BED BATH & BEYOND PROCUREMENT CO. Inc. (N/K/A LIBERTY PROCUREMENT CO. INC.) and ITS SISTER CORPORATION BUY BUY BABY, Inc. (BOTH WHOLLY OWNED SUBSIDIARIES OF BED BATH & BEYOND INC.) v. shaoxuan li / lishaoxuan
Claim Number: FA1902001829423
Complainant is BED BATH & BEYOND PROCUREMENT CO. Inc. (N/K/A LIBERTY PROCUREMENT CO. INC.) and ITS SISTER CORPORATION BUY BUY BABY, Inc. (BOTH WHOLLY OWNED SUBSIDIARIES OF BED BATH & BEYOND INC.) (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is shaoxuan li / lishaoxuan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <buybuybabychina.com>, registered with PacificDomains, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 11, 2019; the Forum received payment on February 11, 2019.
On February 12, 2019, PacificDomains, LLC confirmed by e-mail to the Forum that the <buybuybabychina.com> domain name is registered with PacificDomains, LLC and that Respondent is the current registrant of the name. PacificDomains, LLC has verified that Respondent is bound by the PacificDomains, 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 February 15, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 7, 2019 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@buybuybabychina.com. Also on February 15, 2019, 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 March 8, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant provides new and expectant parents all of their needs to welcome their baby into their lives including clothes, strollers and other items use with infants and toddlers.
Complainant has rights in the BUY BUY BABY mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <buybuybabychina.com> domain name is identical or confusingly similar to Complainant’s mark as it merely deletes the space between the terms of Complainant’s mark while adding the geographical term “china” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <buybuybabychina.com> domain name. Respondent is not commonly known by the at-issue domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed 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 redirect users to a website featuring links to Chinese gambling sites unrelated to the goods or services offered by Complainant.
Respondent registered and uses the <buybuybabychina.com> domain name in bad faith. Respondent holds registrations for other domain names that incorporate third-party trademarks. Further, Respondent intentionally attempts to attract Internet users to its website by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to commercially benefit by offering links to unrelated goods or services.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the BUY BUY BABY mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the BUY BUY BABY trademark.
Respondent uses the at-issue domain name to provide links to third party websites featuring gambling.
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.”).
Preliminary Issue: Multiple Complainants
In this proceeding there are three named complainants: Bed Bath & Beyond Procurement Co. Inc. n/k/a Liberty Procurement Co. Inc., BuyBuy Baby, Inc., and 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.”
Liberty Procurement Co. Inc. and BuyBuy Baby, Inc. are both wholly owned subsidiaries of Bed Bath & Beyond Inc. The Panel therefore finds that the three complainants (herein referred to collectively as Complainant) have a sufficient nexus to each other and to the matters complained such that they may be treated as if a single entity. Notably, there is no objection by Respondent to the three named Complainants proceeding together as one. See Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003) (treating the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names); see also, Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004) (finding a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark).
The at-issue domain name is confusingly similar to a trademark in which the Complainant has rights.
Complainant establishes trademark rights in its BED BATH & BEYOND mark by evidencing the mark’s registration with the USPTO. Thereby, Complainant demonstrates rights in the BED BATH & BEYOND mark under Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
The at-issue <buybuybabychina.com> domain name is confusingly similar to Complainant’s BED BATH & BEYOND mark. Respondent’s domain name contains Complainant’s entire BUY BUY BABY trademark less its spaces, followed by the geographical locator “china,” all followed by the top level domain name “.com.” The differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish on from the other for the purposes of Policy ¶ 4(a)(i). Therefore the Panel concludes that Respondent’s at-issue domain name is confusingly similar to Complainant’s BED BATH AND BEYOND mark under the Policy. See General Motors LLC v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1656166 (Forum Feb. 12, 2016) (finding respondent’s <gm-uzbekistan.com> domain name confusingly similar to complainant’s GM mark as the addition of the geographic term “uzbekistan” is inconsequential to a Policy ¶ 4(a)(i) analysis); see also Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “shaoxuan” and the record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by the <buybuybabychina.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <buybuybabychina.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (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).
Respondent’s confusingly similar <buybuybabychina.com> domain name ultimately addresses third party gambling websites wholly unrelated to Complainant. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below without limitation, bad faith circumstances are present from which the Panel concludes that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
First, Respondent holds additional domain names incorporating third-party trademarks including domain names such as <bddcentral.com> and <silkroutestore.com>. Respondent’s proclivity for registering the trademarks of others in domain names suggest Respondent’s bad faith in the instant dispute pursuant to Policy ¶ 4(b)(ii). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)).
Further, Respondent’s <buybuybabychina.com> domain name is used to confuse or mislead the public in to believing that the domain name, and thus its related content and/or links, are sponsored or endorsed by Complainant, when they are not. Such use indicates Respondent’s bad faith under Policy ¶ 4(b)(iv). See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <buybuybabychina.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 11, 2019
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