Bed Bath & Beyond Procurement Co. Inc. (n/k/a Liberty Procurement Co. Inc.) Its Sister Corporations Buy Buy Baby, Inc., (Both wholly owned subsidiaries of Bed Bath & Beyond Inc.) v. Kim Bum
Claim Number: FA1409001580599
Complainant is Bed Bath & Beyond Procurement Co. Inc. (n/k/a Liberty Procurement Co. Inc.) Its Sister Corporations Buy Buy Baby, Inc., (Both wholly owned subsidiaries of Bed Bath & Beyond Inc.) (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Kim Bum (“Respondent”), South Korea.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bedabthandbeyond.com>, <bedbahandbeyond.com>, <bedbathandbeyaond.com>, <bedbathandbeyoind.com>, and <bedbathsndbeyond.com>, registered with Registermaxtrix.Com Corp.
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 National Arbitration Forum electronically on September 19, 2014; the National Arbitration Forum received payment on September 19, 2014.
On September 20, 2014 and September 26, 2014, Registermaxtrix.Com Corp confirmed by e-mail to the National Arbitration Forum that the <bedabthandbeyond.com>, <bedbahandbeyond.com>, <bedbathandbeyaond.com>, <bedbathandbeyoind.com>, and <bedbathsndbeyond.com> domain names are registered with Registermaxtrix.Com Corp and that Respondent is the current registrant of the names. Registermaxtrix.Com Corp has verified that Respondent is bound by the Registermaxtrix.Com 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 October 28, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 17, 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@bedabthandbeyond.com, postmaster@bedbahandbeyond.com, postmaster@bedbathandbeyaond.com, postmaster@bedbathandbeyoind.com, and postmaster@bedbathsndbeyond.com. Also on October 28, 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 November 21, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant uses the BED BATH & BEYOND mark to promote its retail business of selling goods that one might find in the bedroom, bathroom, or beyond those rooms and in other parts of the house. The BED BATH & BEYOND mark is registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,831,709, registered Apr. 19, 1994). Each of these disputed domain names are confusingly similar to the mark in that they slightly misspell the mark without distinguishing the domain names in any way.
Respondent has no rights or legitimate interests in any of the domain names. First, Respondent is not known by the <bedabthandbeyond.com>, <bedbahandbeyond.com>, <bedbathandbeyaond.com>, <bedbathandbeyoind.com>, and <bedbathsndbeyond.com> domain names. All of the <bedabthandbeyond.com>, <bedbahandbeyond.com>, <bedbathandbeyaond.com>, <bedbathandbeyoind.com>, and <bedbathsndbeyond.com> domain names resolve to websites promoting various commercial advertisements related to home goods.
Respondent registered and uses the <bedabthandbeyond.com>, <bedbahandbeyond.com>, <bedbathandbeyaond.com>, <bedbathandbeyoind.com>, and <bedbathsndbeyond.com> domain names in bad faith. Respondent is a serial cybersquatter who has engaged in bad faith in the past. The use of the domain names is disruptive with respect to the mark. Respondent is profiting from a likelihood of Internet user confusion. These domain names are all examples of typosquatting.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the business of the retail sale of goods used in the bedroom, bathroom, or beyond those rooms and in other parts of the house.
2. Complainant is the wholly owned subsidiary of Bed Bath & Beyond Inc., which is the registered proprietor of the BED BATH & BEYOND mark registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,831,709, registered Apr. 19, 1994) and Complainant therefore has trademark rights in the BED BATH & BEYOND mark.
3. Respondent registered the disputed domain names on various dates no earlier than October 10, 2005 and no later than November 27, 2005. The disputed domain names now resolve to websites promoting various commercial advertisements related to home goods.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant submits that it uses the BED BATH & BEYOND mark to promote its retail business of selling goods that one might find in the bedroom, bathroom, or beyond those rooms and in other parts of the house. Complainant submits that the BED BATH & BEYOND mark was registered with the USPTO by Bed Bath & Beyond Inc., the parent company of Complainant (e.g., Reg. No. 1,831,709, registered Apr. 19, 1994 by). The Panel agrees that the USPTO registrations by Bed Bath & Beyond Inc., and their use by Complainant, its wholly owned subsidiary, are sufficient evidence of Complainant’s Policy ¶ 4(a)(i) rights in the mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s BED BATH & BEYOND mark. Complainant argues that each of the disputed domain names is confusingly similar to the mark in that they slightly misspell the mark without distinguishing the domain names in any way. The Panel observes that beyond adding the gTLD “.com,” the domain names replace the ampersand with the term “and” (or a misspelling thereof) and otherwise introduce the rest of the mark with a spelling error included in the mark. The Panel agrees that such basic changes to the mark are insufficient to overcome the domain names’ Policy ¶ 4(a)(i) confusing similarity. See Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such “generic” typos do not change respondent’s infringement on a core trademark held by the complainant); Lucky Brand Dungarees, Inc. v. Cole, FA 363048 (Nat. Arb. Forum Dec. 28, 2004) (stating that, “[i]t is well established that neither the deletion of a space between words in a trademark nor the addition of a generic top-level domain distinguish a domain name from the trademark”).
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), 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has taken Complainant’s BED BATH & BEYOND trademark and used it in its domain names, making only minor spelling alterations, thus implying that the domain names are official domain names of Complainant and that they will lead to official websites of Complainant;
(b) Respondent has then caused the domain names to resolve to websites promoting various commercial advertisements related to home goods;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant argues that Respondent is not commonly known by the <bedabthandbeyond.com>, <bedbahandbeyond.com>, <bedbathandbeyaond.com>, <bedbathandbeyoind.com>, and <bedbathsndbeyond.com> domain names. The Panel agrees with that submission and finds that as the registrant of record in the WHOIS information lists “Kim Bum” as registrant, there is no basis for holding for Respondent under Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute);
(e)Complainant next argues that all of the <bedabthandbeyond.com>, <bedbahandbeyond.com>, <bedbathandbeyaond.com>, <bedbathandbeyoind.com>, and <bedbathsndbeyond.com> domain names resolve to websites promoting various commercial advertisements related to home goods. The Panel takes note of Exhibit H, showing how all of the domain names’ resolving websites are dedicated to promoting hyperlink advertising that redirects Internet users to other websites on the Internet. The Panel finds that using the domain names to promote such advertising illustrates that Respondent has little in the way of a bona fide offering in store under Policy ¶ 4(c)(i), and similarly there is no Policy ¶ 4(c)(iii) legitimate noncommercial or fair use visible through the use of these websites. See 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).”).
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 is a serial cybersquatter who has engaged in bad faith in the past. The Panel takes note of three prior UDRP decisions decided against Respondent. See Ashley Furniture Indus., Inc. v. Kim Bum LLC / Kim Bum, FA 1467301 (Nat. Arb. Forum Nov. 27, 2012); W.W. Grainger, Inc. v. Kim Bum LLC/Kim Bum, FA 1470241 (Nat. Arb. Forum Dec. 26, 2012); and Boeing Co. v. Kim Bum, FA 1510222 (Nat. Arb. Forum Aug. 30, 2013). The Panel finds that these prior UDRP decisions support the conclusion that Policy ¶ 4(b)(ii) bad faith has been made out. 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).”).
Secondly, Complainant argues that the use of the domain names is disruptive with respect to the mark. The Panel agrees that the advertising features on the domain names, and as seen in Exhibit H, suggest that the websites have “targeted” advertising that selects advertisements relevant to particular search terms associated with the BED BATH & BEYOND mark. The Panel agrees that the use of the domain names to send users to websites that include directly competing offers shows Policy ¶ 4(b)(iii) bad faith and the Panel so finds. 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).”).
Thirdly, Complainant argues that Respondent is profiting from a likelihood of Internet user confusion by way of hyperlink advertising. The Panel again notes the use of these domain names for hyperlink advertisements. See Compl., at Attached Ex. H. The Panel agrees that there is a likelihood of confusion in using the disputed domain names to promote hyperlink advertising, as Respondent profits from these hyperlink advertisements when Internet users click on them. See 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).
Complainant also argues that the domain names are all examples of typosquatting. The Panel notes that each of the <bedabthandbeyond.com>, <bedbahandbeyond.com>, <bedbathandbeyaond.com>, <bedbathandbeyoind.com>, and <bedbathsndbeyond.com> domain names feature a slight misspelling of the BED BATH & BEYOND mark. In Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005), the panel held that there was typosquatting when the domain names were effectively common misspellings of the underlying mark, and held that such conduct amounted to bad faith under Policy ¶ 4(a)(iii). Accordingly, the Panel agrees that this typosquatting behavior is further evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
Finally, 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 Complainant’s trademark and its subsequent use of 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 <bedabthandbeyond.com>, <bedbahandbeyond.com>, <bedbathandbeyaond.com>, <bedbathandbeyoind.com>, and <bedbathsndbeyond.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: November 24, 2014
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