national arbitration forum

 

DECISION

 

Blue Nile Inc. v. Mumbai Domains c/o Namase Patel

Claim Number: FA0909001286707

 

PARTIES

Complainant is Blue Nile Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA.  Respondent is Mumbai Domains c/o Namase Patel (“Respondent”), India.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <blluenile.com>, <blueniile.com>, and <bluenille.com>, registered with Fabulous.com Pty Ltd.

 

PANEL

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.

 

Louis E. Condon as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 28, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 29, 2009.

 

On September 29, 2009, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <blluenile.com>, <blueniile.com>, and <bluenille.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-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On October 2, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 22, 2009 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@blluenile.com, postmaster@blueniile.com, and postmaster@bluenille.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On October 28, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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."  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 makes the following assertions:

 

1.      Respondent’s <blluenile.com>, <blueniile.com>, and <bluenille.com> domain names are confusingly similar to Complainant’s BLUE NILE mark.

 

2.      Respondent does not have any rights or legitimate interests in the <blluenile.com>, <blueniile.com>, and <bluenille.com> domain names.

 

3.      Respondent registered and used the <blluenile.com>, <blueniile.com>, and <bluenille.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Blue Nile Inc., is a leading online retailer of certified diamonds and fine jewelry.  Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the BLUE NILE mark (e.g., Reg. No. 2,450,117 issued May 8, 2001).

 

Respondent registered the <blluenile.com>, <blueniile.com> domain names on March 20, 2005, and the <bluenille.com> domain name on May 10, 2004.  Respondent’s disputed domain names resolve to websites displaying third-party links to websites offering online diamond and jewelry products in competition with Complainant.

 

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."

 

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.”).

 

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.

 

Identical and/or Confusingly Similar

 

Complainant asserts and has submitted evidence of federal trademark registrations for the BLUE NILE mark with the USPTO (e.g., Reg. No. 2,450,117 issued May 8, 2001).  As a result, the Panel finds that Complainant’s federal trademark registration with the USPTO sufficiently establishes Complainant’s rights in the BLUE NILE mark pursuant to Policy ¶ 4(a)(i).  See Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i)); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)… .”).

 

Complainant contends that Respondent’s disputed domain names are confusingly similar to Complainant’s BLUE NILE mark pursuant to Policy ¶ 4(a)(i).  Each of Respondent’s disputed domain names contain a misspelled version of Complainant’s mark, omit spacing between the terms, and add the generic top-level domain (“gTLD”) “.com.”  The Panel finds that a disputed domain name that contains a misspelled version of a complainant’s mark, especially when it is misspelled by only one letter, creates a confusing similarity between the disputed domain name and the complainant’s mark.  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); see also Granarolo S.p.A. v. Dinoia, FA 649854 (Nat. Arb. Forum Apr. 17, 2006) (finding that the <granarolo.com> domain name was confusingly similar to the complainant’s registered G GRANAROLO mark).  In addition, the Panel finds that the omission of spacing and the addition of a gTLD are irrelevant in distinguishing a disputed domain name from an established mark.  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 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).  Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant’s BLUE NILE mark pursuant to Policy ¶ 4(a)(i).

 

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

 

Rights or Legitimate Interests

 

To begin, Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain names.  Once Complainant makes such a showing, the burden then shifts to Respondent and Respondent must establish that it has rights or legitimate interests in the disputed domain names.  The Panel finds that Complainant has sufficiently made its prima facie showing under Policy ¶ 4(a)(ii).  The burden now shifts to Respondent, from which no response was received.  See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).

 

Respondent is listed in the WHOIS information for the disputed domain name as “Mumbai Domains c/o Namese Patel,” which does not indicate that Respondent is commonly known by the disputed domain names.  Respondent has not offered any evidence to suggest that Respondent is commonly known by the disputed domain names.  Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).  See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).

 

Respondent is using the disputed domain names to display links advertising third-party websites in competition with Complainant’s offering of diamonds and jewelry products.  The Panel infers that Respondent is using the disputed domain names to earn click-through fees, and thus finds that Respondent has not made 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).  See Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).

 

Additionally, Respondent has engaged in the practice known as “typosquatting.”  This occurs when domain names are registered with the intent of targeting Internet users who commit typographical errors, in this case the misspelling of Complainant’s BLUE NILE mark.  This practice constitutes evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).  See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of the complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”); see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”).

 

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

 

 

 

Registration and Use in Bad Faith

 

The Panel finds that Respondent’s registration of multiple domain names containing Complainant’s BLUE NILE mark is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(ii).  See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks).

 

The Panel finds that Respondent’s use of the disputed domain names to disrupt the business of Complainant by displaying links to competitors offering diamonds and jewelry products is further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).

 

Respondent is using the disputed domain names to intentionally divert Internet users to the associated website, which displays third-party links to competing websites.  In cases such as this, the Panel presumes that Respondent is collecting click-through fees and attempting to profit by creating a likelihood of confusion between Complainant’s BLUE NILE mark and the confusingly similar disputed domain names.  The Panel finds that Respondent’s use of the dipsuted domain names is further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  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); see also 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).”).

 

Additionally, the Panel has determined that Respondent has engaged in typosquatting.  The Panel need only note here that typosquatting is generally considered as sufficient evidence itself of bad faith registration and use under Policy ¶ 4(a)(iii).  The Panel so finds in the instant case.  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).”); see also Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy 4 ¶ (a)(iii)).

 

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

 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

 

Accordingly, it is Ordered that the <blluenile.com>, <blueniile.com>, and <bluenille.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Louis E. Condon, Panelist

Dated:  November 9, 2009

 

 

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