Bed Bath & Beyond Procurement Co. Inc. (N/K/A Liberty Procurement Co. Inc.) v. Namescope Limited
Claim Number: FA1407001567947
Complainant is Bed Bath & Beyond Procurement Co. Inc. (N/K/A Liberty Procurement Co. Inc.) (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Namescope Limited (“Respondent”), Saint Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bedbathandbeyhond.com>, <bedbathbayond.com>, <bedbatthandbeyond.com>, and <bedbatyandbeyond.com>, registered with Fabulous.Com Pty Ltd.
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 July 1, 2014; the National Arbitration Forum received payment on July 1, 2014.
On July 6, 2014, Fabulous.Com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <bedbathandbeyhond.com>, <bedbathbayond.com>, <bedbatthandbeyond.com>, and <bedbatyandbeyond.com> domain names are registered with Fabulous.Com Pty Ltd and that Respondent is the current registrant of the names. Fabulous.Com Pty Ltd has verified that Respondent is bound by the Fabulous.Com Pty 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 July 15, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 4, 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@bedbathandbeyhond.com, postmaster@bedbathbayond.com, postmaster@bedbatthandbeyond.com, postmaster@bedbatyandbeyond.com. Also on July 15, 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 August 6, 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.
1. Complainant has rights in the BED BATH AND BEYOND marks under Policy ¶ 4(a)(i).
a. Complainant operates a chain of domestic merchandise retail stores across the United States, Puerto Rico, and Canada. In 2010, Complainant was operating 982 stores, with 46,000 employees.
b. Complainant has rights in the BED BATH & BEYOND mark, used in connection with domestic merchandise retail stores. Complainant owns registrations for the BED BATH & BEYOND mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,712,392 registered on September 1, 1992).
c. Respondent’s <bedbathandbeyhond.com>, <bedbathbayond.com>, <bedbatthandbeyond.com>, and <bedbatyandbeyond.com> domain names are confusingly similar to Complainant’s BED BATH & BEYOND mark.
2. Respondent has no rights or legitimate interests in the <bedbathandbeyhond.com>, <bedbathbayond.com>, <bedbatthandbeyond.com>, and <bedbatyandbeyond.com> domain names.
a. Respondent is not commonly known by the disputed domain names. Respondent is not sponsored by or legitimately affiliated with Complainant in any way. Further, Complainant has not given Respondent any kind of permission to use Complainant’s registered marks.
b. Respondent uses 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 links provided on the websites.
3. Respondent registered and is using the <bedbathandbeyhond.com>, <bedbathbayond.com>, <bedbatthandbeyond.com>, and <bedbatyandbeyond.com> domain names in bad faith.
a. Respondent has listed the disputed domain names for sale. See Complainant’s Exhibit Q.
b. Respondent’s pay-per-click links displayed on the resolving websites promote products that compete with Complainant.
c. Respondent uses the disputed domain names to attract Internet users to its website for the purpose of commercially profiting from the confusion caused by the similarity in the domain name and website content.
d. Respondent’s disputed domain names indicate typosquatting behavior.
1. The Panel notes the WHOIS information for the disputed domain names list “Domain Hostmaster” as the registrant.
1. Respondent’s <bedbathandbeyhand.com>, <bedbathbayond.com>, <bedbatthandbeyond.com>, and <bedbatyandbeyond.com> domain names are confusingly similar to Complainant’s BED BATH AND BEYOND marks.
2. Respondent does not have any rights or legitimate interests in the <bedbathandbeyhand.com>, <bedbathbayond.com>, <bedbatthandbeyond.com> domain names.
3. Respondent registered or used the <bedbathandbeyhand.com>, <bedbathbayond.com>, <bedbatthandbeyond.com> 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 contends it has rights in the BED BATH & BEYOND mark, used in connection with domestic merchandise retail stores. Complainant states it owns registrations for the BED BATH & BEYOND mark with the USPTO (e.g., Reg. No. 1,712,393 registered September 1, 1992). The Panel notes that Respondent resides in a different jurisdiction from that in which Complainant holds trademark registrations; however, past panels have determined that a complainant need not own a registration in a respondent’s country of operation, and it is sufficient that a complainant own a registration in a different country. See 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, the Panel finds that Complainant has established rights in the BED BATH & BEYOND mark pursuant to Policy ¶ 4(a)(i) via trademark registration with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant next asserts that Respondent’s <bedbathandbeyhond.com>, <bedbathbayond.com>, <bedbatthandbeyond.com>, and <bedbatyandbeyond.com> domain names are confusingly similar to Complainant’s BED BATH & BEYOND mark. The Panel notes that Respondent’s <bedbathandbeyhond.com> and <bedbatthandbeyond.com> domain names each add an additional letter to Complainant’s mark. The Panel sees that the <bedbathandbeyhond.com> domain name adds the letter “h” to the word “beyond” in Complainant’s mark. Additionally, the Panel sees that the <bedbatthandbeyond.com> domain name adds an additional letter “t” to the word “bath” in Complainant’s mark. In Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) the panel concluded that the mere addition of a single letter to the complainant’s mark did 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 Panel next notes that Respondent’s <bedbathbayond.com> and <bedbatyandbeyond.com> domain names are misspelled versions of Complainant’s BED BATH & BEYOND mark. The Panel notes that Respondent’s <bedbathbayond.com> domain name replaces the letter “e” in “beyond” with the letter “a” in Complainant’s mark. The Panel sees that Respondent also removes the ampersand in the domain name. Respondent’s <bedbatyandbeyond.com> domain name replaces the letter “h” in “bath” with the letter “y” making it a misspelling of the word “bath.” In Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) the panel found the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e.”
Next, the Panel notes that Respondent’s <bedbathandbeyhond.com>, <bedbathbayond.com>, <bedbatthandbeyond.com>, and <bedbatyandbeyond.com> domain names remove the spaces between the words in Complainant’s mark as well as replace the ampersand with the word “and” or merely delete it all together. The Panel finds that replacing an ampersand with the word “and” does not sufficiently differentiate a disputed domain name from a trademark. 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). Additionally, the Panel finds that the addition of a gTLD and the removal of spaces between words in a trademark are irrelevant changes in regards to confusing similarity analysis. 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)). Based on this case precedent, the Panel therefore concludes that Respondent’s <bedbathandbeyhond.com>, <bedbathbayond.com>, <bedbatthandbeyond.com>, and <bedbatyandbeyond.com> domain names are confusingly similar to Complainant’s BED BATH & BEYOND mark under Policy ¶ 4(a)(i).
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 contends that Respondent has no rights or legitimate interests in the <bedbathandbeyhond.com>, <bedbathbayond.com>, <bedbatthandbeyond.com>, and <bedbatyandbeyond.com> domain names. In so arguing, Complainant contends that Respondent has not been commonly known by the disputed domain names as demonstrated by the WHOIS information. The Panel notes that the WHOIS information indicates that “Domain Hostmaster” is listed as the registrant of the disputed domain names. Further, Complainant contends that Respondent is not sponsored by or legitimately affiliated with Complainant in any way. Respondent failed to submit a Response in the proceeding, and therefore, has not refuted Complainant’s contentions. As such, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Additionally, Complainant argues that Respondent is not using the disputed domain names to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Complainant urges that Respondent is using the <bedbathandbeyhond.com>, <bedbathbayond.com>, <bedbatthandbeyond.com>, and <bedbatyandbeyond.com> domain names in connection with websites featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Complainant also presumes that Respondent receives pay-per-click fees from the linked websites. The Panel notes that Complainant includes screenshots of the websites reachable through the disputed domain name in Exhibit H. The Panel sees that Respondent’s resolving websites display links, some of which include, “Bed Bath and Beyond,” “Bed Bath Bridal Registry,” “Bed and Bath Coupon,” “Bed and Bath Essentials,” “Bed Barn,” “Sleep Number Beds,” “Ikea Bedroom,” “Kids Bedding Furniture,” “Bed Bath Bedding,” and “Unique Home Décor.” Previous panels have found that resolving websites that promote links to the complainant and its competitors does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use. See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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 finds that Respondent is not using the <bedbathandbeyhond.com>, <bedbathbayond.com>, <bedbatthandbeyond.com>, and <bedbatyandbeyond.com> domain names to provide 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) by causing the disputed domain names to resolve to webpages promoting Complainant’s own website, as well as websites belonging to competitors.
Complainant asserts that Respondent registered and is using the <bedbathandbeyhond.com>, <bedbathbayond.com>, <bedbatthandbeyond.com>, and <bedbatyandbeyond.com> domain names in bad faith. In arguing, Complainant states that Respondent has listed the disputed domain names for sale. See Complainant’s Exhibit Q. Prior panels have concluded that offering disputed domain names for sale indicates bad faith use and registration under Policy ¶ 4(b)(i). See Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the respondent offered the domain names for sale). The Panel thus concludes that Respondent’s attempt to sell the disputed domain names indicates bad faith under Policy ¶ 4(b)(i).
Complainant argues that Respondent’s bad faith is demonstrated by Respondent’s use of the <bedbathandbeyhond.com>, <bedbathbayond.com>, <bedbatthandbeyond.com>, and <bedbatyandbeyond.com> domain names in connection with websites that advertises links to third party websites that promote products that compete with Complainant. Complainant asserts that the resulting disruption of Complainant’s business constitutes bad faith. The Panel again notes that Complainant’s Exhibit H includes screen shots of the reachable pages, which includes links to Complainant’s website, as well as third party websites offering bedding and home décor, similar to complainant. Previous panels have found evidence of bad faith where a respondent provides links to competitors of the complainant through the confusingly similar domain name. 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).”). The Panel finds evidence of bad faith registration and use of the <bedbathandbeyhond.com>, <bedbathbayond.com>, <bedbatthandbeyond.com>, and <bedbatyandbeyond.com> domain names under Policy ¶ 4(b)(iii) because Complainant has provided the Panel with evidence showing Respondent provides links to Complainant’s competitors.
Complainant argues that Respondent’s bad faith is further demonstrated by Respondent’s use of the domain names in connection with generating revenue as click-through websites. See Complainant’s Exhibit H. Complainant contends that Respondent is misleading users and taking advantage of Complainant’s well known mark to achieve a wrongful competitive advantage and commercially gain. In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), the panel wrote, “Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).” The present case is comparable, and the Panel thus finds evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv) because the domain name’s resolving pages provide links to Complainant’s competitors offering products users likely associate with Complainant, and Respondent likely generates click-through fees from the linked websites.
Complainant argues that Respondent’s typosquatting behavior is evidence of bad faith in and of itself. Past panels have consistently held that typosquatting is a practice that takes advantage of common and basic typographical errors, and is thus motivated by 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).”). The Panel finds evidence of bad faith under Policy ¶ 4(a)(iii) as Respondent appears to have registered the domain names to divert Internet users who misspell Complainant’s mark by adding an extra letter, or removing a letter to Complainant’s BED BATH & BEYOND mark.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bedbathandbeyhond.com>, <bedbathbayond.com>, <bedbatthandbeyond.com>, and <bedbatyandbeyond.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: August 19, 2014
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