Macy’s Retail Holdings, Inc. and its subsidiary Macy’s West Stores, Inc. v. JEAN LUCAS / DOMCHARME GROUP
Claim Number: FA1409001581348
Complainant is Macy’s Retail Holdings, Inc. and its subsidiary Macy’s West Stores, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is JEAN LUCAS / DOMCHARME GROUP (“Respondent”), CA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue are <bloomingdles.com> and <loomingdales.com>, registered with ENOM, INC.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 24, 2014; the National Arbitration Forum received payment on September 24, 2014.
On September 24, 2014, ENOM, INC. confirmed by email to the National Arbitration Forum that the <bloomingdles.com> and <loomingdales.com> domain names are registered with ENOM, INC. and that Respondent is the current registrant of the names. ENOM, INC. has verified that Respondent is bound by the ENOM, INC. 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 September 24, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 14, 2014 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@bloomingdles.com, postmaster@loomingdales.com. Also on September 24, 2014, 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 October 22, 2014, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin 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
Complainant is a large retailer whose operations include Bloomingdale’s department stores and furniture galleries across the United States, along with licensed operations in Dubai, United Arab Emirates. Complainant adopted the BLOOMINGDALE’S mark in 1913 and owns various U.S. trademark registrations for BLOOMINGDALE’S and related marks.
Complainant contends that the disputed domain names <bloomingdles.com> and <loomingdales.com> are confusingly similar to its mark, differing only by the introduction of minor typographical errors; Complainant characterizes the domain names as classic examples of “typosquatting.”
Complainant contends further that Respondent has no rights or legitimate interests in respect of the disputed domain names, and that the domain names were registered and are being used in bad faith. In support thereof, Complainant alleges that Respondent has not been commonly known by the domain names, is not sponsored by or legitimately affiliated with Complainant, has not been given permission to use Complainant’s mark, and is using the domain names to redirect Internet users to websites featuring generic links to third-party websites, some of which compete directly with Complainant’s business, presumably generating pay-per-click fees for Respondent. In addition, Complainant asserts that bad faith may be inferred from Respondent’s typosquatting behavior, and accuses Respondent of being a “recalcitrant, serial cybersquatter / typosquatter,” based upon an ongoing pattern of such behavior evident from previous decisions under the Policy and from other domain name registrations held by Respondent, including <lemdingtree.com>, <napester.com>, and <oldenavy.com>.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain names are confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and have been used 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.”).
The disputed domain names are identical to Complainant’s registered mark, but for the introduction of minor typographical errors and the addition of the “.com” top-level domain. These alterations do not diminish the similarity between the domain name and Complainant’s mark. See, e.g., Macy’s Inc. v. PPA Media Services / Ryan G Foo, FA 1552885 (Nat. Arb. Forum May 23, 2014) (finding <bllomingdales.com>, <bloomingales.com>, <bloomingdaales.com>, <bloomingdailes.com> and <boomingdales.com> confusingly similar to BLOOMINGDALE’S); Macy’s Inc. v. Domain Admin / Taranga Services Pty Ltd, FA 1483078 (Nat. Arb. Forum Apr. 3, 2013) (finding <bloomngdales.com> confusingly similar to BLOOMINGDALE’S); Macy’s Inc. v. Jardimar Holdings Corp / Ernesto Charingola, FA 1473475 (Nat. Arb. Forum Jan. 25, 2013) (finding <bloomgingdales.com>, <bloomingdoles.com>, and <bloominggdales.com> confusingly similar to BLOOMINGDALE’S); Federated Western Properties, Inc. v. John Zuccarini dba Cupcake Patrol, RaveClub, and RaveClub Berlin, D2003-0298 (WIPO June 30, 2003) (finding <bloomigdales.com>, <bloomimgdales.com>, <bloomindale.com> and <bloomingsdale.com> confusingly similar to BLOOMINGDALE’S). The Panel finds that the disputed domain names are confusingly similar to Complainant’s mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The disputed domain names incorporate typographical variations of Complainant’s mark, and apparently their sole use has been in connection with websites containing advertising links, including links to competitors of Complainant. See, e.g., Finish Line, Inc. v. Ryan G Foo / PPA Media Services, FA 1577970 (Nat. Arb. Forum Oct. 9, 2014) (finding lack of rights or legitimate interests in similar circumstances); Macy’s Inc. v. PPA Media Services / Ryan G Foo, supra (same). Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain names.
Respondent has been a party to numerous prior proceedings under the Policy, including Orbitz Worldwide, LLC v. Domcharme Group C/O Jean Lucas, FA 1495346 (Nat. Arb. Forum June 4, 2013) (finding that <cheapptickets.com>, <cheaptivkets.com>, <cheeaptickets.com>, <chepatickets.com>, <orbibtz.com>, <orbitzt.com>, and <orbuitz.com> were registered in bad faith); Liberty Procurement Co. f/k/a Bed Bath & Beyond Procurement Co. v. Domcharme Group / Jean Lucas, FA 1481719 (Nat. Arb. Forum Feb. 26, 2013) (finding that <bdbathandbeyond.com> was registered in bad faith); Kohl’s Illinois, Inc. v. Domcharme Group / Jean Lucas / lohls.com / Elias Skander, FA 1474698 (Nat. Arb. Forum Jan. 23, 2013) (finding that <kohhls.com>, <kohks.com>, <kohlas.com>, <kohlsa.com>, <kohlz.com>, <kophls.com>, and <lohls.com> were registered in bad faith); Brookstone Co. v. Domcharme Group / Jean Lucas, FA 1393874 (Nat. Arb. Forum July 12, 2011) (finding that <broookstone.com> was registered in bad faith). For the same reasons as those expressed by the panels in those cases, the Panel finds that the disputed domain names <bloomingdles.com> and <loomingdales.com> were registered and have been used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bloomingdles.com> and <loomingdales.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: October 29, 2014
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