Bath & Body Works Brand Management, Inc. v. PPA Media Services / Ryan G Foo
Claim Number: FA1307001510255
Complainant is Bath & Body Works Brand Management, Inc. (“Complainant”), represented by Holly Pranger of Pranger Law Group, California, USA. Respondent is PPA Media Services / Ryan G Foo (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bathbodyworks.com>, registered with INTERNET.BS 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 17, 2013; the National Arbitration Forum received payment on July 17, 2013.
On July 24, 2013, INTERNET.BS CORP. confirmed by e-mail to the National Arbitration Forum that the <bathbodyworks.com> domain name is registered with INTERNET.BS CORP. and that Respondent is the current registrant of the name. INTERNET.BS CORP. has verified that Respondent is bound by the INTERNET.BS 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 July 29, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 19, 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@bathbodyworks.com. Also on July 29, 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 august 26, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant’s business uses the BATH & BODY WORKS trademark in connection with its skin care products, perfumes, colognes, soaps, cosmetics, and home fragrances and in connection with its official website located at <bathandbodyworks.com>.
Complainant has rights in the BATH & BODY WORKS trademark through its registrations with the United States Patent and Trademark Office. Complainant’s BATH & BODY WORKS trademark has been used continuously since as early as September 30, 1990.
Respondent’s <bathbodyworks.com> domain name is confusingly similar to Complainant’s BATH & BODY WORKS trademark.
Respondent has no rights or legitimate interests in the <bathbodyworks.com> domain name. Respondent is not commonly known by the disputed domain name. The registrant for the domain name is ”PPA Media Services Ryan G Foo.” Complainant has never authorized Respondent to use its marks.
Respondent’s <bathbodyworks.com> domain name was registered on March 20, 2002.
Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent’s disputed domain name redirects to a website featuring a survey for which prizes may be won.
Respondent’s <bathbodyworks.com> domain name was registered and is being used in bad faith. Respondent’s use of the disputed domain name confuses Internet users as to the source, sponsorship, affiliation or endorsement of Respondent’s redirected websites. Respondent’s disputed domain name redirects to a website featuring a link to a survey website soliciting information from Internet users. Respondent had knowledge of Complainant’s trademarks prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant own USPTO registered trademarks for BATH & BODY WORKS.
Respondent is not affiliated with Complainant and is not authorized to use Complainant’s trademarks mark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired trademark rights in the relevant trademarks.
Respondent uses the at-issue domain name to redirect to website featuring a link to a survey website soliciting information from Internet users and further redirects therefrom.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of BATH & BODY WORKS with the USPTO sufficiently demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). Complainant need not have registered its mark where Respondent operates to demonstrate such rights. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i)”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
The at-issue domain name differs from Complainant’s trademark in that the spaces and the ampersand are removed from Complainant’s mark, and the top level domain name “com” is appended thereto. Variations such as these are insufficient to differentiate an at-issue domain name from a given mark. Therefore, the Panel concludes that the <bathbodyworks.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant); see also McKinsey Holdings, Inc. v. Indidom, D2000-1616 (WIPO Jan. 31, 2001) (finding that the removal of the ampersand from “McKinsey & Company” does not affect the user’s understanding of the domain name, and therefore the domain name <mckinseycompany.com> is identical and/or confusingly similar to the mark “McKinsey & Company”); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s uncontroverted prima facie showing acts conclusively.
The WHOIS information for the at-issue domain names identifies the domain name registrant as “PPA Media Services Ryan G Foo” and the record before the Panel contains no evidence that tends to prove that Respondent is otherwise commonly known by the <bathbodyworks.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <bathbodyworks.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s domain name resolves to a website featuring a survey for which prizes are offered in exchange for the website visitor’s time in filling out the survey. The survey asks questions seeking personal information from the user. When the survey is completed, the Internet user is redirected to another website asking additional questions regarding third party brands and indicating that the questions must be answered prior to winning a prize. Respondent undoubtedly receives referral fees from the various “marketing partners” in conjunction with this scheme. This use of the domain name 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). See Victoria’s Secret Stores Brand Mgmt., Inc. v. egyGossip.com, FA 1288062 (Nat. Arb. Forum Nov. 20, 2009) (finding that Respondent lacked rights and legitimate interests where the disputed domain name was used to solicit the completion of a survey by Internet users).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below Policy ¶4(b) bad faith circumstances are present and there is additional non-Policy ¶4(b) evidence from which the Panel may also conclude that Respondent acted in bad faith pursuant to Policy ¶4(a)(iii).
Respondent creates a likelihood of confusion between the at-issue domain name and Complainant’s trademark and business for Respondent’s benefit. As mentioned above, Respondent uses the domain name to redirect to a survey website that requests personal information from visitors. Visitors are offered gifts, prizes, coupons, or discounts in exchange for participation in the surveys and must provide personal information. The survey’s fine print states that by providing the requested information, the user’s contact details will be forwarded to various “marketing partners.” Respondent is undoubtedly collecting referral fees from third parties interests. Respondent’s use of the confusingly similar domain name to address a survey website in this manner demonstrates bad faith under Policy ¶ 4(b)(iv). See Homer TLC, Inc. v. Wang, FA 1336037 (Nat. Arb. Forum Aug. 23, 2010) (finding that, where a disputed domain name offers incentives for the completion of surveys, “Internet users are likely to believe that such activities are sponsored by or affiliated with Complainant and is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv)”). Featuring advertisements for third parties likewise attracts Internet users and confuses them as to the relationship between a complainant and a respondent’s disputed website. Using the domain name in this manner demonstrates bad faith under Policy ¶ 4(b)(iv). See ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where the respondent linked the domain name to another domain name, <iwin.com>, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain).
Moreover, Respondent’s use of the confusingly similar domain name is indicative of a phishing scheme. Phishing is a practice intended to defraud consumers into revealing personal and proprietary information and suggests bad faith. See Wells Fargo & Co. v. WhoisGuard, FA 1103650 (Nat. Arb. Forum Dec. 13, 2007) (“There is no dispute that respondent previously used the disputed domain name to obtain personal and financial information from Internet customers of complainant. This fraudulent use [is] known as ‘phishing’”); see also Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers).
Finally, Respondent had actual knowledge of Complainant’s rights in the BATH & BODY WORKS trademark before it registered the <bathbodyworks.com> domain name. Respondent’s prior knowledge is evident from the notoriety of Complainant mark as well as the fact that Respondent is making an overt use of Complainant’s trademark in the <bathbodyworks.com> domain name without any reasonable motivation to do so except to exploit Complainant’s trademark. Registering and using a confusingly similar domain with knowledge of a complainant’s rights in such domain name indicates bad faith registration and use pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bathbodyworks.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 27, 2013
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