Bed Bath & Beyond Procurement Co. Inc. (n/k/a Liberty Procurement Co. Inc.) (Wholly Owned Subsidiary of Bed Bath & Beyond Inc.) v. Domain Administrator / DigiMedia Holding
Claim Number: FA1407001572884
Complainant is Bed Bath & Beyond Procurement Co. Inc. (n/k/a Liberty Procurement Co. Inc.) (Wholly Owned Subsidiary of Bed Bath & Beyond Inc.) (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Domain Administrator / DigiMedia Holding (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bedbathbeyyond.com>, registered with FABULOUS.COM PTY LTD.
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 July 31, 2014; the National Arbitration Forum received payment July 31, 2014.
On August 3, 2014, FABULOUS.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <bedbathbeyyond.com> domain name is registered with FABULOUS.COM PTY LTD. and that Respondent is the current registrant of the name. FABULOUS.COM PTY LTD. verified that Respondent is bound by the FABULOUS.COM PTY LTD. 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 August 4, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 25, 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@bedbathbeyyond.com. Also on August 4, 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 August 29, 2014, 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 name be transferred from Respondent to Complainant.
Complainant makes the following allegations in this proceeding:
Complainant claims the BED BATH & BEYOND mark is used in connection with its retail operations. The mark has been registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,830,725 registered April 12, 1994). The <bedbathbeyyond.com> domain name is confusingly similar to the BED BATH & BEYOND mark.
Respondent has no rights or legitimate interests in this domain name. First, Respondent has never been commonly known as the name <bedbathbeyyond.com>. Second, Respondent is using the domain name to host generic hyperlinks that sometimes promote competing businesses.
Respondent registered and is using the <bedbathbeyyond.com> domain name in bad faith. Respondent is disrupting Complainant’s business by promoting the competing advertisements on the domain name’s website. Respondent is profiting from the likelihood of confusion as between the domain name and Complainant’s mark. Further, Respondent is typosquatting this domain name.
Respondent did not submit a response. The Panel notes that Respondent registered the <bedbathbeyyond.com> domain name August 16, 2007, some ten years after Complainant established rights in the mark.
Complainant established that it has rights to and legitimate interests in the mark contained within the confusingly similar domain name that Respondent registered.
Respondent has no such rights or legitimate interests.
Respondent registered the domain name containing in its entirety Complainant’s protected mark 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 or Confusingly Similar
Complainant claims the BED BATH & BEYOND mark is used in connection with its retail operations. Complainant notes the mark has been registered with the USPTO (e.g., Reg. No. 1,830,725 registered April 12, 1994). The Panel agrees Complainant has sufficiently shown that it has rights in this domain name pursuant to Policy ¶ 4(a)(i) by way of USPTO registration. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant claims the <bedbathbeyyond.com> domain name is confusingly similar to the BED BATH & BEYOND mark. The Panel notes the domain name takes the entire mark, removes the spacing and ampersand, adds an additional “y,” and the gTLD “.com.” The Panel finds that none of these alterations are sufficient to avoid a finding of Policy ¶ 4(a)(i) confusing similarity. See, e.g., Google Inc. v. N/A/ k gautam, FA 1524232 (Nat. Arb. Forum Nov. 18, 2013) (finding that the disputed domain name is confusingly similar to the at-issue mark despite the misspelling of the mark by omitting letters, the addition of a generic term, and the addition of a generic top-level domain).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a domain name that is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights 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-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); see also AOL LLC v. Gerberg, 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 claims Respondent has never been commonly known as the name <bedbathbeyyond.com>. The Panel notes that the WHOIS information for the <bedbathbeyyond.com> domain name lists “Domain Administrator / DigiMedia Holding” as the registrant of record. The Panel finds that Respondent has not been commonly known by this domain name within the meaning of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant claims that Respondent is using the domain name to host generic hyperlinks that sometimes promotes competing businesses. The Panel notes the <bedbathbeyyond.com> domain name is being used to promote hyperlinks to various businesses, some of which explicitly reference the BED BATH & BEYOND mark. See Compl., at Attached Ex. H. In Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003), the panel found the use of the domain name was neither a bona fide offering nor legitimate noncommercial or fair use, because the domain name was used for purposes of hyperlink advertisements and nothing more. The Panel here similarly finds that Respondent has not made a use of the domain name, which is acceptable under Policy ¶¶ 4(c)(i), (iii).
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 name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant claims Respondent is disrupting Complainant’s business by promoting the competing advertisements on the domain name’s website. The Panel notes the hyperlinks on the domain name’s website, and notes the presence of several generic links to “comforters,” “Bath Chairs,” and “Macy’s Wedding Registry.” See Compl., at Attached Ex. H. In Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006), the panel found commercial disruption when competing goods were offered in the form of click-through advertisements to third-party websites. The Panel here is satisfied that the hyperlinks exhibited are indicative of competing offers and this Panel finds Policy ¶ 4(b)(iii) bad faith.
Complainant further claims that Respondent is profiting from the likelihood of confusion between the domain name and Complainant’s mark. The Panel notices the domain name is being used to promote hyperlink advertisements. See Compl., at Attached Ex. H. The Panel agrees these advertisements are evidence of Policy ¶ 4(b)(iv) bad faith because Respondent is capitalizing on the association between the mark and the <bedbathbeyyond.com> domain name and profiting by way of commercial advertisements. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because Respondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”).
Complainant claims Respondent is typosquatting this domain name. The Panel notes that typosquatting is the practice of registering a domain name not for its own independent meaning, but because it embodies the common misspelling of terms that make up the trademark of another. See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.). The Panel believes that the <bedbathbeyyond.com> domain name is an example of typosquatting.
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 <bedbathbeyyond.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 12, 2014.
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