national arbitration forum

 

DECISION

 

Bed Bath & Beyond Procurement Co. Inc. (n/k/a Liberty Procurement Co. Inc.) v. TECH DOMAIN SERVICES PRIVATE LIMITED / TECH DOMAIN SERVICES PRIVATE LIMITED

Claim Number: FA1401001538585

 

PARTIES

Complainant is Bed Bath & Beyond Procurement Co. Inc. (n/k/a Liberty Procurement Co. Inc.) (“Complainant”), represented by CitizenHawk, Inc., California, USA.  Respondent is TECH DOMAIN SERVICES PRIVATE LIMITED / TECH DOMAIN SERVICES PRIVATE LIMITED (“Respondent”), India.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <bedbathandbedyond.com> and <bedbthbeyond.com>, registered with Tirupati Domains and Hosting Pvt Ltd.

 

PANEL

The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 10, 2014; the National Arbitration Forum received payment on January 10, 2014.

 

On January 14, 2014, Tirupati Domains and Hosting Pvt Ltd. confirmed by e-mail to the National Arbitration Forum that the <bedbathandbedyond.com> and <bedbthbeyond.com> domain names are registered with Tirupati Domains and Hosting Pvt Ltd. and that Respondent is the current registrant of the names.  Tirupati Domains and Hosting Pvt Ltd. has verified that Respondent is bound by the Tirupati Domains and Hosting Pvt Ltd. 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 January 20, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 10, 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@bedbathandbedyond.com, postmaster@bedbthbeyond.com.  Also on January 20, 2014, 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 February 21, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

1.    FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds:

Bed Bath & Beyond Procurement Co. Inc. (n/k/a Liberty Procurement Co. Inc.) is a wholly owned subsidiary of Bed Bath & Beyond Inc., which, was formed in 1971 and today operates a chain of domestic merchandise retail stores across United States, Puerto Rico and Canada. They feature mostly medium-ranged, but also a limited selection of high quality, domestic merchandise: items for the bedroom, bathroom, kitchen, and dining room. The company is included in the S&P 500 and Global 1200 Indices and the NASDAQ-100 Index.

Since 1992, Bed Bath & Beyond Inc. is traded on the NASDAQ National Market under the symbol "BBBY". The Company is counted among the Fortune 500 and the Forbes 2000. At fiscal year-end (2010), Bed Bath & Beyond operated 982 stores in all 50 states, the District Columbia, Puerto Rico and Canada. The Company's stores principally range in size from 20,000 to 50,000 square feet, with some stores exceeding 80,000 square feet. As of June 30, 2011, Bed Bath & Beyond employs approximately 46,000 associates, mainly in stores, with the balance working in offices and distribution centers. The Company operated 1,000 BBB stores, 73 CTS stores, 47 Harmon stores and 71 buybuy BABY stores at the end of the fiscal second quarter of 2012.

Bed Bath & Beyond Inc. and its subsidiaries (the “Company”) is a chain of retail stores, operating under the names Bed Bath & Beyond (“BBB”), Christmas Tree Shops (“CTS”), Harmon and Harmon Face Values (“Harmon”) and buy buy BABY. In March 2007, the Company acquired buy buy BABY, a retailer of infant and toddler merchandise, which operated 8 stores at the time located in Maryland, New Jersey, New York and Virginia.

Bed Bath & Beyond Inc. is committed to being a good neighbor by giving back to the communities it serves; local managers are empowered to support local events and do so on a frequent basis. In addition, the Company has a number of relationships through which they may serve their customers and others in the areas in which they do business. Good360, a non-profit organization based in Alexandria, Virginia, which utilizes merchandise that is donated weekly from stores to hundreds of local charities across the United States, as well as Canada and Puerto Rico, recognized Bed Bath & Beyond as a “Light of Hope” Award winner. This award recognizes corporations for outstanding corporate citizenship and effective product philanthropy.  To date, the Complainant estimates to have provided over $622 million in product donations to our local communities.

Bed Bath & Beyond Inc. and its subsidiaries have spent thousands of dollars in advertisement and promotion of the Bed Bath & Beyond mark on the Internet through its website located at BEDBATHANDBEYOND.COM. Based on its federal trademark registrations and extensive use, Bed Bath & Beyond and its subsidiaries own the exclusive right to use the Bed Bath & Beyond Marks in connection with online, retail store services in the field of linen products, housewares, home furnishings, baby furniture, clothes, accessories, supplies and a wide variety of consumer goods of others.

In short, Bed Bath & Beyond Inc., and its subsidiaries (including Liberty Procurement Co. Inc.) enjoys wide consumer recognition and acceptance of its brands.

Furthermore, Bed Bath & Beyond Inc. through its subsidiary Liberty Procurement Co Inc., owns the Marks cited in Section 4(c) above for which it has obtained a federal trademark registrations.  The federal mark registration has not been abandoned, cancelled or revoked. Bed Bath & Beyond, has spent thousands of dollars in advertisement and promotion of the Marks on television, print media and the Internet.

[a.]

The Disputed Domain Name(s) are nearly identical and confusingly similar to Complainant's Marks. i. By virtue of its federal trademark and/or service mark registration(s), Complainant is the owner of the Complainant's Mark(s). See, e.g., United Way of America v. Alex Zingaus, NAF Claim No. FA0707001036202 ("Panels have long recognized Complainant's registration of a mark with a trademark authority is sufficient to confer rights in the mark pursuant to Policy 4(a)(i)"). As in other cases, it is also important to note that it is irrelevant for the purposes of Policy ¶4(a)(i) whether Complainant registered the mark in the country where Respondent operates or resides. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a complainant can demonstrate rights in a mark in some jurisdiction). ii. When comparing the Disputed Domain Name(s) to the Complainant's Mark(s), the relevant comparison to be made is between only the second-level portion of the Disputed Domain Name(s) and the Complainant's Mark(s). See Rollerblade, Inc. v. McCrady, WIPO Case No.D2000-0429 (finding that the top-level domain, 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 Gardline Surveys Ltd. v. Domain Fin. Ltd., NAF Claim No. FA0304000153545 ("[t]he addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.") iii. The Disputed Domain Name(s) (is/are) confusingly similar to Complainant's Mark(s) because (it/they) differ(s) by only a single character from Complainant's Mark(s), or because it differs by only the juxtaposition of two characters when compared to Complainant's Mark(s). For clarification, the Disputed Domain Name(s) contain(s) either: [i.] the addition of one extra character, or... [ii.] the removal of one character, or... [iii.] one character which is incorrect, or... [iv.] two juxtaposed characters as compared to Complainant's Mark(s). iv. The Disputed Domain Name(s) (is/are), simply put, a classic example of "typosquatting". The practice of typosquatting is designed to take advantage of Internet users' typographical errors, which means the names must be confusingly similar by design. See Reuters Ltd. v. Global Net 2000, Inc., WIPO Case No. D2000-0441 (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); Caterpillar Inc. v. Center for Ban on Drugs, NAF Claim No. FA0603000661437 ("the omission of a single letter from Complainant's mark does not adequately distinguish the Disputed Domain Name from the mark"); and Victoria's Secret v. Zuccarini, NAF Claim No. FA0010000095762 (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).

 

	[b.]	Respondent has no rights or legitimate interests in respect of the Disputed Domain Name(s) for the following reasons: i.           ii. iii. Respondent has not been commonly known by the Disputed Domain Name(s). Upon information and belief, at the time Respondent registered the Domain Name(s), it had no trademark or intellectual property rights in the Domain Name(s). See Policy, ¶4(c)(ii). See WHOIS record for the Disputed Domain Name(s). Where, as here, "the WHOIS information suggests Respondent is known as" an entity other than the trademark associated with Complainant, and Complainant has not "licensed, authorized, or permitted Respondent to register domain names incorporating Complainant's... mark," a Panel should find that the Respondent is not commonly known by the Disputed Domain Name. See United Way of America v. Alex Zingaus, NAF Claim No. FA0707001036202. See also 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 Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that when a respondent was not known by a mark it did not have rights in a domain name incorporating that mark).   Respondent is not sponsored by or legitimately affiliated with Complainant in any way.   Complainant has not given Respondent permission to use Complainant's Mark in a domain name. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (Finding that a respondent had no rights or legitimate interest in the disputed domain name where it was not commonly known by the mark and never applied for a license or permission to use the mark).   iv. "Cease and Desist" letters were sent to the Respondent prior to this action on January 8, 2014 and January 14, 2014. The letters informed the Respondent that it was infringing on Complainant's IP rights and allowed the Respondent the opportunity to respond if they have any IP rights. The Respondent was provided with the information of the Complainant's trademark(s), hence showing proof that the Complainant has rights to the brand(s). To date, no reply has been received from Respondent. 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, WIPO Case No. D2000-0009 (WIPO Feb. 29, 2000("In the absence of a response, it is appropriate to accept as true all allegations of the Complaint."). Also in WIPO case ACCOR v. Pham Manh Ha, Case No. D2007-1855, the panel found that the evidentiary burden therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in that name. v. Respondent has ignored Complainant's attempts to resolve the dispute outside of this administrative proceeding. Complainant notes that if the owner of the Disputed Domain Name(s) fails to respond to this Complaint, it is presumed that the owner has no rights or legitimate interests in the Disputed Domain Name(s). See Mattel, Inc. v. Rave Club Berlin, FA106115 (Nat. Arb. Forum May 8, 2002), citing Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents' failure to respond can be construed as an admission that they have no legitimate interest in the domain names). Further, Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) states that when "the complainant has made a prima facie showing, the burden of production shifts to the respondent to show by providing concrete evidence that it has rights to or legitimate interest in the domain name at issue." vi. Respondent is using (some or all of) the Disputed Domain Name(s) to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant's business. Presumably, Respondent receives pay-per-click fees from these linked websites. As such, Respondent is not using the Disputed Domain Name(s) to provide a bona fide offering of goods or services as allowed under Policy; 4(c)(i), nor a legitimate noncommercial or fair use as allowed under Policy; 4(c)(iii). See 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent's use of the 24hrsfitness.comgt, 24-hourfitness.com.gt and 24hoursfitness.com.gt, domain names to redirect Internet users to a website featuring advertisements and links to Complainant's competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent's website, which is blank but for links to other websites, is not a legitimate use of the domain names). vii. The earliest date on which Respondent registered the Disputed Domain Name(s) was October 7, 2005, which is significantly after Complainant's first use in, October 1, 1988, as specified in their relevant registration with the USPTO. viii. The earliest date on which Respondent registered the Disputed Domain Name(s) was October 7, 2005, which is significantly after Complainant's registration of their relevant Marks with the USPTO on September 1, 1992. ix. The earliest date on which Respondent registered the Disputed Domain Name(s) was October 7, 2005, which is significantly after Complainant's registration of bedbathandbeyond.com on November 17, 1996.
[c.]			The Domain Name(s) should be considered as having been registered and being used in bad faith for the following reasons: i. Respondent's typosquatting behavior is, in and of itself, evidence of bad faith. See Canadian Tire Corp. v. domain adm'r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent created a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or location'.. . through Respondent's persistent practice of 'typosquatting'"); see also Nat'l Ass'n of Prof'l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) ("Typosquatting ... is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.").   ii.                               iii.                                     iv. Respondent’s bad faith is further shown by the Respondent using (some or all of) the Disputed Domain Name(s) website in connection with generating revenue as a “click through” website by using the Complainant’s registered trademark(s) and providing links to the services and products offered by the Complainant to take advantage of Complainant’s well known mark to achieve a wrongful competitive advantage and commercially gain. In WIPO Decision D2008-1470, AIDA Cruises German Branch of Societá di Crociere Mercurio S.r.l., v. Caribbean Online International Ltd. / Belgium Domains “the Panel finds that the Respondent registered and is using the disputed domain name for the purposes of commercial gain by offering links to other companies’ websites related to cruises and travels, in the form of a “clickthrough” website. In similar cases, many prior panel decisions have recognised [sic] that the registration of domain names to be used in a “click-through” website has to be considered as an evidence of bad faith (see, e.g. Abercrombie & Fitch Trading Co. v. Digi Real Estate Foundation., WIPO Case No. D2007-0440; Early Times Distillers Company v. IP Admin / DNAV ASSOCS, WIPO Case No. D2007-1812; HBOS Plc v. Whois Protection, WIPO Case No. D2007-1605)”. To further stress the above, Respondent’s setting up of a “click through” website for which it likely receives revenue for each misdirected Internet user obviously demonstrates Respondent’s bad faith.  The Respondent has registered and used the Disputed Domain Name(s) in bad faith pursuant to Policy ¶4(b)(iv) by using the Disputed Domain Name(s) to attract and mislead consumers for its own profit.  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).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant). See also Meadowbrook, L.L.C. d/b/a The Land of Nod v. Venkateshwara Distributor Private Limited, Claim Number: FA1112001419361 and Charlotte Russe Merchandising, Inc. v. Private Registrations Aktien Gesellschaft / Domain Admin, Claim Number: FA1204001439309, where the same behavior of bad faith is demonstrated and agreed by the panel, pursuant to Policy ¶4(b)(iv). In addition to the above, the Respondent’s advertised pay-per-click links displayed on the resolving websites promotes products that compete with Complainant. These links therefore divert potential customers away from Complainant to third-party websites, which disrupts Complainant’s business. The Panel should find that this effort to divert consumers and disrupt Complainant’s business is evidence of bad faith registration and use under Policy ¶4(b)(iii). See Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶4(b)(iii)).   v. The Respondent has also listed the Disputed Domain Name(s) for sale. As shown in WIPO Decision D2001-1066, Trip.com, Inc. v. Daniel Deamone, "A fourth factor is that Respondent has offered the Domain Name for sale to the public. There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants  legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent. Although Respondent's offer of the Disputed Domain Name(s) for sale was not made specifically to Complainant or its competitor, offers for sale to the public may nevertheless constitute evidence of bad faith under the Policy." The offering for sale of a domain name, even to a third party, supports bad faith. See Policy, Paragraph 4(b); Sporty's Farm L.L.C. v. Sportsman's Market, Inc., 202 F.3d 489 (2d Cir. 2000); Porsche Cars North America, Inc. v. Spencer, 55 U.S.P.Q.2d 1027 (E.D. Cal. 2000); Morrison & Foerster LLP v. Wick, 94 F. Supp.2d 1125 (D. Colo. 2000). See also WIPO Case No. D2003-0689, Mr. Donning Eric v. Mr. Nyunhwa Jung,..."The posting of the announcement: "This domain is for SALE!" constitutes satisfactory evidence, when combined with the Respondent's lack of legitimate rights to or interests in the domain name, that the Respondent's primary purpose in registering the domain name was to sell it in contravention of the Policy (EFG Bank European Financial Group SA v. Jacob Foundation, WIPO Case No. D2000-0036).   vi. Respondent has caused the website(s) reachable by (some or all of) the Disputed Domain Name(s) to display Complainant's Mark(s) spelled correctly (even though the domain name(s) (is/are) a misspelled version of the same mark(s)). This serves as further evidence of bad faith intent because it removes any doubt as to whether or not the misspelling was intentionally designed to improperly capitalize on Complainant's famous Mark(s).   vii.             viii.           Respondent has caused the websites reachable by (some or all of) the Disputed Domain Name(s) to display content and/or keywords directly related to Complainant's business. This serves as further evidence of bad faith intent because it removes any doubt as to whether or not the misspelling was intentionally designed to improperly capitalize on Complainant's famous Mark and its related business.   Respondent is a recalcitrant, serial cybersquatter / typosquatter. Searches through the NAF and WIPO UDRP decision databases reveal that Respondent has engaged in an ongoing pattern of such behavior. Previous panels have agreed that multiple prior UDRP decisions are sufficient evidence indicating a respondent’s bad faith use and registration.  See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶4(b)(ii).”).

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(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.

 

DISCUSSION

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 Complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:

 

(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.”).

 

Identical and/or Confusingly Similar

Complainant’s parent company, Bed Bath & Beyond Inc., was formed in 1971 and today operates a chain of 1,000 domestic merchandise retail stores across United States, Puerto Rico and Canada. Complainant’s parent and its subsidiaries have spent thousands of dollars in advertisement and promotion of the BED BATH & BEYOND mark on the Internet through the associated website at <bedbathandbeyond.com>. Complainant owns rights in the BED BATH & BEYOND mark based on Complainant’s registration of the mark with the United States Patent & Trademark Office (“USPTO”) (e.g., Reg. No. 1,831,709 registered April 19, 1994) for online, retail store services in the field of linen products, housewares and home furnishings. Complainant has adequately established ownership of the BED BATH & BEYOND mark for the purposes of Policy ¶4(a)(i) through these registrations. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶4(a)(i)). It is immaterial Respondent appears to operate out of India because Complainant need only prove rights in SOME  jurisdiction (and not necessarily Respondent’s jurisdiction). See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of Policy ¶4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).

 

Respondent’s <bedbathandbedyond.com> and <bedbthbeyond.com> domain names are confusingly similar to Complainant’s BED BATH & BEYOND mark. The <bedbathandbedyond.com> domain name converts the ampersand in Complainant’s mark to the corresponding word “and” and adding an extra “d” to Complainant’s mark. Neither change is distinctive enough to create a unique, non-infringing domain. 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 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).”). The <bedbthbeyond.com> domain name omits the ampersand from Complainant’s mark, as well as the letter “a.” Neither of these changes is sufficient to create a unique domain name. See McKinsey Holdings, Inc. v. Indidom, D2000-1616 (WIPO Jan. 31, 2001) (finding that the removal of the ampersand from “McKinsey & Company” does not affect the user’s understanding of the domain name, and therefore the domain name <mckinseycompany.com> is identical and/or confusingly similar to the mark “McKinsey & Company”); 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”). Each disputed domain name includes the generic top-level domain (“gTLD”)“.com” while removing the spacing in Complainant’s mark, all of which are required by the syntax for a gTLD. Therefore, they do not adequately distinguish the disputed domain names from Complainant’s mark on either of these points.  See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶4(a)(i)). Respondent’s <bedbathandbedyond.com> and <bedbthbeyond.com> domain names are confusingly similar to Complainant’s BED BATH & BEYOND mark pursuant to Policy ¶4(a)(i).

 

The Panel finds Policy ¶4(a)(i) satisfied.

 

Rights or Legitimate Interests

Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii).  Then the burden shifts to Respondent to show it has rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Respondent has not been commonly known by the <bedbathandbedyond.com> or <bedbthbeyond.com> domain name. Complainant has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant's mark.  Respondent is not sponsored by or legitimately affiliated with Complainant in any way. The WHOIS information on file suggests Respondent is known by a name other than the disputed domain names. The WHOIS record lists Respondent as “TECH DOMAIN SERVICES PRIVATE LIMITED,” which bears no similarity to the disputed domain names. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) found 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark. Respondent is not commonly known by the <bedbathandbedyond.com> or <bedbthbeyond.com> domain names pursuant to Policy ¶4(c)(ii).

 

Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a noncommercial or fair use pursuant to Policy ¶4(c)(iii). 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 receives pay-per-click fees from these linked websites. Respondent has merely used the confusingly similar <bedbathandbedyond.com> and <bedbthbeyond.com> domain names for the purposes of collecting click-through revenues from competing links.  This means Respondent has used neither domain for a Policy ¶4(c)(i) bona fide offering of goods or services, or for a Policy ¶4(c)(iii) legitimate noncommercial or fair use. See, e.g., United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors.  The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).

 

Furthermore, the real party in interest has not publicly associated itself with the disputed domain names.  The disputed domain names were registered by a bare trustee, who does not control how the disputed domain names are used.  This means Respondent (the bare trustee) has not acquired any rights to the disputed domain names.

 

The Panel finds Policy ¶4(a)(ii) satisfied.

 

Registration and Use in Bad Faith

Complainant claims Respondent registered the contested domains in bad faith by offering to sell the domains to the general public. The WHOIS record for each domain includes a message the domain is for sale by its undisclosed owner. Making such a general offer since 2005 (when the disputed domain names were created) is sufficient to support a finding of bad faith registration and use under Policy ¶4(b)(i). See, e.g., Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶4(b)(i).”). Therefore, Respondent has registered and uses the <bedbathandbedyond.com> and <bedbthbeyond.com> domain names in bad faith according to Policy ¶4(b)(i).

 

Complainant claims Respondent has established a pattern of registering domain names in bad faith, which suggests Respondent registered the <bedbathandbedyond.com> and <bedbthbeyond.com> domain names in bad faith as well. This is not persuasive to this Panel because Complainant has not been prevented from reflecting its trademark in a domain name.  Each case must be judged on its own merits, barring some kind of res judicata or collateral estoppel (none of which exist in this case)

 

Complainant claims Respondent uses the disputed domain names to divert consumers from Complainant’s site to competing sites, disrupting Complainant’s business in bad faith under Policy ¶4(b)(iii). Respondent’s domains resolve to websites featuring sponsored links to third-party competitors of Complainant. In Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), the panel concluded 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 registration and use of the <bedbathandbedyond.com> and <bedbthbeyond.com> domain names disrupt Complainant’s business and represents bad faith pursuant to Policy ¶4(b)(iii).

 

Respondent’s use of the disputed domain names to misdirect consumers to “click-through” websites from which Respondent receives revenue also demonstrates Respondent’s bad faith pursuant to Policy ¶4(b)(iv). Respondent draws Internet traffic to its sites by creating confusion with Complainant through the registration of confusingly similar domain names. Once visitors have arrived at Respondent’s sites, they are presented with sponsored links and Respondent gets money (or some other benefit) with each click. Respondent intentionally tried to create confusion with Complainant to achieve such pecuniary gain, which means Respondent registered and uses the <bedbathandbedyond.com> and <bedbthbeyond.com> domain names in bad faith according to Policy ¶4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).

 

Finally, using a privacy service raises the rebuttable presumption of bad faith registration and use in a commercial context.  Respondent has done nothing to rebut that presumption.  This fact alone is sufficient to support a finding of bad faith registration and use.

 

The Panel finds Policy ¶4(a)(iii) satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.

 

Accordingly, it is Ordered the <bedbathandbedyond.com> and <bedbthbeyond.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Houston Putnam Lowry, Chartered Arbitrator, Panelist

Dated: Monday, March 3, 2014