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. David Webb
Claim Number: FA1306001507603
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 David Webb (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bdebathandbeyond.com>, <bedbathandbeyodn.com>, <bedbathandbwyond.com>, <bedbatjandbeyond.com>, <bedbtahandbeyond.com>, and <befbathandbeyond.com> registered with ENOM, INC..
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 National Arbitration Forum electronically on June 28, 2013; the National Arbitration Forum received payment on June 28, 2013.
On July 1, 2013, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <bdebathandbeyond.com>, <bedbathandbeyodn.com>, <bedbathandbwyond.com>, <bedbatjandbeyond.com>, <bedbtahandbeyond.com>, and <befbathandbeyond.com> domain names are registered with ENOM, INC. and that Respondent is the current registrant of the names. ENOM, INC. has verified that Respondent is bound by the ENOM, INC. 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 July 1, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 22, 2013 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@bdebathandbeyond.com, postmaster@bedbathandbeyodn.com, postmaster@bedbathandbwyond.com, postmaster@bedbatjandbeyond.com, postmaster@bedbtahandbeyond.com, postmaster@befbathandbeyond.com. Also on July 1, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 24, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 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
Complainant contends as follows:
Complainant owns the BED BATH & BEYOND mark through its trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,712,392, registered September 1, 1992).
Complainant uses the BED BATH & BEYOND mark in connection with online, retail store, and mail order services featuring linen products, home furnishings, toys, books, furniture, and kitchen appliances, as well as other household appliances and accessories. Complainant operates a chain of domestic merchandise retail stores across the United States, Puerto Rico, and Canada. Complainant has spent thousands of dollars in advertisement and promotion of the BED BATH & BEYOND mark on television, print media, and the Internet.
The disputed domain names are confusingly similar to the BED BATH & BEYOND mark as the disputed domain names merely adds the generic-top level domain name (“gTLD”) “.com,” and differ only by a single character from the mark.
Respondent has not been commonly known by the disputed domain as demonstrated by the WHOIS record, which identifies the registrant as “David Webb.” Further, Complainant has not authorized Respondent’s use of the mark. Respondent is using the disputed domain names to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Respondent presumably receives pay-per-click fees from the linked websites.
Respondent is a recalcitrant, serial cybersquatter as evidenced by prior UDRP decisions against Respondent. Further, Respondent appears to hold other domain names, not presently in dispute, which appear to be straightforward examples of typosquatting. Respondent disrupts Complainant’s business as the links displayed on the resolving pages promote products that compete with Complainant. Respondent’s bad faith is shown by the Respondent using the disputed domain names in connection with generating revenue as a click-through website. Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns a USPTO registered trademark for BED BATH & BEYOND.
Respondent is not affiliated with Complainant and had not been authorized to use the BED BATH & BEYOND mark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired trademark rights in BED BATH & BEYOND.
Respondent has engaged in a pattern of bad faith registration and use of others’ trademarks in domain names.
Respondent is paid a click through fee when Internet users navigate to one of the Respondent’s domain names. Such users are redirected to a website featuring generic pay-per-click links to third-party websites, some of which directly compete with Complainant’s business.
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(e), 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 (Nat. Arb. 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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the BED BATH & BEYOND mark with the USPTO sufficiently demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i)”).
Each of the at-issue domain names is confusingly similar to the BED BATH & BEYOND mark. The at-issue domain names eliminate the spaces in Complainant’s mark, add the generic-top level domain name “.com,” replace the ampersand “&” in Complainant’s mark with the word “and,” and then alter Complainant’s mark by one or a few characters. In essence the at-issue domain names are nothing less than intentional misspellings of Complainant’s trademark and are not materially distinguishable therefrom for the purposes of Policy ¶4(a)(i). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); see also 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 Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); see also Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (holding that the respondent’s disputed domain names were confusingly similar to the complainant’s mark because the disputed domain names were common misspellings of the mark involving keys that were adjacent to the current keys comprising the complainant’s mark).
Respondent lacks both rights and legitimate interests in respect of each of the at-issue domain names. 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 any of the domain names.
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 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and since as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in any of the at-issue domain names, Complainant’s prima facie showing acts conclusively.
WHOIS information identifies “David Webb” as the at-issue domain names’ registrant. Moreover, the record before the Panel contains no evidence that suggests Respondent is otherwise commonly known by any of the domain names. The Panel thus concludes that Respondent is not commonly known by any of the at-issue domain names for the purposes of Policy ¶ 4(c)(ii). See 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 the respondent was commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent is using the disputed domain names to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Respondent apparently receives pay-per-click fees via the links. The links direct users to Complainant’s competitors such as Macy’s and Pottery Barn, as well as to unrelated sites. Therefore, Respondent is not using the at-issue domain names to provide either a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain names under Policy ¶ 4(c)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of any of the at-issue domain names under Policy ¶4(a)(ii).
The at‑issue domain names were registered and are being used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances, as well as other circumstance, are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy with regard to each of the at-issue domain names.
Respondent is a serial cybersquatter as evidenced by prior adverse UDRP decisions. See Wal-Mart Stores, Inc. v. David Webb, FA 1076222 (Nat. Arb. Forum Oct. 30, 2007); see also Tavelocity.com LP v. David Webb, FA 1343691 (Nat. Arb. Forum Oct. 7, 2010). The prior UDRP decisions suggest Respondent’s bad faith in the instant case pursuant to Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
Respondent disrupts Complainant’s business as the links displayed on the addressed webpages promote products that compete with Complainant. Using the domain in this manner demonstrates bad faith under Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).
Likewise, Respondent’s use of the domain names evidences bad faith pursuant to Policy ¶ 4(b)(iv) because the confusingly similar domain names ultimately address pages displaying links to Complainant’s competitors. Indeed, Respondent receives click-through fees by shuttling Internet users to such competitors. See 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).”).
Finally, Respondent appears to have registered the domain names solely to divert Internet users who misspell Complainant’s mark. Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to 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 <bdebathandbeyond.com>, <bedbathandbeyodn.com>, <bedbathandbwyond.com>, <bedbatjandbeyond.com>, <bedbtahandbeyond.com>, and <befbathandbeyond.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 28, 2013
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