Bed Bath & Beyond Procurement Co. Inc. n/k/a Liberty Procurement Co. Inc. and its sister corporation BuyBuy Baby, Inc. v. NGUYEN THI NGUYET / ADB
Claim Number: FA1801001768088
Complainant is Bed Bath & Beyond Procurement Co. Inc. n/k/a Liberty Procurement Co. Inc. and its sister corporation BuyBuy Baby, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is NGUYEN THI NGUYET / ADB (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <buybabystore.com>, registered with eNom, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 22, 2018; the Forum received payment on January 22, 2018.
On January 22, 2018, eNom, LLC confirmed by e-mail to the Forum that the <buybabystore.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, 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 January 25, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 14, 2018 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@buybabystore.com. Also on January 25, 2018, 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 February 16, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant registered the BUY BUY BABY mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,171,479, registered Jul. 7, 1998). Respondent’s <buybabystore.com>[1] domain name is confusingly similar to Complainant’s mark as it removes one of the words “buy” and adds the descriptive term “store” as well as the “.com” generic top-level-domain (“gTLD”) to Complainant’s mark.
2. Respondent has no rights or legitimate interests in the <buybabystore.com> domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark.
3. Respondent also does not use the domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to divert Internet users from Complainant’s website to Respondent’s competing website for Respondent’s commercial benefit.
4. Respondent registered and uses the <buybabystore.com> domain name in bad faith. Respondent disrupts Complainant’s business via the sale of products that compete with Complainant. Respondent intentionally attracts Internet users seeking Complainant to Respondent’s resolving website for presumed commercial gain. Respondent registered the domain name with false WHOIS information.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Multiple Complainants
There are three Complainants in this matter: Bed Bath & Beyond Procurement Co. Inc. (n/k/a Liberty Procurement Co. Inc.); BuyBuy Baby, Inc.; and Bed Bath & Beyond Inc. Both Bed Bath & Beyond Procurement Co. Inc. (n/k/a Liberty Procurement Co. Inc.) and BuyBuy Baby, Inc. are wholly owned subsidiaries of Bed Bath & Beyond Inc. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006). Accordingly, the Panel finds sufficient nexus among the Complainants and therefore will treat them all as a single entity in this proceeding.
Complainant holds trademark rights for the BUY BUY BABY mark. Respondent’s domain name is confusingly similar to Complainant’s BUY BUY BABY mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <buybabystore.com> domain name and that Respondent registered and uses the 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(f), 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 (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 rights in the BUY BUY BABY mark based upon registration with the USPTO (e.g. Reg. No. 2,171,479, registered Jul. 7, 1998). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (“There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark.”). Accordingly, the Panel finds that Complainant has established rights in the BUY BUY BABY mark.
Next, Complainant argues that Respondent’s <buybabystore.com> domain name is confusingly similar to Complainant’s mark as it removes one of the words “buy” and adds the descriptive term “store” as well as the “.com” gTLD to Complainant’s mark. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See The Pros Closet, Inc. v. Above.com Domain Privacy, FA 1616518 (Forum Jun. 3, 2015) (finding confusing similarity where the <proscloset.com> domain name merely omitted the first term (“the”) from Complainant’s THE PROS CLOSET mark, eliminated spacing between words, and added the “.com” gTLD.); see also YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum Aug. 10, 2016) (finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel therefore finds that the <buybabystore.com> domain name is confusingly similar to the BUY BUY BABY mark under Policy ¶4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <buybabystore.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends Respondent has no rights or legitimate interests in the <buybabystore.com> domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). The WHOIS identifies “NGUYEN THI NGUYET / ADB” as the registrant. Complainant asserts. Without contradiction, that no evidence exists to show that Respondent has ever been legitimately known by the BUY BUY BABY mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum Jun. 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant also alleges, again without contradiction, that Respondent has never been legitimately affiliated with Complainant, has never been known by the <buybabystore.com> domain name prior to its registration, and Complainant has not given Respondent permission to use the domain name. Accordingly, the Panel agrees that Respondent is not commonly known by the <buybabystore.com> domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent uses the <buybabystore.com> domain name to offer services in direct competition with Complainant. Using a domain name that is confusingly similar to a mark in which a complainant has rights that resolves to a webpage that directly competes with a complainant fails to provide a bona fide offering of goods or services. See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum Feb. 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use); see also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant asserts, without contradiction, that Respondent uses the <buybabystore.com> domain name to divert Internet users from Complainant’s website to Respondent’s competing website for Respondent’s commercial benefit via the sale of baby-related items in direct competition with Complainant and Complainant’s business. The Panel therefore findsa that Respondent has failed to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
First, Complainant alleges Respondent disrupts Complainant’s business via the sale of products that compete with Complainant. Use of a domain name which incorporates the mark of another to sell products in direct competition with a complainant or a complainant’s business will support a finding that the respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iii). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)). The record shows that Respondent offers competing baby-related items for sale on the resolving website of the <buybabystore.com> domain name. The Panel agrees with Complainant and finds Respondent registered and uses the <buybabystore.com> domain name in bad faith per Policy ¶ 4(b)(iii).
Next, Complainant contends Respondent intentionally attracts Internet users seeking Complainant to Respondent’s resolving website for presumed commercial gain. Complainant contends, without contradiction, Respondent registered the confusingly similar domain name and appropriated Complainant’s BUY BUY BABY marks in order to commercially gain from the confusion created. Use of a complainant’s mark to host a confusingly similar domain name for the purpose of passing off and commercially gaining from the confusion demonstrates bad faith pursuant to Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). The Panel agrees with Complainant and finds Respondent registered and uses the <buybabystore.com> domain name in bad faith per Policy ¶ 4(b)(iv).
The Panel finds Complainant has satisfied 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 <buybabystore.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 27, 2018
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