Blue Nile Inc. v. Bin g Glu c/o G Design, no sale- building a/k/a Digi Real Estate Foundation c/o NA Na
Claim Number: FA0911001296190
Complainant is Blue Nile Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Bin g Glu c/o G Design, no sale-building a/k/a Digi Real Estate Foundation c/o NA Na (“Respondent”), Taiyuan.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <bluennile.com> and <luenile.com> registered with Communigal Communications Ltd. and <bluesnile.com> registered with Moniker.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically November 24, 2009; the National Arbitration Forum received a hard copy of the Complaint November 25, 2009.
On November 25, 2009, Moniker confirmed by e-mail to the National Arbitration Forum that the <bluesnile.com> domain name is registered with Moniker and that Respondent is the current registrant of the names. Moniker verified that Respondent is bound by the Moniker registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On December 31, 2009, Communigal Communications Ltd. confirmed by e-mail to the National Arbitration Forum that the <bluennile.com> and <luenile.com> domain names are registered with Moniker and that Respondent is the current registrant of the names. Communigal Communications Ltd. verified that Respondent is bound by the Moniker registration agreement and thereby has agreed to resolve domain-name disputes brought by third-parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 13, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 2, 2010, 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@bluennile.com, postmaster@bluesnile.com, and postmaster@luenile.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 8, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain names that Respondent registered, <bluennile.com>, <bluesnile.com>, <luenile.com>, are confusingly similar to Complainant’s BLUE NILE mark.
2. Respondent has no rights to or legitimate interests in the <bluennile.com>, <bluesnile.com>, <luenile.com> domain names.
3. Respondent registered and used the <bluennile.com>, <bluesnile.com>, <luenile.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Blue Nile Inc., is a leading provider of online ordering services in the field of diamonds, jewelry and watches. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the BLUE NILE and related marks (e.g., Reg. No. 2,450,117 issued May 8, 2001).
Respondent registered the <bluennile.com> and <bluesnile.com> domain names May 31, 2004 and the <luenile.com> domain name December 17, 2003. Respondent’s disputed domain names redirect to a website featuring generic links to third-party websites, some of which compete with Complainant’s business.
Respondent is a serial cybersquatter, who has been the respondent in at least six other UDRP proceedings in which the respective domain names were transferred to the Complainant. See, e.g., LegalZoom.com, Inc. v. Bin G Glu, FA 1258178 (Nat. Arb. Forum June 9, 2009); Hewlett-Packard Company v. Bin g Glu, FA 1248633 (Nat. Arb. Forum Apr. 22, 2009); VeriSign Inc. v. Bin g Glu/G Design, D2007-0421 (May 28, 2007).
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."
Given 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 will draw such inferences as 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
Paragraph 4(a) of the Policy requires Complainant to 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.
Preliminary Issue: Multiple Respondents
The Panel must first consider whether these proceedings have been properly instituted. In the instant proceedings, Complainant alleged that the entities that control the domains at issue are effectively controlled by the same person and/or entity. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that Respondent is operating under various asserted aliases. The National Arbitration Forum’s Supplemental Rule 4(f)(ii) requires a Panel to dismiss the Complaint in relation to the domain names it deems to be insufficiently linked to Respondent.
The <luenile.com> and <bluennile.com> domain names were registered by Bin g Glu and the <bluesnile.com> domain name was registered by Digi Real Estate Foundation. All three domain names were registered within a few months of each other, with <bluesnile.com> and <bluennile.com> being registered May 31, 2004, and <luenile.com> being registered December 17, 2003. Furthermore, Complainant contends that the <luenile.com> and <bluennile.com> domain names both redirect to <bluesnile.com>.
The Panel finds that Complainant presented sufficient evidence that the listed aliases controlling the disputed domain names are the same person or entity, or entities controlled by the same person or entity, so that the filing of this Complaint is justified and proper pursuant to Supplemental Rule 4(f)(ii). Thus, the Panel chooses to proceed with the instant proceedings on the merits.
Complainant owns multiple trademark registrations for the
BLUE NILE and related marks with the USPTO (e.g.,
Reg. No. 2,450,117 issued May 8, 2001).
The Panel finds that Complainant established rights in the BLUE NILE and
related marks for purposes of Policy ¶ 4(a)(i) through
its trademark registrations with the USPTO.
See Automotive Racing Products,
Inc. v. Linecom, FA 836787 (Nat. Arb. Forum Dec. 21, 2006) (finding that
the Complainant’s federal trademark registration established its rights in the
mark under Policy ¶ 4(a)(i)); see also
Complainant argues that Respondent’s disputed domain names are confusingly similar to Complainant’s BLUE NILE mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain names contain misspelled versions of Complainant’s BLUE NILE mark. The disputed domain name <bluennile.com> adds an extra “n,” deletes the space between the two words and the generic top-level domain (“gTLD”) “.com;” the disputed domain name <bluesnile.com> adds an “s,” deletes the space, and adds the gTLD “.com;” and the disputed domain name <luenile.com> deletes the initial “b” and the space between the words and adds the gTLD “.com.” The Panel finds that simple misspellings that merely introduce an additional letter or delete letters in Complainant’s mark fail to distinguish the Respondent’s disputed domain names and the Complainant’s mark. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). Additionally, neither the addition of a gTLD nor the deletion of the space between words prevents the disputed domain names from being confusingly similar to the Complainant’s mark. See Trip Network Inc. v. Alveira, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant in a Policy ¶ 4(a)(i) analysis and does not create a domain name distinguishable from Complainant’s mark); 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.”). Therefore, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s BLUE NILE mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain names. Once a Complainant makes a prima facie case, the burden of proof shifts to Respondent to demonstrate that it has rights to or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c). The Panel finds that Complainant made a prima facie case in these proceedings. Since Respondent failed to respond to the allegations against it, the Panel may assume that Respondent lacks any rights or legitimate interests in the disputed domain names. The Panel, however, elects to consider the evidence in the record in light of the Policy ¶ 4(c) factors to determine if the evidence suggests that Respondent has such rights or legitimate interests in the disputed domain names. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).
Complainant contends that Respondent is not commonly known by the disputed domain names. The Panel finds that the WHOIS information for the disputed domain names does not reflect that Respondent is commonly known by the disputed domain names. Therefore, pursuant to Policy ¶ 4(c)(ii), the Panel finds that Respondent is not commonly known by the disputed domain names. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. 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 respondent was commonly known by the disputed domain name).
Respondent’s disputed domain names redirect to a website featuring generic links to third-party websites, some of which compete with Complainant’s business. The Panel finds that Respondent’s use of the disputed domain names is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (holding that the respondent’s use of the <hpcanada.com> domain name to post links to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate non-commercial or fair use of the domain name); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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 contends that Respondent is capitalizing on a
common misspelling of Complainant’s BLUE NILE mark to misdirect Internet users
seeking Complainant’s online presence.
The Panel finds that this constitutes the practice of typosquatting,
which is evidence Respondent lacks rights and legitimate interests in the
disputed domain names under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Respondent has engaged in a pattern of cybersquatting as evidenced by several adverse UDRP proceedings against Respondent. See, e.g., LegalZoom.com, Inc. v. Bin G Glu, FA 1258178 (Nat. Arb. Forum June 9, 2009); Hewlett-Packard Company v. Bin g Glu, FA 1248633 (Nat. Arb. Forum Apr. 22, 2009); VeriSign Inc. v. Bin g Glu/G Design, D2007-0421 (May 28, 2007). Given Respondent’s pattern of registering domain names containing a third-party’s marks, as evidenced by prior UDRP proceedings, the Panel finds that this pattern of use supports findings of bad faith registration and use under Policy ¶ 4(b)(ii). Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting); see also Sony Kabushiki Kaisha v. Anderson, FA 198809 (Nat. Arb. Forum Nov. 20, 2003) (finding a pattern of registering domain names in bad faith pursuant to Policy ¶ 4(b)(ii) when the respondent previously registered domain names incorporating well-known third party trademarks).
Respondent’s disputed domain names redirect to a website containing links to third-party websites, some of which compete with Complainant. Such an activity clearly disrupts Complainant’s business, inasmuch as Internet users seeking Complainant’s products will be diverted to sites featuring competing products. The Panel finds that this disruption of Complainant’s business and diversion of Internet users to Complainant’s competitors shows bad faith registration and use under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Respondent’s misspelling of Complainant’s mark in the domain names to capitalize on common mistakes made when searching for Complainant’s mark is intended to attract Internet users seeking Complainant’s products. When the Internet users are diverted to Respondent’s website and then click on any of the third-party links, it is presumed that Respondent is compensated on a pay-per-click basis. The Panel finds that Respondent’s efforts to mislead Internet users and to divert Complainant’s business in order to receive commercial gain also permit findings of bad faith registration and use under Policy ¶ 4(b)(iv). Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel has previously concluded that Respondent is engaged in the practice of typosquatting through the use of the confusingly similar disputed domain names. The Panel finds this that standing alone, the practice of typosquatting supports findings of bad faith registration and use under Policy ¶ 4(a)(iii). See, e.g., Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form). Therefore, the Panel finds that Respondent had engaged in bad faith registration and use under Policy ¶ 4(a)(iii). See Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatologica.com> domain name was a “simple misspelling” of the complainant’s DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy ¶ 4(a)(iii)).
The Panel finds that Complainant satisfied the elements of ICANN 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 <bluennile.com>, <bluesnile.com>, and <luenile.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 22, 2010
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