Bed Bath & Beyond Procurement Co. Inc. n/k/a Liberty Procurement Co. Inc. v. Fermon Broome / Broome International Consortium LLC
Claim Number: FA1807001795426
Complainant is Bed Bath & Beyond Procurement Co. Inc. n/k/a Liberty Procurement Co. Inc. (“Complainant”), New Jersey, USA. Respondent is Fermon Broome / Broome International Consortium LLC (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <beautybathandbeyond.com> and <bathebeautyandbeyond.com>, registered with GoDaddy.com, LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 5, 2018; the Forum received payment on July 5, 2018.
On July 6, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <beautybathandbeyond.com> and <bathebeautyandbeyond.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 12, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 1, 2018 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@beautybathandbeyond.com, postmaster@bathebeautyandbeyond.com. Also on July 12, 2018, 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 Forum transmitted to the parties a Notification of Respondent Default.
On August 3, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant, Bed Bath & Beyond Procurement Co. Inc. n/k/a Liberty Procurement Co. Inc., operates a chain of domestic merchandise retail stores that offer domestic merchandise home furnishings, health & beauty products and infant & toddler merchandise. Complainant has rights in the BED BATH & BEYOND mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,830,725 registered Apr. 12, 1994). See Amend. Compl. Ex. E. Respondent’s <beautybathandbeyond.com> and <bathebeautyandbeyond.com> domain names are confusingly similar to Complainant’s mark because Respondent removes the term “bed,” adds the descriptive term “beauty” to the disputed domain names, eliminates the spaces, replaces “&” with “and” and adds the additional letter “e.” to the disputed domain names.
Respondent lacks rights and legitimate interests in the <beautybathandbeyond.com> and <bathebeautyandbeyond.com> domain names because Respondent is not commonly known by the disputed domain names and is not authorized by Complainant to use the mark in any way. Respondent fails to use the disputed domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain names to divert internet users to Respondent’s webpages which offer goods and services that compete directly with those offered by Complainant. Additionally, Respondent failed to respond to a cease-and-desist letter sent by Complainant.
Respondent registered and uses the <beautybathandbeyond.com> and <bathebeautyandbeyond.com> domain names in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain names which offer competing products.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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(f), 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 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that is has rights in the BED BATH & BEYOND mark based upon its registration of the mark with the USPTO. Registration of a mark with the USPTO may be sufficient to establish Complainant’s rights in the mark under Policy ¶ 4(a)(i). Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides a copy of the Trademark Electronic Search System (“TESS”) page for the BED BATH & BEYOND mark (e.g., Reg. No. 1,830,725 registered Apr. 12, 1994). See Amend. Compl. Ex. E. Therefore, the Panel finds that Complainant has rights in the BED BATH & BEYOND mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s BED BATH & BEYOND mark. Complainant argues that Respondent’s <beautybathandbeyond.com> and <bathebeautyandbeyond.com> domain names are confusingly similar to Complainant’s mark because the domain names remove the word BED and add the descriptive term “beauty,” eliminate the spaces and replace the ampersand & with the word “and.” Additionally, Respondent’s <bathebeautyandbeyond.com> domain name adds an additional letter “e.” The addition of a descriptive term to a complainant’s mark will generally not be sufficient to distinguish a domain name from the mark under Policy ¶ 4(a)(i). Kurk Wasserman Consulting, L.L.C. v. ming li, FA 1782613 (Forum May 29, 2018) (“Respondent’s <lilashserum.us> domain name is confusingly similar to the LILASH mark as Respondent merely adds the descriptive term “serum” and the “.us” ccTLD to the mark.”). Additionally, the elimination of spaces may not be sufficient to distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Research Now Group, Inc. v. Pan Jing, FA 1735345 (Forum July 14, 2017) (“The … elimination of spacing [is] considered irrelevant when distinguishing between a mark and a domain name.”). Furthermore, changing an ampersand into the word “and” in a disputed domain name may not be sufficient to distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Russell & Bromley Limited v. KIM H. SUK, FA 1729773 (Forum June 12, 2017) (finding respondent’s <russellandbromley.com> domain name identical to complainant’s RUSSEL & BROMLEY mark, because “[t]he ampersand is a prohibited character in a domain name so there is no difference between the ampersand (in the mark) and the word ‘and’ (in the domain name)”). Therefore, the Panel concludes that the disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s BED BATH & BEYOND trademark and to use it in its domain names, remove the word BED and add the descriptive term “beauty,” eliminate the spaces and replace the ampersand & with the word “and.” Additionally, Respondent’s <bathebeautyandbeyond.com> domain name adds an additional letter “e”;
(b) Respondent registered the disputed domain names on December 4, 2011;
(c) Respondent uses the disputed domain names to divert internet users to Respondent’s webpages which offer goods and services that compete directly with those offered by Complainant;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant submits that Respondent lacks rights and legitimate interests in the <beautybathandbeyond.com> and <bathebeautyandbeyond.com> domain names because Respondent is not commonly known by the disputed domain names and is not authorized by Complainant to use the mark in any way. Where a response is lacking, relevant WHOIS information may be used to identify Respondent. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization from a complainant to use its mark may be further evidence that a respondent is not commonly known by a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). Complainant provides the WHOIS information which identifies Respondent as “Fermon Broome” and nothing in the record indicates Respondent was authorized to use Complainant’s mark in any way. See Amend. Compl. Ex. I. Accordingly, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to use the <beautybathandbeyond.com> and <bathebeautyandbeyond.com> domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Specifically, Complainant submits that Respondent uses the disputed domain names to divert internet users to Respondent’s website which offers competing products and services. Use of a domain name to redirect internet users to a webpage that offers goods and services that compete directly with complainant may not be considered a bona fide offering of goods and services or a legitimate noncommercial fair use per Policy ¶¶ 4(c)(i) and (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant provides screenshots of the webpages associated with the disputed domain names which show Respondent offering various beauty products that compete directly with those offered by Complainant. See Amend. Compl. Ex. H. Therefore, the Panel concludes that Respondent fails to use the disputed domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent registered and uses the <beautybathandbeyond.com> and <bathebeautyandbeyond.com> domain names in bad faith. Specifically, Complainant contends Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the websites of the disputed domain names which offer competing goods and services. Use of a domain name to disrupt complainant’s business by diverting internet users to a webpage which offers goods and services that compete directly with those offered by complainant may be evidence of bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Xylem Inc. and Xylem IP Holdings LLC v. Yens BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Complainant provides screenshots of the webpages associated with the disputed domain names which show Respondent offering different beauty products that compete directly with those offered by Complainant. See Amend. Compl. Ex. H. Consequently, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Secondly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the BED BATH & BEYOND mark and in view of the conduct that Respondent has engaged in when using the disputed domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <beautybathandbeyond.com> and <bathebeautyandbeyond.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: August 6, 2018
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