Bed Bath & Beyond Procurement Co. Inc. (n/k/a Liberty Procurement Co. Inc.) and its sister corporation Buy Buy Baby, Inc. (both wholly owned subsidiaries of Bed Bath & Beyond Inc.) v. Domain Manager / samirnet -domain names for sale
Claim Number: FA1305001502697
Complainant is Bed Bath & Beyond Procurement Co. Inc. (n/k/a Liberty Procurement Co. Inc.) and its sister corporation Buy Buy Baby, Inc. (both wholly owned subsidiaries of Bed Bath & Beyond Inc.) (collectively “Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Domain Manager / samirnet -domain names for sale (“Respondent”), Bangalore, India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bednathbeyond.com> and <bedbathandbeyuond.com>, registered with Gal Communication (CommuniGal) Ltd.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 31, 2013; the National Arbitration Forum received payment on May 31, 2013.
On June 3, 2013, Gal Communication (CommuniGal) Ltd confirmed by e-mail to the National Arbitration Forum that the <bednathbeyond.com> and <bedbathandbeyuond.com> domain names are registered with Gal Communication (CommuniGal) Ltd and that Respondent is the current registrant of the names. Gal Communication (CommuniGal) Ltd has verified that Respondent is bound by the Gal Communication (CommuniGal) Ltd 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 June 3, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 24, 2013 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@bednathbeyond.com, postmaster@bedbathandbeyuond.com. Also on June 3, 2013, 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 July 2, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 uses the BED BATH & BEYOND mark in connection with its retail operations and business selling household goods in a brick-and-mortar retail chain since 1988. Complainant has established its rights by way of United States Patent & Trademark Office (“USPTO”) trademark registrations (Reg. No. 1,831,709 registered April 19, 1994).
· Respondent registered the <bednathbeyond.com> and <bedbathandbeyuond.com> domain names, which make various alterations to the BED BATH & BEYOND mark such as the juxtaposition of characters or intentional misspelling of words.
· Respondent has not been commonly known by these domain names. Respondent has never received a sponsorship or authorization for the use of Complainant’s marks.
· Respondent has employed these domain names in an endeavor to promote competing and unrelated hyperlinks on the websites associated with the domain names.
· Respondent’s <bednathbeyond.com> and <bedbathandbeyuond.com> domain names represent a classic example of typosquatting.
· Respondent has listed the domain names for sale to the general public.
· Respondent’s registration of two infringing domain names illustrates a pattern of bad faith registration for purposes of preventing Complainant from reflecting its mark in domain names.
· Respondent’s sole purpose for holding these domain names is to confuse Internet users into clicking on hyperlinks that generate advertising revenues for Complainant. Respondent uses these hyperlinks to promote Complainant’s competitors.
· Respondent’s typosquatting behavior is in itself evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the BED BATH & BEYOND mark. Respondent’s domain names are confusingly similar to Complainant’s BED BATH & BEYOND mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <bednathbeyond.com> and <bedbathandbeyuond.com> domain names, and that Respondent registered and uses the domain names 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."
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.”).
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are three Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are three Complainants in this matter: Bed Bath & Beyond Procurement Co. Inc. (n/k/a Liberty Procurement Co. Inc.); its sister corporation Buy Buy Baby, Inc.; and the parent company Bed Bath & Beyond Inc. The Forum’s Supplemental Rule 1(e) allows multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
Based upon the information provided by the complaining parties, I find a sufficient link between them to permit them to proceed in accordance with Forum Supplemental Rule 1(e).
Complainant claims that it uses the BED BATH & BEYOND mark in connection with its retail operations and business selling household goods in a brick-and-mortar retail chain. Complainant has established its rights by way of USPTO trademark registrations (Reg. No. 1,831,709 registered April 19, 1994). USPTO registrations are satisfactory evidence of Policy ¶ 4(a)(i) rights, even if Respondent is located outside the United States. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of Policy ¶ 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business); Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶ 4(a)(i)).
Complainant next argues that Respondent registered the <bednathbeyond.com> and <bedbathandbeyuond.com> domain names, which make various alterations to the BED BATH & BEYOND mark such as the juxtaposition of characters or intentional misspelling of words. The <bednathbeyond.com> uses a misspelling of the word “bath” and removes the ampersand. Neither of these alterations distinguish the domain name from the mark. 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); 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). The Panel also agrees that the addition of the letter “u” to the mark in the <bedbathandbeyuond.com> domain name enhances confusing similarity. See Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i)). In both instances, the addition of the generic top-level domain (“gTLD”) “.com” is irrelevant. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Thus, the Panel concludes that the<bednathbeyond.com> and <bedbathandbeyuond.com> domain names are confusingly similar to the mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent has not been commonly known by these domain names. Complainant asserts that Respondent has never received a sponsorship or authorization for the use of Complainant’s marks. The WHOIS information states that “Domain / Manager / samirnet –domain names for sale” is the registrant. The Panel thus agrees that Respondent is not commonly known by the <bednathbeyond.com> and <bedbathandbeyuond.com> domain names under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant further alleges that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). First, Complainant contends that Respondent is using the disputed domain names to promote hyperlinks to Complainant’s competitors in the home furnishing market. In H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the panel held that the respondent did not use the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use, because the disputed domain names resolved to a website featuring links to third parties offering products in direct competition with those offered under the complainant’s mark. In the instant case, a screenshot provided by Complainant demonstrates that the website resolving from the <bednathbeyond.com> domain name contains links to third party competitors, including links entitled “Patio Furniture at Target” and “Handmade Wood Furniture.” Another screenshot provided by Complainant demonstrates that the website resolving from the <bedbathandbeyuond.com> domain name also contains links to third parties, including links entitled “Bed in a Bag Bedding” and “Bedding Superstore.” Complainant asserts that the products it provides under its BED BATH & BEYOND mark include furniture and bedding. Thus, the Panel finds that the at-issue websites contain links to products in direct competition with those offered under Complainant’s mark. Accordingly, the Panel holds that Respondent’s use of the disputed domain name was not protected under Policy ¶¶ 4(c)(i) and (iii).
Finally, Complainant alleges that Respondent’s use of the <bednathbeyond.com> and <bedbathandbeyuond.com> domain names represents a classic example of typosquatting, which is further evidence that Respondent lacks rights or legitimate interests in the domain names under Policy ¶ 4(a)(ii). A respondent engages in typosquatting when it takes advantage of a common typographical error or misspelling made by Internet users. See, e.g., Neiman Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Nat. Arb. Forum July 23, 2002) (finding that the <neimanmacus.com> domain name was a simple misspelling of the complainant’s NEIMAN MARCUS mark and was a classic example of typosquatting). Accordingly, the Panel finds that because Respondent has engaged in typosquatting, Respondent lacks rights or legitimate interests in the domain names for yet another reason.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent has listed the domain names for sale to the general public. Respondent has apparently listed each of the domain names for sale for $800.00. The Panel agrees that registration and use of these domain names for purposes of reselling them is evidence of bad faith under Policy ¶ 4(b)(i). See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).
Complainant believes it was Respondent’s intent to confuse Internet users into mistakenly visiting these websites and then click on hyperlinks that generate advertising revenues for Respondent. Complainant asserts that Respondent uses these hyperlinks to promote Complainant’s competitors, as well as to redirect Internet users to Complainant’s own websites. The Panel agrees that Respondent’s Policy ¶ 4(b)(iv) bad faith is apparent through its use of these confusingly similar domain names for purposes of sending Internet users to various websites, including Complainant’s competitors, so as to generate advertising revenue for Respondent. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes) .
Complainant finally argues that Respondent’s typosquatting behavior is in itself evidence of bad faith. The Panel agrees that registration of these domain names that merely modify Complainant’s mark to include common misspellings is evidence of Policy ¶ 4(a)(iii) bad faith on behalf of Respondent. 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).”)/
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bednathbeyond.com> and <bedbathandbeyuond.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 9, 2013
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