Blue Nile, Inc. v. Domain Explorer
Claim Number: FA1110001411381
Complainant is Blue Nile, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Domain Explorer (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bluenyle.com>, registered with eNom, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 13, 2011; the National Arbitration Forum received payment on October 13, 2011.
On October 14, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <bluenyle.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 17, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 7, 2011 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@bluenyle.com. Also on October 17, 2011, 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 14, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant sells certified diamonds and fine jewelry online under its BLUE NILE trademark.
Complainant owns trademark registrations on file with the United States Patent and Trademark Office (“USPTO”) for its BLUE NILE mark (including Reg. No. 2,450,117, registered May 8, 2001).
Respondent registered the <bluenyle.com> domain name on February 5, 2003.
The disputed domain name resolves to a website containing hyperlinks to third-party websites offering products that compete with the business of Complainant.
Respondent has been the respondent in previous UDRP proceedings in which the disputed domain names were transferred to the respective complainants.
Respondent’s disputed <bluenyle.com> domain name is confusingly similar to Complainant’s BLUE NILE mark.
Respondent is not permitted to use Complainant’s BLUE NILE trademark in a domain name.
Respondent has not been commonly known by the disputed domain name.
Respondent does not have any rights to or legitimate interests in the domain name <bluenyle.com>.
Respondent registered and used the <bluenyle.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representa-tions 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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has rights in its BLUE NILE trademark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that a complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering them with the USPTO); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006):
Complainant has established rights in the … mark through registration of the mark with the USPTO.
Respondent’s <bluenyle.com> domain name contains a misspelling of Complainant’s BLUE NILE mark, replacing the letter “i” with the letter “y.” This difference between the domain name and the mark from which it was derived is insufficient to distinguish the domain under the standards of Policy ¶ 4(a)(i). See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to a complainant's BELKIN mark because the domain merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Intelius, Inc. v. Hyn, FA 703175 (Nat. Arb. Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to a complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar).
The disputed domain name also contains the generic top-level domain (“gTLD”) “.com” and does not include the space separating the terms of the mark. These changes are irrelevant to a Policy ¶ 4(a)(i) analysis because gTLDs are required in a domain name and spaces are impermissible. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007), finding that:
spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name is confusingly similar to the complainant’s mark.
Thus, the Panel concludes that Respondent’s <bluenyle.com> domain name is confusingly similar to Complainant’s BLUE NILE trademark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have rights to or legitimate interests in the <bluenyle.com> domain name. Under Policy ¶ 4(a)(ii), once Complainant makes out a prima facie case in support of this allegation, the burden shifts to Respondent to prove that it does have such rights or interests. 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 a complainant, the burden shifts to a respondent to demonstrate its rights or legitimate interests in a disputed domain name).
Complainant has made out a sufficient prima facie case under this head of the Policy. Therefore, and owing to Respondent’s failure to respond to the Complaint, we may presume that Respondent does not have rights to or legitimate interests in the disputed domain name. See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004), finding that, because a respondent failed to submit a response to a UDRP complaint:
Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.
Nonetheless, we will examine the evidence of record, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the <bluenyle.com> domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny, that Respondent is not permitted to use Complainant’s BLUE NILE mark in a domain name, and that Respondent is not commonly known by the disputed <bluenyle.com> domain name. Moreover, the pertinent WHOIS information identifies the registrant of the domain only as “Domain Explorer,” which does not resemble the contested domain name. On this record, we conclude that Respondent is not commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in the domain within the contemplation of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names, and so had no rights to or legitimate interests in the domains under Policy ¶ 4(c)(ii), where the relevant WHOIS information, as well as all other information in the record, gave no indication that that respondent was commonly known by the disputed domains, and where a complainant had not authorized that respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name where there was no evidence in the record showing that that respondent was commonly known by that domain name, and where a complainant asserted that it did not authorize or license that respondent’s use of its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent’s <bluenyle.com> domain name resolves to a website that features hyperlinks to third-party websites offering products that compete with Complainant’s jewelry business. And, in the circumstances here presented, we may comfortably presume that Respondent profits in the form of click-through or similar fees for each visit of an Internet user to one of the sponsored links. We conclude that Respondent’s use of the disputed domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the <bluenyle.com> domain name under Policy ¶ 4(c)(iii). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007), finding that:
using the confusingly similar … domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).
Finally, under this head of the Policy, Respondent’s <bluenyle.com> domain name contains an evidently deliberate misspelling of Complainant’s BLUE NILE mark. This is evidence that Respondent registered the disputed domain name for the purpose of taking advantage of Internet users who misspell Complainant’s mark in searching for Complainant’s website, a behavior denominated typo-squatting, which stands as evidence that Respondent lacks both rights to and legitimate interests in the <bluenyle.com> domain name under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, a respondent had “engaged in typosquatting, which provides additional evidence that respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that a respondent lacked rights and legitimate interests in 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 thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent has been a respondent in previous UDRP proceedings in which disputed domain names were transferred to various complainants. See Zoller IP Holdings, LLC v. Domain Explorer, FA 670052 (Nat. Arb. Forum May 12, 2006); see also Expedia Inc. v. Domain Explorer, FA 904266 (Nat. Arb. Forum Mar. 19, 2007); further see ACCOR v. Domain Explorer, D2007-0318 (WIPO May 29, 2007); and see Travelocity.com LP v. Domain Explorer, FA 1312527 (Nat. Arb. Forum Apr. 27, 2010). From this we conclude that Respondent registered and uses the <bluenyle.com> domain name as a part of a pattern of bad faith registration and use within the meaning of Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where a respondent had been subject to several UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of others); see also Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005) (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another UDRP proceeding against the respondent to find that “this is part of a pattern of such registrations”).
In addition, Respondent’s registration and use of the disputed domain name as alleged in the Complaint disrupts Complainant’s business, which evidences bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a contested domain name to attract Internet users to a directory website containing links to the websites of a complainant’s commercial competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007):
This Panel concludes that by redirecting Internet users seeking information on Complainant’s … institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
Respondent presumably benefits commercially from the visits of Internet users to the websites resolving from the hyperlinks featured on its website. Respondent is attempting to profit in this manner from the confusion created by its domain name’s confusing similarity to Complainant’s trademark as to the possibility of Complainant’s affiliation with the domain name. This is evidence that Respondent registered and uses the <bluenyle.com> domain name in bad faith under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent’s domain name resolved to a website offering links to third-party websites featuring services similar to those of a 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).
We have already determined that Respondent’s registration and use of the <bluenyle.com> domain name is evidence of typo-squatting. Typo-squatting is itself evidence of bad faith registration and use of the contested domain under Policy ¶ 4(a)(iii). See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that a respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typo-squatting in its purest form); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that a respondent engaged in typo-squatting, which is evidence of bad faith registration and use of a domain name under Policy ¶ 4(a)(iii)).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <bluenyle.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 25, 2011
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