Bed Bath & Beyond Procurement Co. Inc. (n/k/a Liberty Procurement Co. Inc.) v. Domain Administrator
Claim Number: FA1402001545652
Complainant is Bed Bath & Beyond Procurement Co. Inc. (n/k/a Liberty Procurement Co. Inc.) (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Domain Administrator (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bedbathandbeyone.com>, registered with Moniker Online Services LLC.
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 February 26, 2014; the National Arbitration Forum received payment on February 26, 2014.
On March 6, 2014, Moniker Online Services Llc confirmed by e-mail to the National Arbitration Forum that the <bedbathandbeyone.com> domain name is registered with Moniker Online Services Llc and that Respondent is the current registrant of the name. Moniker Online Services Llc has verified that Respondent is bound by the Moniker Online Services Llc 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 March 12, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 1, 2014 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@bedbathandbeyone.com. Also on March 12, 2014, 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 April 2, 2014, 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 name be transferred from Respondent to Complainant.
A. Complainant
i. Complainant, Bed Bath & Beyond Procurement Co. Inc. (n/k/a Liberty Procurement Co. Inc.), features items for the bedroom, bathroom, kitchen, and dining room.
ii. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the BED BATH & BEYOND mark (e.g., Reg. No. 1,830,725, registered April 12, 1994).
iii. The disputed domain name is confusingly similar to Complainant’s mark because it differs by only a single character from Complainant’s mark.
iv. Respondent has no rights or legitimate interests in respect of the disputed domain name.
v. Respondent has not been commonly known by the disputed domain name.
vi. 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.
vii. Respondent’s advertised pay-per-click links displayed on the resolving websites promotes products that compete with Complainant.
viii. Respondent is using the disputed domain name to attract and mislead consumers for its own profit.
ix. 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 name is confusingly similar to Complainant’s BED BATH & BEYOND mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <bedbathandbeyone.com> domain name, and that Respondent registered and uses the domain name 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.”).
Complainant sells items for the bedroom, bathroom, kitchen, and dining room. Complainant owns trademark registrations with the USPTO for the BED BATH & BEYOND mark (e.g., Reg. No. 1,830,725, registered April 12, 1994). Respondent appears to reside within the United States. Complainant’s registration of the BED BATH & BEYOND mark with the USPTO sufficiently proves that it holds rights in the mark pursuant to Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Complainant claims that Respondent’s <bedbathandbeyone.com> domain name is confusingly similar to Complainant’s mark because it differs by only a single character from Complainant’s mark. Respondent removes the letter “d” in Complainant’s BED BATH & BEYOND mark and replaces it with the letter “e.” Respondent’s substitution of letters in a mark does not differentiate the domain name from Complainant’s mark under Policy ¶ 4(a)(i). 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”).
Respondent also replaces the ampersand in Complainant’s BED BATH & BEYOND mark and uses the word “and” in its place. Respondent’s use of the term “and” instead of an ampersand is inconsequential to a Policy ¶ 4(a)(i) confusing similarity analysis. 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).
Finally, Respondent eliminates the spaces in Complainant’s mark and adds the generic top-level domain (“gTLD”) “.com.” Respondent’s removal of spaces and inclusion of a gTLD does not distinguish the disputed domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). 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).”). Thus, Respondent’s <bedbathandbeyone.com> domain name is confusingly similar to Complainant’s BED BATH & BEYOND mark according to 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 name. 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 asserts that Respondent has not been commonly known by the <bedbathandbeyone.com> domain name. Complainant argues that Respondent is not sponsored by or legitimately affiliated with Complainant in anyway. Complainant contends it has not given Respondent permission to use Complainant’s mark in a domain name. The egistrant is identified as “Domain Administrator” in the WHOIS record. Therefore, the Panel holds that Respondent is not commonly known by the <bedbathandbeyone.com> 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).
Complainant argues that Respondent is using the <bedbathandbeyone.com> 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’s resolving website provides links such as “Bed Bath and Beyond,” “Bed and Bath Bridal Registry,” and “Bed Bath and Beyond Credit Card.” Complainant alleges that Respondent presumably receives pay-per-click fees from these linked websites. In H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the panel found that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Therefore, the Panel holds that Respondent is not using the <bedbathandbeyone.com> domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent’s advertised pay-per-click links displayed on the resolving website promote products that compete with Complainant. Respondent’s disputed domain name resolves to a website that contains links that directly compete with Complainant and its goods or services. Complainant states that these links divert potential customers from Complainant’s website to third-party websites, thus disrupting Complainant’s business. The Panel agrees that Respondent’s <bedbathandbeyone.com> domain name disrupts Complainant’s legitimate business under 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)).
Complainant claims that Respondent is using the <bedbathandbeyone.com> domain name to attract and mislead consumers for its own profit. Respondent is using the disputed domain name to provide a competing hyperlink directory with links such as “Bed Bath and Beyond,” “Bed Bath and Beyond Credit Card,” “Gift Registries,” and others. Complainant alleges that Respondent uses the disputed domain name to collect click-through fees. The Panel concludes that Respondent is using the <bedbathandbeyone.com> domain name to divert consumers from Complainant’s website to its own website from which it profits, and therefore Respondent has registered and is using the disputed domain name in bad faith under 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 argues that Respondent’s typosquatting behavior is further evidence of bad faith. Respondent swaps the letter “d” for the letter “e” in its <bedbathandbeyone.com> domain name. Typosquatting has been found where there is a domain name containing a typographical error with respect to a complainant’s mark. 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).”). Accordingly, the Panel determines that Respondent has engaged in typosquatting and finds bad faith under Policy ¶ 4(a)(iii).
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 <bedbathandbeyone.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 15, 2014
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