The TJX Companies, Inc. v. Robert Stewart / HUSH IP LLC
Claim Number: FA1511001649805
Complainant is The TJX Companies, Inc. (“Complainant”), represented by Sam Gunn of Alston & Bird, LLP, Georgia, USA. Respondent is Robert Stewart / HUSH IP LLC (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tjxreward.com>, registered with Key-Systems GmbH.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 24, 2015; the Forum received payment on November 24, 2015.
On November 26, 2015, Key-Systems GmbH confirmed by e-mail to the Forum that the <tjxreward.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 December 3, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 23, 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@tjxreward.com. Also on December 3, 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 December 28, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq., 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 name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant has registered the TJX REWARDS mark with the likes of the United States Patent and Trademark Office (“USPTO”) (Registry No. 3,356,884, registered Dec. 18, 2007), demonstrating rights in the mark. Respondent’s <tjxreward.com> domain name is confusingly similar to the mark as it incorporates the TJX REWARDS mark, while eliminating the space between words and the “S,” and merely appends the generic top-level domain (“gTLD”) “.com.”
ii) Respondent has no rights or legitimate interests in the disputed <tjxreward.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Respondent obtained consent to register any form of the TJX REWARDS mark in a domain. Further, Respondent has operated the <tjxreward.com> domain name with no bona fide offering of goods or services or for any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). Instead, Respondent includes hyperlinks on the resolving page of the disputed domain name which redirect Internet users to third-party websites which compete with Complainant’s business offerings. Respondent presumably profits commercially from Internet users’ interaction with such hyperlinks.
iii) Respondent has registered and used the disputed <tjxreward.com> domain name in bad faith. By including competing hyperlinks on the resolving website, presumably for commercial gain, Respondent has demonstrated behavior explicitly proscribed by the language of Policy ¶ 4(b)(iv). Further, because Respondent’s use conjures an association with Complainant by including such competing hyperlinks, it follows that Respondent registered and use the <tjxreward.com> domain name with actual knowledge of the TJX REWARDS mark and Complainant’s rights therein.
B. Respondent
Respondent did not submit a Response in this proceeding. The Panel notes that the disputed domain name was registered on July 19, 2011.
Complainant established that it had rights in the mark contained in the disputed domain name. The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed 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 has registered the TJX REWARDS mark with the USPTO (Registry No. 3,356,884, registered Dec. 18, 2007), and argues its registration demonstrates rights in the mark. Panels have vigorously agreed, and this Panel also agrees, that a valid USPTO registration of a mark confers rights under Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Additionally, Complainant argues that Respondent’s <tjxreward.com> domain name is confusingly similar to the mark as it incorporates the TJX REWARDS mark, while eliminating the space between words and the “S,” and merely appends the generic top-level domain (“gTLD”) “.com.” Panels have agreed that such changes are de minimis and therefore cannot overcome a finding of confusing similarity per Policy ¶ 4(a)(i). See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Accordingly, this Panel agrees that Respondent’s <tjxreward.com> domain name is confusingly similar to the TJX REWARDS mark under Policy ¶ 4(a)(i).
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); 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 argues that Respondent has no rights or legitimate interests in the disputed <tjxreward.com> domain name. Complainant contends that Respondent is not commonly known by the disputed domain name, nor has Respondent obtained consent to register any form of the TJX REWARDS mark in a domain. Complainant cites AutoZone Parts, Inc. and ALLDATA LLC v. Above.com Domain Privacy, FA 1522850 (Nat. Arb. Forum Dec. 2, 2013), in which the panel reportedly found the respondent was not commonly known by a domain name “where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized respondent to register a domain name containing its registered mark.” Here, the Panel agrees that, while Respondent has failed to submit a Response and therefore rebut any claims made under this prong of the Policy, the evidence on record suggests that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Further, Complainant asserts that Respondent has operated the <tjxreward.com> domain name with no bona fide offering of goods or services or for any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). Instead, Respondent seemingly includes hyperlinks on the resolving page of the disputed domain name which redirect Internet users to third-party websites which compete with Complainant’s business offerings (links include: “TJX Rewards Credit Card,” “TJX Credit Cards,” and “TJX Reward Credit Card”). Respondent presumably profits commercially from Internet users’ interaction with such hyperlinks. Panels have found such inclusions to fail in indicating a respondent’s rights or legitimate interests in a disputed domain name. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). Accordingly, this Panel finds that Respondent has not demonstrated any bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Complainant urges that Respondent has registered and used the disputed <tjxreward.com> domain name in bad faith. By including competing hyperlinks on the resolving website, presumably for commercial gain, Complainant argues that Respondent has demonstrated behavior explicitly proscribed by the language of Policy ¶ 4(b)(iv). It is recalled that Respondent seemingly includes hyperlinks on the resolving page of the disputed domain name which redirect Internet users to third-party websites which compete with Complainant’s business offerings. In Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), the panel stated, “Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’” This Panel finds the case at hand analogous to Associated Newspapers Ltd., and accordingly finds that Respondent has registered and used the <tjxreward.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Further, Complainant also contends that in light of the fame and notoriety of Complainant's TJX REWARDS mark and Respondent’s use of the disputed domain name to display competing links, it is inconceivable that Respondent could have registered the <tjxreward.com> domain name without actual knowledge of Complainant's rights in the mark. The Panel infers from the manner of use of the disputed domain name by Respondent that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tjxreward.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: December 30, 2015
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