Macy’s Inc. and its subsidiary Macy's West Stores, Inc. v. Domain Admin / Private Registrations Aktien Gesellschaft
Claim Number: FA1508001632022
Complainant is Macy’s Inc. and its subsidiary Macy's West Stores, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Domain Admin / Private Registrations Aktien Gesellschaft (“Respondent”), St. Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bloomiingdales.com>, <bloomingdaels.com>, <bloomingdalles.com>, <bloomingdates.com> and <blooningdales.com>, registered with Pdr Ltd. D/B/A Publicdomainregistry.Com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 5, 2015; the Forum received payment on August 5, 2015.
On August 6, 2015, Pdr Ltd. D/B/A Publicdomainregistry.Com confirmed by e-mail to the Forum that the <bloomiingdales.com>, <bloomingdaels.com>, <bloomingdalles.com>, <bloomingdates.com> and <blooningdales.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 has verified that Respondent is bound by the Pdr Ltd. D/B/A Publicdomainregistry.Com 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 August 14, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 3, 2015 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@bloomiingdales.com, postmaster@bloomingdaels.com, postmaster@bloomingdalles.com, postmaster@bloomingdates.com, postmaster@blooningdales.com. Also on August 14, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On September 11, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth l. Port as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 claims it owns the BLOOMINGDALES mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 945,425, registered Oct. 17, 1972). Complainant uses the mark in connection with its business as a department store.
Complainant alleges that the disputed domain names are confusingly similar to the BLOOMINGDALES mark, as each of the disputed domain names are common misspellings of the BLOOMINGDALES mark.
Complainant further alleges that Respondent lacks rights or legitimate interests in the disputed domain names. Complainant is not commonly known by the disputed domain names, as demonstrated by the available WHOIS information for the disputed domain names. Further, Respondent has never been licensed or authorized to use the BLOOMINGDALES mark.
Further, Complainant points out that the Respondent has failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names. Respondent uses the disputed domain names to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. See Compl., at Attached Ex. H.
Complainant further alleges that the Respondent has registered and is using the disputed domain names in bad faith under Policy ¶ 4(a)(iii). Respondent has listed the disputed domain names for sale, demonstrating bad faith under Policy ¶ 4(b)(i). Respondent has engaged in a pattern of bad faith per Policy ¶ 4(b)(ii), as it has been involved in a number of adverse UDRP decisions. Respondent’s use of the disputed domain names disrupts Complainant’s business according to Policy ¶ 4(b)(iii).
Complainant further alleges that the Respondent is using the disputed domain name names to redirect Internet users to third-party websites, through which it presumably receives click-through fees. According to the Complainant, this demonstrates Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant further points out that the Respondent is a recalcitrant, serial cybersquatter / typosquatter. Searches through the NAF and WIPO UDRP decision databases reveal that Respondent has engaged in an ongoing pattern of such behavior. Previous panels have agreed that multiple prior UDRP decisions are sufficient evidence indicating a respondent’s bad faith use and registration. See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”).
Finally, Complainant alleges that the Respondent surely had actual knowledge of Complainant’s rights in the BLOOMINGDALES mark when it registered the disputed domain names. Respondent's incorporation of common misspellings of
Complainant's trademarks in multiple domain names urges a finding that Respondent had actual knowledge of Complainant's rights in the at-issue marks when it registered each of the confusingly similar domain names. Moreover, Respondent was a member of Complainant's affiliate program and thus must have known of Complainant and its trademarks before it registered the domain names.
Respondent’s typosquatting behavior is further evidence of bad faith under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered the <blooningdales.com> domain name on October 2, 2005; the <bloomingdates.com> domain name on March 9, 2006; the <bloomingdalles.com> domain name on May 10, 2008; the <bloomingdaels.com> domain name on December 4, 2004; and the <bloomiingdales.com> domain name on November 16, 2005.
As the Respondent has failed to file a Response in this matter, the Panel shall make its determination based on the undisputed and reasonable allegations of the Complainant. As such, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s registered trademark, that the Respondent has no rights or legitimate interests in or to the disputed domain names, and that the Respondent has engaged in bad faith use and registration of the disputed domain names.
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 and the Complainant’s registered and famous trademark are indisputably similar if not very nearly identical. Complainant has adequately established its rights in or to its registered trademark. The disputed domain names all consist of the Complaint’s trademark in a misspelled form plus the gTLD .com. These are not good faith attempts to distinguish the domain names from the registered and famous trademark.
As such, the Panel finds the disputed domain names to be confusingly similar to the Complainant’s registered and famous trademark.
The Respondent has not rights or legitimate interests in or to the disputed domain names. The Respondent has adequately demonstrated that the Respondent is not commonly known by any of the disputed domain names.
Complainant asserts that Respondent has failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain names. Complainant argues that Respondent uses the disputed domain names to redirect Internet users to a website that offers links to third party websites, some of which directly compete with Complainant. See Compl., at Attached Ex. H.
As such, the Panel finds that the Respondent has no rights or legitimate interests in or to the disputed domain names.
Complainant argues that Respondent has registered and is using the disputed domain names in bad faith under Policy ¶ 4(a)(iii). First, Complainant argues that Respondent has offered the disputed domain names up for sale. See Compl., at Attached Ex. I. Complainant believes that such behavior indicates bad faith under Policy ¶ 4(b)(i). As there is no evidence to refute such claim, the Panel finds that Respondent has acted in bad faith under Policy ¶ 4(b)(i).
Next, Complainant urges that Respondent’s behavior is part of a pattern of bad faith registrations. In order to support this argument, Complainant has provided previous UDRP decisions, in which Respondent has found to have acted in bad faith. See Compl., at Attached Ex. N. Some of the cases listed are: Adorama, Inc. v. Private Registration Aktien Gesellschaft/Domain Admin and RetailMeNot,Inc. v. Domain Admin/Private Registrations Aktien Gesellschaft. Id. Adverse previous UDRP decisions indicate a pattern of bad faith under Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
Complainant reiterates that Respondent uses the disputed domain names to redirect Internet users to a website that provides links to third-party websites, some of which directly compete with Complainant’s business. See Compl., at Attached Ex. H. Complainant believes that this use disrupts Complainant’s business. The Panel finds that Respondent has acted in bad faith according to Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant maintains that Respondent uses the disputed domain name to redirect Internet users to third-party websites, through a variety of different hyperlinks on its resolving websites. See Compl., at Attached Ex. H. Complainant presumes that Respondent likely profits from the use of click through fees associated with these hyperlinks. Generally, panels have held that such conduct is indicative of bad faith under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Consequently, the Panel finds that Respondent’s behavior constitutes bad faith use and registration under Policy ¶ 4(b)(iv).
Complainant further argues that it is clear that Respondent had actual knowledge due to the obvious connection between Respondent’s misspelled domain names and the BLOOMINGDALES mark. Additionally, Complainant notes that Respondent was previously a member of Complainant’s affiliate program, indicating that Respondent would have had actual knowledge of Complainant and its rights in the BLOOMINGDALES mark. Given the totality of the circumstances, the Panel agrees with the Complainant that Respondent had actual knowledge of Complainant’s famous trademark registration. Therefore, it is clear that Respondent registered the disputed domain names in bad faith according to Policy ¶ 4(a)(iii).
Lastly, Complainant argues that Respondent’s typosquatting behavior is further evidence of bad faith under Policy ¶ 4(a)(iii). The disputed domain names appear to be simple misspellings of the BLOOMINGDALES mark. As such, Complainant believes that Respondent is attempting to capitalize on simple misspellings or keyboard typos made by Internet users. The Panel agrees with Complainant’s contention and finds that Respondent is typosquatting; therefore, the Panel finds that Respondent has acted in bad faith under 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 <bloomiingdales.com>, <bloomingdaels.com>, <bloomingdalles.com>, <bloomingdates.com> and <blooningdales.com> domain names transferred from the Respondent to the Complainant.
Kenneth L. Port, Panelist
Dated: September 16, 2015
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