Macy's Inc. and its subsidiary Macy's West Stores, Inc. v. PPA Media Services / Ryan G Foo
Claim Number: FA1404001552885
Complainant is Macy's Inc. and its subsidiary Macy's West Stores, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is PPA Media Services / Ryan G Foo (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bllomingdales.com>, <bloomingales.com>, <bloomingdaales.com>, <bloomingdailes.com>, and <boomingdales.com>, <machys.com>, registered with Internet.Bs Corp.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 7, 2014; the National Arbitration Forum received payment on April 7, 2014.
On April 12, 2014, Internet.Bs Corp. confirmed by e-mail to the National Arbitration Forum that the <bllomingdales.com>, <bloomingales.com>, <bloomingdaales.com>, <bloomingdailes.com>, and <boomingdales.com>, <machys.com> domain names are registered with Internet.Bs Corp. and that Respondent is the current registrant of the names. Internet.Bs Corp. has verified that Respondent is bound by the Internet.Bs Corp. 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 April 18, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 8, 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@bllomingdales.com, postmaster@bloomingales.com, postmaster@bloomingdaales.com, postmaster@bloomingdailes.com, postmaster@boomingdales.com, and postmaster@machys.com. Also on April 18, 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 May 13, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
Complainant’s Contentions
Policy ¶ 4(a)(i)
1. Complainant uses the BLOOMINGDALE’S and MACY’S marks to promote their department store and retail services. Both trademarks have been registered with the United States Patent and Trademark Office ("USPTO"). BLOOMINGDALE’S (e.g., Reg. No. 945,425, registered Oct. 17, 1972); MACY’S (e.g., Reg. No. 78,333, registered May 8, 1909).
2. Respondent has registered the <bllomingdales.com>, <bloomingales.com>, <bloomingdaales.com>, <bloomingdailes.com>, <boomingdales.com>, and <machys.com> domain names. All of these domain names make minor typographical errors with respect Complainant’s own trademarks.
Policy ¶ 4(a)(ii)
3. Respondent has never been commonly known as the <bllomingdales.com>, <bloomingales.com>, <bloomingdaales.com>, <bloomingdailes.com>, <boomingdales.com>, and <machys.com> domain names. Complainant has never once authorized Respondent’s use of Complainant’s trademarks.
4. Respondent uses the <bllomingdales.com>, <bloomingales.com>, <bloomingdaales.com>, <bloomingdailes.com>, <boomingdales.com>, and <machys.com> domain names to send Internet users to unrelated websites featuring third-party advertisements.
Policy ¶ 4(a)(iii)
5. Respondent has been subject to numerous UDRP decisions where bad faith was found.
6. Respondent’s hosting of hyperlinks on the <bllomingdales.com>, <bloomingales.com>, <bloomingdaales.com>, <bloomingdailes.com>, <boomingdales.com>, and <machys.com> domain names is disrupting Complainant’s business.
7. Respondent’s use of the <bllomingdales.com>, <bloomingales.com>, <bloomingdaales.com>, <bloomingdailes.com>, <boomingdales.com>, and <machys.com> domain names constitutes an intent to wrongfully gain from the likely confusion of Internet users. Respondent has made all of these websites feature hyperlinks that generate advertising revenue.
8. Respondent’s bad faith is apparent in that Respondent typo squatted all of these domain names.
9. Respondent operates the <bllomingdales.com>, <bloomingales.com>, <bloomingdaales.com>, <bloomingdailes.com>, <boomingdales.com>, and <machys.com> domain names in violation of its affiliate agreement with Complainant.
10. Respondent had to have actually known of Complainant’s rights when registering these infringing domain names.
Respondent’s Contentions
Respondent did not submit a response.
1. Respondent’s <bllomingdales.com>, <bloomingales.com>, <bloomingdaales.com>, <bloomingdailes.com>, <boomingdales.com>, and <machys.com> domain names are confusingly similar to Complainant’s BLOOMINGDALE’S and MACY’S marks.
2. Respondent does not have any rights or legitimate interests in the <bllomingdales.com>, <bloomingales.com>, <bloomingdaales.com>, <bloomingdailes.com>, <boomingdales.com>, and <machys.com> domain names.
3. Respondent registered or used the <bllomingdales.com>, <bloomingales.com>, <bloomingdaales.com>, <bloomingdailes.com>, <boomingdales.com>, and <machys.com> domains name 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.”).
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
The two Complainants in this matter are Macy's Inc. and its subsidiary, Macy's West Stores, Inc. This subsidiary relationship evidences that both the parties are connected.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and shall treat them all as a single entity in this proceeding.
Complainant uses the BLOOMINGDALE’S and MACY’S marks to promote their department store and retail services. Both trademarks have been registered with the USPTO: BLOOMINGDALE’S (e.g., Reg. No. 945,425, registered Oct. 17, 1972) and MACY’S (e.g., Reg. No. 78,333, registered May 8, 1909). The Panel find USPTO registrations satisfy Complainant’s obligation to show rights under Policy ¶ 4(a)(i), regardless of where Respondent dwells. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant further alleges Respondent has registered the <bllomingdales.com>, <bloomingales.com>, <bloomingdaales.com>, <bloomingdailes.com>, <boomingdales.com>, and <machys.com> domain names. Complainant argues all of these domain names make minor typographical errors with respect to Complainant’s own trademarks. The Panel notes that all of these domain names, regardless of the associated mark, make a single-character alteration to the mark by either replacing an existing letter with a different letter or by adding a new letter into the mark. The Panel agrees such variations add confusion to 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). The Panel thus agrees that as there is nothing else unique about these domain names, save the generic top-level domain (“gTLD”) “.com,” and the elimination of the apostrophe, the domain names are all confusingly similar to Complainant’s trademarks under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that the omission of an apostrophe did not significantly distinguish the domain name from the mark).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have 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.”).
Complainant argues Respondent has never been commonly known as the <bllomingdales.com>, <bloomingales.com>, <bloomingdaales.com>, <bloomingdailes.com>, <boomingdales.com>, and <machys.com> domain names. Complainant has never once authorized Respondent’s use of Complainant’s trademarks. The Panel agrees there is no basis in this record for finding Respondent is commonly known by these domain names under Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Complainant further alleges Respondent uses the <bllomingdales.com>, <bloomingales.com>, <bloomingdaales.com>, <bloomingdailes.com>, <boomingdales.com>, and <machys.com> domain names to send Internet users to unrelated websites featuring third-party advertisements. The Panel notes the evidence suggests all the domain names are used to promote hyperlink advertisements to various related and unrelated goods or services. See Compl., at Attached Ex. H. In Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) the panel found listings of hyperlinks to be insufficient to maintain a Policy ¶ 4(c)(i) bona fide offering. The Panel here agrees the evidenced use of these domain names gives rise to neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant notes that Respondent has been subject to numerous UDRP decisions where bad faith was found. Complainant argues that past findings of bad faith supports a finding of bad faith in the current proceeding. Complainant cites previous decisions against Respondent in Exhibit N. See Am. Sports Licensing, Inc. v. PPA Media Services / Ryan G Foo, FA 1426024 (Nat. Arb. Forum March 6, 2012); see also Univision Commc’ns Inc. v. PPA Media Services / Ryan G Foo, FA 149889 (Nat. Arb. Forum April 11, 2012); see also AOL Inc. v. PPA Media Services a/k/a Ryan G Foo, FA 1432688 (Nat. Arb. Forum April 24, 2012). The Panel agrees that Respondent’s history of bad faith as demonstrated through prior UDRP decision is evidence of Respondent’s bad faith in the current matter. 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).”).
Complainant claims Respondent’s hosting of hyperlinks on the <bllomingdales.com>, <bloomingales.com>, <bloomingdaales.com>, <bloomingdailes.com>, <boomingdales.com>, and <machys.com> domain names is disrupting Complainant’s business. The Panel takes note of the content viewable through these disputed domain names’ websites. See Compl., at Attached Ex. H. The Panel believes these hyperlinks are sufficiently competitive with the BLOOMINGDALE’S and MACY’S marks, and finds that Respondent is disrupting Complainant’s business in Policy ¶ 4(b)(iii) bad faith. See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant next argues that Respondent’s use of the <bllomingdales.com>, <bloomingales.com>, <bloomingdaales.com>, <bloomingdailes.com>, <boomingdales.com>, and <machys.com> domain names constitutes an intent to wrongfully gain from the likely confusion of Internet users. Complainant points out Respondent has made all of these websites feature hyperlinks that generate advertising revenue. See Compl., at Attached Ex. H. In AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) the panel found a likelihood of confusion when the respondent used confusingly similar domain names to host monetized commercial hyperlinks. The Panel here likewise agrees Respondent’s actions are tantamount to Policy ¶ 4(b)(iv) bad faith.
Complainant further argues Respondent’s bad faith is apparent in that Respondent typo squatted all of these domain names. The Panel agrees that typo squatting is the practice of registering domain names solely because they are common misspellings of marks. See Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003) (holding that the practice of typo squatting “diverts Internet users who misspell Complainant’s mark to a website apparently owned by Respondent for Respondent’s commercial gain. ‘Typo squatting’ has been recognized as evidencing bad faith registration and use.). The Panel believes the <bllomingdales.com>, <bloomingales.com>, <bloomingdaales.com>, <bloomingdailes.com>, and <boomingdales.com>, <machys.com> domain names represent examples of typo squatting, and agrees as to Policy ¶ 4(a)(iii) bad faith.
Complainant urges that Respondent had to have actually known of Complainant’s rights when registering these infringing domain names. Complainant argues that Respondent operates the <bllomingdales.com>, <bloomingales.com>, <bloomingdaales.com>, <bloomingdailes.com>, <boomingdales.com>, and <machys.com> domain names in violation of its affiliate agreement with Complainant, and as such Respondent knew of Complainant and its rights. The Panel here agrees that as Respondent entered an agreement with Complainant, Respondent is to be held to have registered the domain names with actual notice and in Policy ¶ 4(a)(iii) bad faith. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize “constructive notice” as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bllomingdales.com>, <bloomingales.com>, <bloomingdaales.com>, <bloomingdailes.com>, and <boomingdales.com>, <machys.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: May 23, 2014
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