Bed Bath & Beyond Procurement Co. Inc. (n/k/a Liberty Procurement Co. Inc.) v. Private Registrations Aktien Gesellschaft / Domain Admin
Claim Number: FA1307001510612
Complainant is Bed Bath & Beyond Procurement Co. Inc. (n/k/a Liberty Pro-curement Co. Inc.) (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Private Registrations Aktien Gesellschaft / Domain Admin (“Respondent”), St. Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bedbathandbeypnd.com>, registered with BIG-ROCK SOLUTIONS LIMITED.
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 electron-ically on July 19, 2013; the National Arbitration Forum received payment on July 19, 2013.
On July 20, 2013, BIGROCK SOLUTIONS LIMITED confirmed by e-mail to the National Arbitration Forum that the <bedbathandbeypnd.com> domain name is registered with BIGROCK SOLUTIONS LIMITED and that Respondent is the current registrant of the name. BIGROCK SOLUTIONS LIMITED has verified that Respondent is bound by the BIGROCK SOLUTIONS LIMITED 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 22, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 12, 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@bedbathandbeypnd.com. Also on July 22, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respond-ent via post and fax, to all entities and persons listed on Respondent’s registra-tion 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 19, 2013, pursuant to Complainant's request to have the dispute de-cided 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 Not-ices, 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 uses the BED BATH & BEYOND trademark in connection with the marketing of online, retail store and mail order services featuring linen products, home furnishings, toys, books, furniture and kitchen appliances, as well as other household appliances and accessories.
Complainant holds registrations for the BED BATH & BEYOND service mark, on file with the United States Patent and Trademark Office ("USPTO") (including Registry No. 1,831,709, registered April 19, 1994).
Complainant registered the domain name <bedbathandbeyond.com> on Novem-ber 17, 1996, and has used the domain name in commerce ever since.
Respondent registered the disputed domain name on November 9, 2005.
The <bedbathandbeypnd.com> domain name is confusingly similar to Complain-ant’s BED BATH & BEYOND mark.
Respondent has not been commonly known by the disputed domain name.
Respondent is neither affiliated with Complainant, nor has Complainant given Respondent permission to use the BED BATH & BEYOND mark.
Respondent is not using the disputed domain name to provide a bona fide offer-ing of goods or services, nor in a legitimate noncommercial or fair use.
Respondent uses the domain name, presumably to acquire revenue, by redirect-ing unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.
Respondent has no rights to or legitimate interests in respect of the disputed domain name.
Respondent is a serial cyber-squatter as evidenced by prior UDRP decisions against it.
The contested domain name is an example of typo-squatting.
Respondent’s employment of the domain name disrupts Complainant’s business.
Respondent registered and uses the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights or to 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."
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 can-celled 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.
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 Verti-cal 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 reason-able 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.”
Complainant has rights in the BED BATH & BEYOND service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trade-mark authority, the USPTO. And, it is unnecessary under the Policy for Com-plainant to have registered its mark in the jurisdiction in which Respondent re-sides or does business (here St. Vincent and the Grenadines), it being sufficient for Complainant to have registered its mark in some jurisdiction (here the United States). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (finding that “the Panel finds that USPTO regis-tration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respond-ent lives or operates in a different country.”).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that the <bedbathandbeypnd.com> domain name is con-fusingly similar to Complainant’s BED BATH & BEYOND service mark. The domain name differs from the mark by the elimination of the spaces between the terms of the mark, the conversion of the ampersand to “and,” the substitution of a “p” for the letter “o” and the addition of the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save the domain name from the realm of confusing similarity under the standards of the Policy. See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (finding that a respondent’s domain names were con-fusingly similar to a UDRP complainant’s mark because the domain names were common misspellings of the mark involving keys that were adjacent to the current keys comprising the mark).
See also 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 Policy ¶ 4(a)(i).
Further see Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding the <wrightandlato.com> domain name identical to a complainant’s WRIGHT & LATO mark, because the ampersand symbol (“&”) is not reproducible in a domain name).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the contested domain name <bedbathandbeypnd.com>, and that Respondent is neither affiliated with Com-plainant, nor has Complainant given Respondent permission to use the BED BATH & BEYOND mark. Moreover, the pertinent WHOIS information reflects that the registrant of the domain name is “Private Registrations Aktien Gesell-schaft/Domain Admin,” which does not resemble the domain name. On this record we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the proposition that a respondent has been commonly known by a contested domain name, that contention must be rejected).
We next observe that Complainant asserts, without objection from Respondent, that Respondent is not using the disputed domain name to provide either a bona fide offering of goods or services or a legitimate noncommercial or fair use, in that Respondent uses the domain name to redirect unsuspecting Internet users to a website featuring links to third-party websites which compete with Complain-ant’s business, and that it may be presumed that Respondent receives click through fees from the linked webpages. This employment of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legit-imate noncommercial or fair use under Policy ¶ 4(c)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website resolving from a domain name which is confusingly similar to the mark of another does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent is a serial cyber-squatter, as evidenced by a pattern of prior UDRP decisions against it in which bad faith in the registration and use of domain names derived from the marks of others was found. See UnitedHealth Group Incorporated v. Private Registrations Aktien Gesellschaft c/o Domain Admin, FA 1277666 (Nat. Arb. Forum Sept. 24, 2009); see also Vision-Sciences Inc. v. Private Registrations Aktien Gesellschaft, FA 1297252 (Nat. Arb. Forum Jan. 20, 2010); and General Nutrition Investment Company v. Private Registrations Aktien Gesellschaft Domain Admin, FA 1330699 (Nat. Arb. Forum July 27, 2010). Under Policy ¶ 4(b)(ii), this pattern stands as proof of bad faith in the registration and use of the instant domain name. 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 the respondent had been subject to several UDRP proceedings in which panels ordered the transfer of disputed domain names containing the trademarks of UDRP complainants).
We are also convinced by the evidence that Respondent’s employment, for its intended profit, of the <bedbathandbeypnd.com> domain name, which is con-fusingly similar to Complainant’s BED BATH & BEYOND service mark, disrupts Complainant’s business. This demonstrates bad faith in the registration and use of the domain name under Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008):
The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).
Finally under this head of the Policy, we conclude that the contested domain name <bedbathandbeypnd.com> is, as alleged in the Complaint, an example of typo-squatting, i.e.: the deliberate misspelling of the mark of another in a domain name in order to attract Internet traffic by taking advantage of the inadvertent typographical errors of Internet users made when they attempt to enter the names of mark holders in their web browsers. Typo-squatting is, in and of itself, evidence of bad faith in the registration and use of a domain name. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003):
Respondent’s registration and use of the …[domain name]… that capitalizes on the typographical error of an Internet user is consid-ered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
For these reasons, the Panel finds that Complainant has met its obligations of proof under 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 <bedbathandbeypnd.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 2, 2013
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