Bed Bath & Beyond Procurement Co. Inc. (n/k/a Liberty Procurement Co. Inc.) v. Domain Admin / Private Registrations Aktien Gesellschaft
Claim Number: FA1310001526265
Complainant is Bed Bath & Beyond Procurement Co. Inc. (n/k/a Liberty Procurement Co. Inc.) (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Domain Admin / Private Registrations Aktien Gesellschaft (“Respondent”), Saint Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bedbathbyond.com>, <bedebathandbeyond.com>, and <wwwbedbathbeyond.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 23, 2013; the National Arbitration Forum received payment on October 23, 2013.
On October 25, 2013, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <bedbathbyond.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 December 13, 2013, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <bedebathandbeyond.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 December 20, 2013, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <wwwbedbathbeyond.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 December 20, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 9, 2014 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@bedbathbyond.com, postmaster@bedebathandbeyond.com, and postmaster@wwwbedbathbeyond.com. Also on December 20, 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 January 14, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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
a) Complainant is the owner of registrations with the United States Patent and Trademark Office (“USPTO”) for the BED BATH & BEYOND mark (e.g., Reg. No. 1,831,709 registered Apr. 19, 1994), used in connection with retail store services and online retail store services in the field of linen products, housewares, and home furnishings.
b) The <bedbathbyond.com>, <bedebathandbeyond.com>, and <wwwbedbathbeyond.com> domain names are confusingly similar to the BED BATH & BEYOND mark.
c) Respondent is not commonly known by the disputed domain names. Respondent has not been authorized by Complainant to use the BED BATH & BEYOND mark in a domain name and the WHOIS record suggests that Respondent is known by a name not reflected by the domain names.
d) Respondent is using the <bedbathbyond.com>, <bedebathandbeyond.com>, and <wwwbedbathbeyond.com> domain names to host websites that display links to third-party websites, some of which directly compete with Complainant’s business.
e) Respondent’s display of links that compete with Complainant diverts potential customers away from Complainant to third-party websites, disrupting Complainant’s business.
f) Respondent’s operation of websites that host “click-through” links is evidence of bad faith. Respondent is attempting to take commercial advantage of Internet users’ mistaken association between the disputed domain names and Complainant. Respondent intentionally uses Complainant’s marks to create a wrongful competitive advantage.
g) Respondent has engaged in typosquatting of the BED BATH & BEYOND mark in the domain names.
h) The <bedbathbyond.com> domain name was registered on October 3, 2005; the <bedebathandbeyond.com> domain name was registered on November 25, 2005; and the <wwwbedbathbeyond.com> domain name registered on August 23, 2000.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the BED BATH & BEYOND mark. Respondent’s domain names are confusingly similar to Complainant’s BED BATH & BEYOND mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <bedbathbyond.com>, <bedebathandbeyond.com>, and <wwwbedbathbeyond.com> domain names, and that Respondent registered and uses the domain names in bad faith.
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.”).
Complainant is the owner of registrations with the USPTO for the BED BATH & BEYOND mark (e.g., Reg. No. 1,831,709 registered Apr. 19, 1994), used in connection with retail store services and online retail store services in the field of linen products, housewares, and home furnishings. Regardless of the location of a respondent, the registration of a mark is evidence of having rights in that mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, Complainant has rights in the BED BATH & BEYOND mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that the <bedbathbyond.com>, <bedebathandbeyond.com>, and <wwwbedbathbeyond.com> domain names are confusingly similar to the BED BATH & BEYOND mark. Respondent’s misspelling of the <bedbathbyond.com> and <bedebathandbeyond.com> domain names by the addition or deletion of one letter and its addition of the prefix “www” without being followed by the period per usual in the <wwwbedbathbeyond.com> domain name fails to create a meaningful distinction between the mark and the domain names. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Register.com Inc. v. House, FA 167970 (Nat. Arb. Forum Aug. 22, 2003) (finding the prefix “www” followed by the trademark with no period separating them did not distinguish the mark and was confusingly similar).
Further, Respondent’s addition of the gTLD “.com” to each of the domains is irrelevant. Respondent also deleted the spacing between words of Complainant’s mark. In Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007), the panel found that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from a complainant’s mark under Policy ¶ 4(a)(i). Moreover, the deletion of the ampersand in the <bedbathbyond.com> and <wwwbedbathbeyond.com> domain names is not significant in determining the similarity between a domain name and a mark. See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark). Lastly, Respondent replaces the ampersand with its word-equivalent, “and,” in the <bedebathandbeyond.com> domain name, a change which has been considered insubstantial. 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). Accordingly, the Panel finds that Respondent’s <bedbathbyond.com>, <bedebathandbeyond.com>, and <wwwbedbathbeyond.com> domain names are confusingly similar to the BED BATH & BEYOND mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in respect of the <bedbathbyond.com>, <bedebathandbeyond.com>, and <wwwbedbathbeyond.com> domain names. Complainant claims that Respondent is not commonly known by the disputed domain names. Complainant states that Respondent has not been authorized by Complainant to use the BED BATH & BEYOND mark in a domain name and the WHOIS record suggests that Respondent is known by a name not reflected by the domain names. The WHOIS records for the disputed domain names list “Domain Admin / Private Registrations Aktien Gesellschaft” as the domain name registrant. Therefore, the Panel finds that Respondent is not commonly known by the <bedbathbyond.com>, <bedebathandbeyond.com>, and <wwwbedbathbeyond.com> domain names under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
The record indicates that Respondent is using the <bedbathbyond.com>, <bedebathandbeyond.com>, and <wwwbedbathbeyond.com> domain names to host websites that display links to third-party websites, some of which directly compete with Complainant’s business. In Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007), the panel held that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). The Panel therefore determines that Respondent’s use of the <bedbathbyond.com>, <bedebathandbeyond.com>, and <wwwbedbathbeyond.com> domain names is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent registered and is using the <bedbathbyond.com>, <bedebathandbeyond.com>, and <wwwbedbathbeyond.com> domain names in bad faith. Complainant argues that Respondent’s display of links that compete with Complainant diverts potential customers away from Complainant to third-party websites, disrupting Complainant’s business. In Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006), the panel found 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. Therefore, the Panel finds that Respondent’s registration and use of the <bedbathbyond.com>, <bedebathandbeyond.com>, and <wwwbedbathbeyond.com> domain names are disruptive to Complainant’s business under Policy ¶ 4(b)(iii), thus demonstrating bad faith.
Complainant next alleges that Respondent’s operation of websites that host “click-through” links is evidence of bad faith. According to Complainant, Respondent is attempting to take commercial advantage of Internet users’ mistaken association between the disputed domain names and Complainant, and Respondent intentionally uses Complainant’s marks to create a wrongful competitive advantage. The Panel concludes that Respondent intended to profit off of the likelihood of confusion it created pursuant to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Lastly, Complainant contends that Respondent has engaged in typosquatting of the BED BATH & BEYOND mark in the domain names. The <bedbathbyond.com> and <bedebathandbeyond.com> domain names are mere misspellings of Complainant’s mark. The <bedebathandbeyond.com> domain name has the ampersand substituted for the word “and” as required in domain names. The <bedbathbyond.com> and <wwwbedbathbeyond.com> domain names simply delete the ampersand in the mark and the <wwwbedbathbeyond.com> domain name also deletes the period prior to the second-level part of the domain, thus adding “www.” These minor changes are made to take advantage of typographic errors of Internet users and therefore bad faith on the part of Respondent exists under Policy ¶ 4(a)(iii). See Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.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)); see also Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the ‘www’ portion of [a] web-address,” which was evidence that the domain name was registered and used in bad faith).
The Panel finds Complainant has satisfied 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 <bedbathbyond.com>, <bedebathandbeyond.com>, and <wwwbedbathbeyond.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 24, 2014
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