Macy's Inc. and its subsidiary Macy's West Stores, Inc. v. chen wenjie c/o Dynadot Privacy
Claim Number: FA1404001552918
Complainant is Macy's Inc. and its subsidiary Macy's West Stores, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is chen wenjie c/o Dynadot Privacy (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bmacys.com>, <maciys.com>, <maxcys.com>, <mkacys.com>, and <mwcys.com>, registered with Dynadot, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 7, 2014; the National Arbitration Forum received payment on April 7, 2014.
On April 11, 2014, Dynadot, LLC confirmed by e-mail to the National Arbitration Forum that the <bmacys.com>, <maciys.com>, <maxcys.com>, <mkacys.com>, and <mwcys.com> domain names are registered with Dynadot, LLC and that Respondent is the current registrant of the names. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 April 14, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 5, 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@bmacys.com, postmaster@maciys.com, postmaster@maxcys.com, postmaster@mkacys.com, and postmaster@mwcys.com. Also on April 14, 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 May 7, 2014, 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 names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant has rights in the MACY’S mark under Policy ¶ 4(a)(i). Complainant is one of the premier retailers in the nation. Complainant operates more than 800 Macy’s and Bloomingdale’s departments stores and furniture galleries in 45 states, the District of Columbia, Guam, and Puerto Rico. Complainant also operates from <macys.com>. Complainant adopted the MACY’S mark in 1858 has continuously used it since that date. Complainant owns registrations for the MACY’S mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 78,333, registered June 7, 1910); (Reg. No. 922,972, registered October 26, 1971); and (Reg. No. 3,129,938, registered August 15, 2006). Respondent’s <bmacys.com>, <maciys.com>, <maxcys.com>, <mkacys.com>, and <mwcys.com> domain names are confusingly similar to Complainant’s MACY’S mark.
2. Respondent has no rights or legitimate interests in the <bmacys.com>, <maciys.com>, <maxcys.com>, <mkacys.com>, and <mwcys.com> domain names. Respondent is not commonly known by the disputed domain names. Respondent is not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain names. Respondent is not sponsored by or legitimately affiliated with Complainant. Complainant has also not given Respondent permission to use its mark. Respondent uses the disputed domain names to redirect Internet users to a website displaying generic links to third-party websites, some of which directly compete with Complainant’s business. It is likely that Respondent commercially profits from the use of the disputed domain names. Respondent’s disputed domain names are typosquatted versions of Complainant’s registered mark.
3. Respondent registered and is using the <bmacys.com>, <maciys.com>, <maxcys.com>, <mkacys.com>, and <mwcys.com> domain names in bad faith. Respondent has a pattern of bad faith domain name registrations. Respondent’s resolving websites display links and advertisements that promote products that compete with Complainant. This use diverts potential consumers away from Complainant and to third-party websites, thereby disrupting Complainant’s business. Respondent uses the disputed domain names to resolve to pay-per-click websites in order to commercially profit from the “click through” links. Respondent’s disputed domain names are typosquatted versions of Complainant’s MACY’S mark. Respondent knew of Complainant and Complainant’s marks when it registered the disputed domain names. The fact that Respondent’s resolving websites display content directly related to Complainant further suggests that Respondent was aware of Complainant and Complainant’s MACY’S mark when Respondent registered the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Macy's Inc. and its subsidiary Macy's West Stores, Inc., are premier retailers. Complainant operates more than 800 Macy’s and Bloomingdale’s departments stores and furniture galleries in 45 states, the District of Columbia, Guam, and Puerto Rico. Complainant adopted the MACY’S mark in 1858 has continuously used it since that date. Complainant owns registrations for the MACY’S mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 78,333, registered June 7, 1910); (Reg. No. 922,972, registered October 26, 1971); and (Reg. No. 3,129,938, registered August 15, 2006).
Respondent, chen wenjie c/o Dynadot Privacy, registered <bmacys.com> on February 7, 2013; <maciys.com> on December 9, 2010; <maxcys.com> on November 26, 2010; <mkacys.com> on December 12, 2010; and <mwcys.com> on December 12, 2010. Respondent uses the disputed domain names to redirect Internet users to a website displaying generic links to third-party websites, some of which directly compete with Complainant’s business. Respondent uses the disputed domain names to resolve to pay-per-click websites presumably to commercially profit from the “click through” links. Respondent’s disputed domain names are typosquatted versions of Complainant’s MACY’S mark.
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 MACY’S mark under Policy ¶ 4(a)(i) through registration with the USPTO See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <bmacys.com>, <maciys.com>, <maxcys.com>, <mkacys.com>, and <mwcys.com> domain names are confusingly similar to Complainant’s MACY’S mark. All of Respondent’s disputed domain names feature the generic top-level domain (“gTLD”) “.com.” Respondent also removes the apostrophe in Complainant’s MACY’S mark. Each of Respondent’s disputed domain names differs from Complainant’s mark by one letter. The <bmacys.com>, <maciys.com>, <maxcys.com>, and <mkacys.com> domain names each have an extra letter in addition to Complainant’s registered mark. The <mwcys.com> domain name replaces the letter “a” in MACY’S with the letter “w.”
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).
Respondent has not shown rights or legitimate interests in the <bmacys.com>, <maciys.com>, <maxcys.com>, <mkacys.com>, and <mwcys.com> domain names under Policy ¶ 4(c)(ii). The WHOIS information lists “chen wenjie c/o Dynadot Privacy” as registrant for the disputed domain names. Respondent is not authorized to use the MACY’S mark in any way. Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶¶ 4(c)(i) or 4(c)(iii). Respondent uses the disputed domain names to redirect Internet users to a website displaying generic links to third-party websites, some of which directly compete with Complainant’s business. It is likely that Respondent commercially profits from the use of the disputed domain names. Some of the featured links on Respondent’s website include, “Macy’s Stores,” “Sears Official Site,” “Overstock Clearance,” “Sofas At Macy’s,” “William-Sonoma Registry,” “TJ Maxx Coupons,” “Outlet Clothing,” “Macy’s Coupons,” and “Etinenne Algner at Macy’s.” See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with a complainant, 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)).
Respondent’s disputed domain names are typosquatted versions of Complainant’s registered mark. Typosquatting shows a lack of rights or legitimate interests. See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); see also Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”).
Respondent registered and is using the <bmacys.com>, <maciys.com>, <maxcys.com>, <mkacys.com>, and <mwcys.com> domain names in bad faith under Policy ¶ 4(b)(ii). Respondent has exhibited a pattern of bad faith domain name registrations under Policy ¶ 4(b)(ii). Complainant has provided prior UDRP decisions adverse to Respondent. See Scripps Networks, LLC. v. chen wenjie, FA 1523127 (Nat. Arb. Forum Nov. 12, 2013); see also Microsoft Corp. v. chen wenjie / Private Whois Service, FA 1384976 (Nat. Arb. Forum June 2, 2011). These adverse UDRP decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009).
Respondent’s resolving websites display links and advertisements that promote products that compete with Complainant. This use diverts potential consumers away from Complainant and to third-party websites, thereby disrupting Complainant’s business. This type of competition and disruption shows bad faith use and registration under Policy ¶ 4(b)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).”). Therefore, Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iii).
Internet users may become confused as to Complainant’s affiliation and sponsorship of the competing hyperlinks and websites resolving from the disputed domain names. Respondent attempts to profit from this confusion created by the confusingly similar disputed domain names. Respondent presumably uses the disputed domain names to resolve to pay-per-click websites in order to commercially profit from the “click through” links which is evidence of bad faith use and registration 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).”).
Respondent’s disputed domain names are typosquatted versions of Complainant’s MACY’S mark. Typosquatting is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). 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).”).
Respondent knew of Complainant and Complainant’s rights in the MACY’S mark when it registered the disputed domain name. Therefore, 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) (respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) where respondent had "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 <bmacys.com>, <maciys.com>, <maxcys.com>, <mkacys.com>, and <mwcys.com>domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: May 21, 2014
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