Barnesandnoble.com LLC v. Your One Stop Web
Shop c/o Tim Trueblood
Claim Number: FA0603000670171
PARTIES
Complainant is Barnesandnoble.com LLC (“Complainant”), represented by Kevin R. Haley, of Brann & Isaacson, 184 Main Street, PO Box 3070, Lewiston, ME 04243-3070. Respondent is Your One Stop Web Shop c/o Tim Trueblood (“Respondent”), 425 N 500 E Lot 133, Anderson, IN 46017.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <barnesandnobles.info> and <barnesandnobles.biz>, registered with Go Daddy Software Inc.
PANEL
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 30, 2006; the National Arbitration Forum received a
hard copy of the Complaint on April 3, 2006.
On March 30, 2006, Go Daddy Software Inc confirmed by e-mail to the
National Arbitration Forum that the <barnesandnobles.info> and <barnesandnobles.biz> domain names are registered with Go
Daddy Software Inc and that the Respondent is the current registrant of the
name. Go Daddy Software Inc has
verified that Respondent is bound by the Go Daddy Software Inc registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On April 11, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of May 1, 2006 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts, and to postmaster@barnesandnobles.info and
postmaster@barnesandnobles.biz by e-mail.
An electronic copy of the Response was received on April 12, 2006. The Forum never received a hard copy of the
Response. Thus, the Forum does not
consider this Response to be in compliance with ICANN Rule #5 (a). By email of April 12, 2006 at 10:34 AM, the
Forum notified Respondent that the document did not comply with ICANN, UDRP or
Forum requirements of Rule 5 and Supplemental Rule 5. The Forum inquired whether Respondent intended the document to be
his complete and official Response. By
email of April 12, 2006 at 10:52 AM, Respondent said “This is all I
have to say. . .” and he explained his position that he “paid his hard earned
money” for the domain names in question.
Although the Forum received Respondent’s electronic
submission in a timely manner, Respondent failed to submit a hard copy. However, the Panel in its discretion will
consider Respondent’s submissions. See
Strum v. Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002)
(“[R]uling a Response inadmissible because of formal deficiencies would be an
extreme remedy not consistent with the basic principles of due
process. . ."); see also J.W. Spear & Sons PLC v. Fun
League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where
Respondent submitted a timely Response electronically, but failed to submit a
hard copy of the Response on time, “[t]he Panel is of
the view that given the technical nature of the breach and the need to resolve
the real dispute between the parties that this submission should be allowed and
given due weight”).
On April 19, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed the Honorable Charles K. McCotter, Jr.
(Ret.) as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant, Barnesandnoble.com LLC, makes the following assertions:
1. Respondent’s <barnesandnobles.info> and <barnesandnobles.biz> domain names are confusingly similar to Complainant’s BARNESANDNOBLE.COM mark.
2. Respondent does not have any rights or legitimate interests in the <barnesandnobles.info> and <barnesandnobles.biz> domain names.
3.
Respondent registered and used the <barnesandnobles.info> and <barnesandnobles.biz> domain names in bad faith.
B. Respondent
Respondent, Your One Stop Web Shop c/o Tim Trueblood, contends that he
has put time and money in developing the websites as part of Complainant’s
affiliate program and that Complainant is not entitled to the domain names
without compensating him for his time and expenses.
C. Additional Submissions
On April 12, 2006, at 11:45 AM Respondent emailed the Forum that he had
received an offer on the domain name <barnesandnobles.biz>. On April 12, 2006 at 11:35 PM Respondent
submitted an email claiming that he should be able to use the domain
names. He says that after he was fired
as an affiliate, he used the domain name to promote someone else’s web
site. On April 13, 2006 at 9:53 AM,
Respondent submitted his results as a Barnes and Noble affiliate from
01/02/2002 to 04/12/2006. At 9:56 AM on
April 13, 2006, Respondent submitted his sales results as an affiliate showing
no sales.
The parties are involved in another proceeding before the Forum
concerning other domain names. Barnesandnoble.com LLC v. Your One Stop Web
Shop, FA 670175. Respondent has
submitted identical responses in both proceedings.
FINDINGS
Barnesandnoble.com LLC is a Delaware limited liability company headquartered in New York, New York. It is a wholly-owned subsidiary of Barnes & Noble, Inc. For purposes of this Decision, the two entities will be referred to collectively as “B & N.” B & N has long been famous as a retailer of books, magazines, software and related merchandise. B & N markets and sells its goods through retail outlets and its Internet site. B & N holds federal trademark registrations for the mark BARNESANDNOBLE.COM, in connection with a variety of goods and services, including online retail bookstore services featuring books, magazines, software and giftware items. In addition, B & N owns numerous other federal trademark registrations using variations of the mark “Barnes & Noble,” “B&N,” and “Barnes and Noble.”
B & N uses its marks in interstate and international commerce in connection with a wide variety of goods and services, including retail and online book store services, educational services, entertainment services and computer services. It also provides a wide range of goods including, but not limited to, books, magazines, course materials, software and giftware items. B & N does business around the world through its website <barnesandnoble.com>.
As part of its marketing strategy, B & N maintains an affiliate program through its website. Potential affiliates may enter the program through B & Ns’ online application process. Under the affiliate arrangement, third parties receive compensation for referring consumers to B & Ns’ Internet site. Affiliates are compensated by B & N based on the number of consumers that enter <barnesandnoble.com> directly from the affiliate’s Internet site. Affiliates are required to execute an affiliate agreement (“Affiliate Agreement”). The Affiliate Agreement specifically prohibits any affiliate from creating or maintaining an Internet site with “uniform resource locators (URLs), domain names or other identifiers” that:
Contain any Barnes & Noble.com Mark or any derivative thereof without the express written consent of Barnes & Noble.com. Such Barnes & Noble.com Marks and derivatives include without limitation “barnes,” “noble,” “barnesandnoble.com,” “bn,” and “bn.com.” Furthermore, Affiliate Partner may not purchase or otherwise contract with third parties to exploit any Barnes & Noble.com Mark or derivative thereof for the purpose of causing the Affiliate Partner Site to appear as a search result or for any other reason.
Affiliate Agreement, Section 6(c)(iv). Affiliates are also prohibited from creating an Internet site that copies the “look and feel” of the B & N site or which contains any content of the B & N site. Id. At §6(c)(i). Respondent is a former participant in B & N’s affiliate program.
B & N claims that Respondent has breached two terms of the Affiliate Agreement by registering and using the disputed domain names comprised of common misspellings of B & N’s famous trademarks.
Customers who attempt to navigate to one of these URL’s are routed through Respondent’s sites, to the official Barnesandnoble.com site. As an affiliate, Respondent had the potential to recover a fee for each such transaction.
Upon learning of Respondent’s activities, B & N terminated its Affiliate Agreement with Respondent. B & N also sent a letter to Respondent, on March 22, 2006 demanding that Respondent immediately cease its activity and that Respondent transfer the domain names at issue to B & N.
Respondent refused to transfer the domain names. Instead, he requested payment in exchange for the transfer of the domain names to B & N in a sum of between $75,000 and $110,000.
The Respondent has employed a classic cybersquatting technique: relying on common misspellings of a trademark in order to capture web users who inadvertently type the wrong keystrokes or who add a common term to the domain name (commonly referred to as “typosquatting”).
B & N has neither authorized Respondent to use its well-known BARNESANDNOBLE.COM marks, nor to register the domain names at issue. In fact, the Affiliate Agreement entered into by Respondent expressly prohibits use of any domain name that incorporates Complainant’s trademarks. Nor has Respondent ever been commonly known as barnesandnobles or offered any goods or services under those marks or tradenames.
Respondent procured and used these domain addresses as a means to siphon traffic otherwise headed for the legitimate B & N site, for the purpose of collecting affiliate fees. Prior to the date that B & N demanded that Respondent cease and desist from its activities, Respondent’s site provided no information, goods or services. In fact, consumers were hardly aware that they have entered a third party site, as they were immediately routed to the official B & N site. Nowhere on Respondent’s sites was there any indication of the source of the service provided, any actual offer of goods or services or any mention of Respondent’s name or services. Recently, Respondent changed the content of its websites, likely as a result of the cease and desist letter sent by B&N.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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.
Complainant has established rights in the BARNESANDNOBLE.COM mark by
registering it with the United States Patent and Trademark Office (“USPTO”)
(Reg. No. 2,463,172 issued June 26, 2001).
See
Am. Online, Inc. v. Thomas P. Culver Enters.,
D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration
with the USPTO creates a presumption of rights in a mark); see also Innomed Tech., Inc. v. DRP
Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes
Complainant's rights in the mark.”).
Complainant contends that the <barnesandnobles.info> and <barnesandnobles.biz> domain names are confusingly similar to Complainant’s BARNESANDNOBLE.COM mark because the domain names incorporate the dominant features of Complainant’s mark, omit the generic top-level domain “.com,” and add letter “s,” and the generic top-level domains “.info” and “.biz.” Such minor alterations to Complainant’s registered mark are insufficient to negate the confusingly similar aspects of Respondent’s domain names pursuant to Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Nat’l Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to the complainant’s NATIONAL GEOGRAPHIC mark).
The Panel finds that Policy ¶
4(a)(i) has been satisfied.
Once Complainant makes a prima facie case for Policy ¶ 4(a)(ii), the burden shifts to Respondent to establish rights or legitimate interests in the disputed domain names. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that the respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once the complainant asserts that the respondent does not have rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).
Complainant contends
that Respondent is using the confusingly similar domain names to operate websites, which link Internet users to Complainant’s
own site, resulting in Respondent’s profit through the collection of
click-through fees. Although Respondent
was originally a part of Complainant’s affiliate program, Complainant contends
that Respondent’s use of misspelled variations of Complainant’s mark to
improperly profit at Complainant’s expense is in violation of the affiliate
program agreement. Respondent’s use of
the disputed domain names to divert consumers attempting to reach B
& N’s website and to collect affiliate fees to which it is not entitled is neither a bona fide offering of goods
or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or
fair use pursuant to Policy ¶ 4(c)(iii).
See Sports Auth. Mich., Inc. v. Jablome, FA 124861 (Nat.
Arb. Forum Nov. 4, 2002) (finding
that by signing up for the complainant’s affiliate program upon registering the
domain name, which was a misspelling of the complainant’s mark, the respondent
intended to use the domain name to generate profit at the complainant’s
expense, thereby evidencing a lack of rights and legitimate interests in the
domain name under Policy ¶¶ 4(c)(i) and (iii));
see also Sports Auth. Mich., Inc. v. Domhold Co., FA 135011 (Nat.
Arb. Forum Jan. 9, 2003) (finding that registering a domain name which differs
by one letter from the complainant’s commercial website, and using that domain
name to redirect Internet consumers to the complainant’s website as a part of
the complainant’s affiliate program is not a bona fide offering of goods
or services nor a noncommercial use of the domain name).
Respondent is not authorized or licensed to register or use domain names that incorporate Complainant’s BARNESANDNOBLE.COM mark. Moreover, Respondent is not commonly known by the <barnesandnobles.info> or <barnesandnobles.biz> domain name, therefore, Respondent does not have rights or legitimate interests in the domain names pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) “to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail”); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where a respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent attempted
to sell the disputed domain name registrations to Complainant for amounts that
far exceeded Respondent’s out of pocket costs.
Respondent’s willingness to dispose of the disputed domain names is
further evidence of Respondent’s lack of rights or legitimate interests in the
disputed domain names pursuant to Policy ¶
4(a)(ii). See Am. Nat’l Red Cross v. Domains, FA
143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and
legitimate interests in the domain name is further evidenced by Respondent’s
attempt to sell its domain name registration to Complainant, the rightful
holder of the RED CROSS mark.”); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083
(Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests
where the respondent registered the domain name with the intention of selling
its rights).
Moreover, Respondent’s domain names are typosquatted versions of Complainant’s mark and are evidence of a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that the respondent’s <wwwdinersclub.com> domain name, a typosquatted version of the complainant’s DINERS CLUB mark, was evidence in and of itself that the respondent lacks rights or legitimate interests in the disputed domain name vis á vis the complainant); see also Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that the <barnesandnobles.info> and <barnesandnobles.biz> domain names are confusingly similar
to Complainant’s BARNESANDNOBLE.COM mark. Moreover, Complainant contends that
Respondent commercially benefits when Internet users searching under
Complainant’s mark are diverted to Respondent’s commercial websites. Respondent is capitalizing on the
confusingly similar domain names to benefit from the valuable goodwill that
Complainant has established in its mark.
Thus, Respondent registered and used the domain names in bad faith
pursuant to Policy ¶ 4(b)(iv). See
G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum
Nov. 21, 2002) (finding that the respondent registered and used the domain name
in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the
confusingly similar domain name to attract Internet users to its commercial
website); see also Am. Online,
Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000)
(finding bad faith where the respondent registered and used an infringing
domain name to attract users to a website sponsored by the respondent).
The registration and use of a confusingly similar domain name for the purpose of collecting affiliate fees has been held to satisfy the requirement of bad faith. See Expedia, Inc. v. Webpagesa2z.com, FA 610151 (Nat. Arb. Forum, Jan. 30, 2006) (use of website to garner click through fees in affiliate program is registration and use in bad faith); see also The Sports Auth. Mich., Inc. v. Skander, FA 135598 (Nat. Arb. Forum Jan. 7, 2002) (typosquatting for profit under an affiliate program is not a legitimate interest in domain).
Respondent has continued to hold
the domain names and refused to transfer them to B & N. In response to B & N’s request that he
do so, Respondent communicated to B & N his expectation that the price for
transfer would be $75,000 to $110,000.
Bad faith can also be demonstrated by registrant’s demand for amounts
significantly in excess of its out-of-pocket costs in connection with the
transfer of the domain to the trademark holder. Policy ¶ 4(b)(i). See
Expedia, supra. Respondent’s
attempt to sell the disputed domain name registration further evidences
Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik
Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the
respondent offered domain names for sale); see also Neiman
Marcus Group, Inc. v. AchievementTec, Inc.,
FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to
sell the domain name for $2,000 sufficient evidence of bad faith registration
and use under Policy ¶ 4(b)(i)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <barnesandnobles.info>
and <barnesandnobles.biz> domain names be TRANSFERRED from
Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: May 3, 2006
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