Bath & Body Works Brand Management, Inc. v. khampol pimsri
Claim Number: FA1206001448810
Complainant is Bath & Body Works Brand Management, Inc. (“Complainant”), represented by Melise R. Blakeslee of Sequel Technology & IP Law, PLLC, Washington, D.C., USA. Respondent is khampol pimsri (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <blackfridaybathandbodyworks.us>, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 15, 2012; the National Arbitration Forum received the hard copy of the Complaint on June 15, 2012.
On June 15, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <blackfridaybathandbodyworks.us> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On June 18, 2012, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 9, 2012 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 18, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Respondent’s <blackfridaybathandbodyworks.us> domain name, the domain name at issue, is confusingly similar to Complainant’s BATH & BODY WORKS mark.
Respondent does not have any rights or legitimate interests in the domain name at issue.
Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant uses the famous mark BATH & BODY WORKS as the name of more than 1,600 Bath & Body Works retail stores located throughout the United States and Canada, which advertise, offer for sale and sell a wide range of items bearing the BATH & BODY WORKS mark. Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for the BATH & BODY WORKS mark (e.g., Reg. No. 1,742,062 registered December 22, 1992). Respondent, khampol pimsri, registered the <blackfridaybathandbodyworks.us> domain name on October 21, 2011. Respondent’s disputed domain name is confusingly similar to Complainant’s mark, Respondent is not affiliated with Complainant, is not authorized to use the BATH & BODY WORKS mark and is not commonly known by the disputed domain name. Respondent’s disputed domain name resolves to a website featuring photographs and information about various personal care products, including Complainant’s products, with links to <amazon.com> webpages that sell the products. Respondent is commercially gaining from its bad faith registration and use of the disputed domain name and had knowledge of Complainant’s rights in the BATH & BODY WORKS mark prior to registering the disputed domain name.
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 or 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.”).
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Identical and/or Confusingly Similar
Complainant has registered its BATH & BODY WORKS mark with the USPTO (Reg. No. 1,742,062 registered December 22, 1992). Complainant’s trademark registrations are sufficient for it to establish rights in the mark under Policy ¶ 4(a)(i). Complainant has established rights in its mark under Policy ¶ 4(a)(i) via its trademark registrations with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of [UDRP] ¶ 4(a)(i).”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
The disputed domain name contains Complainant’s entire mark, absent the space and substituting the word “and” for the ampersand, while adding the generic terms “black” and “friday.” Further, the disputed domain name contains the country-code top-level domain (“ccTLD”) “.us.” The substitution of the term “and” for an ampersand in a mark is not sufficient to render the domain name distinct from the mark in question. 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). Further, the addition of generic terms to a mark within in a domain name have also been found insufficient to distinguish a domain name from a mark. See Quixtar Inv., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety the complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar). Lastly, the removal of spaces and the addition of a generic top-level domain (“gTLD”) such as “.com” or “.net,” or the addition of a ccTLD, such as “.us,” has been found to be irrelevant under Policy ¶ 4(a)(i). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to [UDRP] ¶ 4(a)(i).”); see also CDW Computer Ctrs., Inc. v. The Joy Co., FA 114463 (Nat. Arb. Forum July 25, 2002) (finding that the addition of the ccTLD “.us” is inconsequential and does not defeat a claim of confusing similarity). Therefore, Respondent’s <blackfridaybathandbodyworks.us> domain name is confusingly similar to Complainant’s BATH & BODY WORKS mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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 does not present an argument under Policy ¶ 4(c)(i) of the usTLD Policy. However, Respondent has not come forward to claim that it has a trademark or service mark registration encompassing the disputed domain name. As such, Respondent does not have rights or legitimate interests under Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name).
Respondent is not affiliated with Complainant, has not been licensed or permitted to use the BATH & BODY WORKS mark, and is not commonly known by the disputed domain name. The WHOIS information on record for the disputed domain name identifies the registrant as “khampol pimsri.” Based upon this information, and all other information in the record, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(iii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent’s disputed domain name resolves to a website featuring photographs and information about various personal care products, including Complainant’s products, with links to <amazon.com> webpages that sell the products. Respondent derives revenue from this use of the BATH & BODY WORKS mark and is not making a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute a bona fide offering of goods or services under UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use under UDRP ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
The disputed domain name features “links to a web site purporting to resell Complainant’s goods and competing goods,” which constitutes a disruption of Complainant’s business. Respondent has disrupted Complainant’s business through its use of the disputed domain name, and the Panel finds that such disruption is evidence of both bad faith registration and use under Policy ¶ 4(b)(iii). See Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent registered each of the disputed domain names in order to gain customers and to disrupt Complainant's business of authorizing dealers to sell its CATERPILLAR equipment.”).
Further, Respondent’s registration and use of the disputed domain name is in bad faith under Policy ¶ 4(b)(iv). Respondent is using the disputed domain name to drive Internet traffic to online sales of Complainant’s products in competition with Complainant’s own offerings, as well as to competing products. Respondent receives commercial compensation for its registration and use of the disputed domain name in such a manner. Confusion is caused by the domain name registration itself as well as the resolving content on the website. Accordingly, Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods).
Due to Complainant’s long-standing trademark registrations, Respondent must have had constructive knowledge of Complainant's rights in the BATH & BODY WORKS mark when Respondent registered the disputed domain name. Respondent’s website content also shows that Respondent had actual knowledge of Complainant and its rights in the BATH & BODY WORKS. See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <blackfridaybathandbodyworks.us> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: July 21, 2012
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