the names. PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM verified that Respondent is bound by the PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 4, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 25, 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@bedbarthandbeyond.com, postmaster@bedbathandbetond.com, postmaster@bedbathandneyond.com. Also on November 4, 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 November 26, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
Complainant makes the following allegations in this proceeding:
a) Complainant operates a chain of domestic merchandise retail stores across the United States, Puerto Rico, and Canada. In 2010, Complainant was operating 982 stores, with 46,000 employees.
b) Complainant has rights in the BED BATH & BEYOND mark, used in connection with domestic merchandise retail stores. Complainant owns registrations for the BED BATH & BEYOND mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,712,392 registered on September 1, 1992).
c) Respondent’s <bedbarthandbeyond.com>, <bedbathandbetond.com>, and <bedbathandneyond.com> domain names are confusingly similar to Complainant’s BED BATH & BEYOND mark. All of the disputed domain names differ from Complainant’s mark by a single character. The disputed domain names also include the generic top-level domain (“gTLD”) “.com.”
d) Respondent does not own any rights to or legitimate interests in the <bedbarthandbeyond.com>, <bedbathandbetond.com>, and <bedbathandneyond.com> domain names.
a. Respondent is not commonly known by any of the disputed domain names, and Complainant has not authorized or permitted Respondent to use its BED BATH & BEYOND mark in any way.
b. Respondent is using the <bedbarthandbeyond.com>, <bedbathandbetond.com>, and <bedbathandneyond.com> domain names to redirect Internet users to websites featuring third-party links, some of which compete directly with Complainant’s business. Complainant presumes Respondent receives click-through revenue from these links. See Complainant’s Exhibit H.
e) Respondent registered and is using the <bedbarthandbeyond.com>, <bedbathandbetond.com>, and <bedbathandneyond.com> domain names in bad faith.
a. Respondent made the <bedbathandbetond.com> domain name available for sale. See Complainant’s Exhibit I.
b. Respondent registered other domain names involving other trademarks. See Complainant’s Exhibit O.
c. By displaying competing links on the resolving websites, Respondent disrupts Complainant’s business. See Complainant’s Exhibit H.
d. Respondent seeks to profit off of the confusion that Internet users will likely endure in associating these domain names’ content with Complainant.
e. Respondent’s conduct constitutes typosquatting.
Respondent did not file a response in this proceeding.
a) The Panel notes that Respondent registered the <bedbarthandbeyond.com> domain name April 18, 2005, the <bedbathandbetond.com> domain name November 26, 2005, and the <bedbathandneyond.com> domain name November 26, 2005.
Complainant established that it has rights to and legitimate interests in the mark contained in the disputed domain names.
Respondent has no such rights or interests in the disputed domain names and no right or legitimate interests in using Complainant’s protected mark.
The domain names are each confusingly similar to Complainant’s protected mark.
Respondent registered and used 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical to or Confusingly Similar
Complainant contends it has rights in the BED BATH & BEYOND mark, used in connection with domestic merchandise retail stores. Complainant states it owns registrations for the BED BATH & BEYOND mark with the USPTO (e.g., Reg. No. 1,712,393 registered September 1, 1992). The Panel notes that Respondent resides in a different jurisdiction from that in which Complainant holds trademark registrations; however, a complainant need not own a registration in a respondent’s country of operation. It is sufficient under the Policy for a complainant to own a registration in a different country. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant established rights in the BED BATH & BEYOND mark pursuant to Policy ¶ 4(a)(i) via trademark registration with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant claims Respondent’s <bedbarthandbeyond.com>, <bedbathandbetond.com>, and <bedbathandneyond.com> domain names are confusingly similar to Complainant’s BED BATH & BEYOND mark. Complainant notes that all of the disputed domain names differ from Complainant’s mark by a single character. The Panel notes that the <bedbarthandbeyond.com> domain name adds the letter “r” to the word bath, the <bedbathandbetond.com> domain name replaces the letter “y” in the work “beyond” with the letter “t”, and the <bedbathandneyond.com> domain name replaces the letter “b” in the word “beyond” with the letter “n.” The Panel also notes that the disputed domain name also replaces the ampersand in Complainant’s mark with the word “and,” and the spaces between the words in Complainant’s mark have been removed. Additionally, Complainant states that the disputed domain names also include the gTLD “.com.” First, the Panel finds that a disputed domain name that differs from Complainant’s mark by a single letter does not prevent a finding of confusing similarity. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“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).”). Next, the Panel finds that replacing an ampersand with the word “and” does not sufficiently differentiate a disputed domain name from a trademark. 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). Additionally, the Panel finds that the addition of a gTLD and the removal of spaces between words in a trademark are irrelevant changes relative to a confusing similarity analysis under the Policy. 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 and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Respondent’s <bedbarthandbeyond.com>, <bedbathandbetond.com>, and <bedbathandneyond.com> domain names are confusingly similar to Complainant’s BED BATH & BEYOND mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain names are confusingly similar to the Complainant’s protected marks; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
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 of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbara Prods., Inc. v. Enmity 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. Gerber, 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.”).
Complainant contends that Respondent does not own any rights to or legitimate interests in the <bedbarthandbeyond.com>, <bedbathandbetond.com>, and <bedbathandneyond.com> domain names. Complainant asserts that Respondent is not commonly known by any of the disputed domain names, and Complainant has not authorized Respondent to use its BED BATH & BEYOND mark in any way. Past panels have looked to the WHOIS record, whether a complainant authorized the respondent to use a trademark, and the evidence on record as a whole in determining whether the respondent is commonly known by the disputed domain name. See Braun Corp. v. Olney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The Panel notes that the WHOIS information lists “Ready Asset” as the registrant of all of the disputed domain names. Therefore, because Respondent was not authorized by Complainant to use the BED BATH & BEYOND mark, and because the WHOIS information and other evidence on record do not show rights, the Panel finds that Respondent is not commonly known by the <bedbarthandbeyond.com>, <bedbathandbetond.com>, and <bedbathandneyond.com> domain names under Policy ¶ 4(c)(ii).
Complainant
claims Respondent is using the <bedbarthandbeyond.com>, <bedbathandbetond.com>, and <bedbathandneyond.com>
domain names to redirect Internet users to websites featuring third-party
links, some of which compete directly with Complainant’s business. Complainant
presumes Respondent receives click-through revenue from these links. See Complainant’s
Exhibit H. Using a confusingly similar domain name to display competing
third-party links does not demonstrate a bona fide offering of goods and
services or a legitimate noncommercial or fair use. See Disney
Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding
that the operation of a pay-per-click website at a confusingly similar domain
name was not 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)).
Therefore, the Panel finds that Respondent is not making 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) because Respondent is using the <bedbarthandbeyond.com>, <bedbathandbetond.com>, and <bedbathandneyond.com>
domain names to redirect Internet users to websites featuring competing
third-party links.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain names; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant claims Respondent registered and is using the <bedbarthandbeyond.com>, <bedbathandbetond.com>, and <bedbathandneyond.com> domain names in bad faith. Complainant notes that Respondent made the <bedbathandbetond.com> domain name available for sale. See Complainant’s Exhibit I. Making an offer of sale of a domain name demonstrates bad faith registration and use under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”). Therefore, the Panel finds that Respondent registered and is using the <bedbathandbetond.com> domain name in bad faith pursuant to Policy ¶ 4(b)(i) because Respondent made the disputed domain name available for purchase.
Complainant contends that Respondent registered other domain names involving other trademarks. See Complainant’s Exhibit O. The Panel notes that Respondent registered three separate domain names in this case. Multiple domain name registrations involving a single trademark constitutes a bad faith pattern of registration and use pursuant to Policy ¶ 4(b)(ii). See YAHOO! INC v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in the respondent's registration of two domain names incorporating the complainant's YAHOO! mark). Therefore, the Panel finds that Respondent registered and is using the <bedbarthandbeyond.com>, <bedbathandbetond.com>, and <bedbathandneyond.com> domain names in bad faith under a Policy ¶ 4(b)(ii) analysis because Respondent registered three domain names in this case, all of which include Complainant’s BED BATH & BEYOND mark.
Complainant alleges that, by displaying competing links on the resolving websites, Respondent is disrupting Complainant’s business. See Complainant’s Exhibit H. Displaying competing links on a disputed domain name demonstrates bad faith disruption of a complainant’s business, pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)). Therefore, the Panel finds that Respondent’s hyperlinks compete with Complainant’s business, and therefore, the Panel finds that Respondent registered and is using the <bedbarthandbeyond.com>, <bedbathandbetond.com>, and <bedbathandneyond.com> domain names in bad faith under Policy ¶ 4(b)(iii) because the disputed domain names resolve to a website[s] that display competing hyperlinks, which is disrupting Complainant’s business.
Complainant also argues that Respondent is profiting through the likelihood that Internet users who visit these domain names will click on the monetized hyperlinks under the belief that the content is endorsed by, or affiliated with, Complainant. The Panel again notes that all of these domain names are used to promote hyperlink advertisements. See Complainant’s Ex. H. The Panel finds that Respondent’s conduct amounts to an attempt to profit off the likelihood of Internet user confusion and is thus satisfies requirements of Policy ¶ 4(b)(iv) to find bad faith. See, e.g., Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
Complainant claims Respondent’s conduct constitutes typosquatting. In Liberty Mut. Ins. Co. v. Domain Park Ltd., FA 1189049 (Nat. Arb. Forum June 23, 2008), the panel defined typosquatting as the “registration of a disputed domain name that capitalizes on Internet users’ typographical errors.” The Panel notes that the <bedbarthandbeyond.com>, <bedbathandbetond.com>, and <bedbathandneyond.com> domain names all differ from Complainant’s BED BATH & BEYOND mark by a single letter. Typosquatting is in and of itself evidence of bad faith under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). Therefore, the Panel finds that Respondent is typosquatting and acted in bad faith pursuant to Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <bedbarthandbeyond.com>, <bedbathandbetond.com>, and <bedbathandneyond.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 4, 2013
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