National Arbitration Forum

 

DECISION

 

Barnesandnoble.com LLC v. Your One Stop Web Shop

Claim Number: FA0603000670175

 

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 (“Respondent”), 425 N 500 E Lot 133, Anderson, IN 46017.

 

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <barnsandnoblessite.com>, <barnesandnobles.name>, and <barnesandnobles.ws>, 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 <barnsandnoblessite.com>, <barnesandnobles.name>, <barnesandnobles.ws> 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@barnsandnoblessite.com, postmaster@barnesandnobles.name, and postmaster@barnesandnobles.ws 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 Supp. 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.

 

Procedural Issue

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 <barnsandnoblessite.com>, <barnesandnobles.name>, and <barnesandnobles.ws> domain names are confusingly similar to Complainant’s BARNESANDNOBLE.COM mark.

 

2.      Respondent does not have any rights or legitimate interests in the <barnsandnoblessite.com>, <barnesandnobles.name>, and <barnesandnobles.ws> domain names.

 

3.      Respondent registered and used the <barnsandnoblessite.com>, <barnesandnobles.name>, and <barnesandnobles.ws> domain names in bad faith.

 

B. Respondent

Respondent, Your One Stop Web Shop, 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 expense.

 

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 c/o Tim Trueblood, FA 670171.  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.

 

Identical and/or Confusingly Similar

Complainant asserts that it 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 Respondent’s <barnesandnoblessite.com>, <barnesandnobles.name>, and <barnesandnobles.ws> domain names are confusingly similar to Complainant’s registered mark.  Each of Respondent’s disputed domain names features Complainant’s entire BARNES & NOBLE mark but replaces the ampersand with the word “and.”  Furthermore, each of the disputed domain names adds the letter “s” to Complainant’s mark while Respondent’s <barnesandnoblessite.com> domain name adds the generic term “site.”  Replacing an ampersand, which is not reproducible in domain names, fails to properly distinguish Respondent’s domain names from Complainant’s mark.  See Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding that the <wrightandlato.com> domain name is identical to the complainant’s WRIGHT & LATO mark, because the ampersand symbol (&) is not reproducible in a URL); see also PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (noting that PG&E’s home web page is found at <pge.com> because the ampersand symbol is not reproducible in a domain name).  Furthermore, neither the addition of the letter “s” nor the addition of the generic term “site” is sufficient to distinguish a domain name from a registered mark pursuant to Policy ¶ 4(a)(i).  See 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); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).

 

Rights or Legitimate Interests

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 incorporates Complainant’s BARNESANDNOBLE.COM mark.  Moreover, Respondent is not commonly known by the <barnesandnoblessite.com>, <barnesandnobles.name>, or <barnesandnobles.ws> 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 Respondent’s <barnesandnobles.name> and <barnesandnobles.ws> domain names are typosquatted versions of Complainant’s mark and in and of itself is 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.

Registration and Use in Bad Faith

Complainant alleges that the <barnesandnoblessite.com>, <barnesandnobles.name>, or <barnesandnobles.ws> 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. Elias Skander, FA135598 (Nat. Arb. Forum Jan. 7, 2002) (typosquatting for profit under affiliate program 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.  ICANN UDRP ¶ 4(b)(i).  See Expedia, Inc. v. Webpagesa2z.com, FA 610151 (Nat. Arb. Forum Jan. 30, 2006).  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 <barnsandnoblessite.com>, <barnesandnobles.name>, and <barnesandnobles.ws> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: May 3, 2006

 

 

 

 

 

 

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