The TJX Companies, Inc. v. PPA Media Services / Ryan G Foo
Claim Number: FA1308001514112
Complainant is The TJX Companies, Inc. (“Complainant”), represented by Kitty Bina of Alston & Bird, LLP, Georgia, USA. Respondent is PPA Media Services / Ryan G Foo (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shoptjmaxx.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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 9, 2013; the National Arbitration Forum received payment on August 9, 2013.
On August 20, 2013, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <shoptjmaxx.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 August 26, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 16, 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@shoptjmaxx.com. Also on August 26, 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 September 19, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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
1. Complainant has rights in the famous T.J. MAXX mark, which Complainant and its subsidiaries use in conjunction with various retail store services.
2. Complainant owns registrations for the T.J. MAXX and design mark with the United States Patent and Trademark Office (“USPTO”)
a. Reg. No. 1,495,462 registered July 5, 1988
b. Reg. No. 1,637,243 registered March 5, 1991
c. Reg. No. 1,871,345 registered January 3, 1995
d. Reg. No. 2,223,884 registered February 16, 1999
e. Reg. No. 2,199,819 registered October 27, 1998
f. Reg. No. 2,486,445 registered September 11, 2001
g. Reg. No. 4,006,314 registered August 2, 2011
3. Respondent’s <shoptjmaxx.com> domain name is confusingly similar to Complainant’s T.J. MAXX mark.
a. Respondent’s <shoptjmaxx.com> domain name features the T.J. MAXX mark in its entirety with the addition of the generic term “shop.”
b. Respondent also adds the generic top-level domain “gTLD” “.com.”
4. Respondent has no rights or legitimate interests in the <shoptjmaxx.com> domain name.
a. Respondent registered the disputed domain name more than 20 years after the first use of the T.J. MAXX mark.
b. Respondent is not allowed or licensed to use the T.J. MAXX mark.
c. Respondent uses the disputed domain name to resolve to a website featuring pay-per-click links that attempts to trade on Complainant’s goodwill associated with the T.J. MAXX mark.
d. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
5. Respondent has registered and is using the disputed domain name in bad faith.
a. Respondent has a pattern of registering domain names that include famous marks combined with generic terms.
b. Respondent is attempting to benefit from Internet user confusion and increase profits from retail related pay-per-click links.
c. Respondent provides links to competitors of Complainant.
d. Respondent had knowledge of Complainant and its marks based on the fame and notoriety of the T.J. MAXX mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is The TJX Companies, Inc. located in Framingham, MA, USA. Complainant is the owner of the mark T.J. MAXX for which it owns several USA registrations. Complainant states that it has used the mark since at least as early as 1977, and continuously since that time to promote its retail store services. Complainant operates in real space at more than 1,000 stores throughout the USA and also conducts business in cyberspace at its website <tjmaxx.com>.
Respondent is indicated as PPA Media Service, Ryan G. Foo of Santiago, Chile. Respondent’s registrar’s address is indicated as Nassau, The Bahamas. Respondent registered the <shoptjmaxx.com> domain name on or about July 8, 2008.
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.”).
Complainant and its subsidiaries use the T.J. MAXX mark in conjunction with various retail stores and services. Complainant currently operates more than 1,000 stores across the United States. Complainant also claims to own the <tjmaxx.com> domain name. Complainant contends that Complainant has rights in the T.J. MAXX mark under Policy ¶ 4(a)(i). Complainant provides the panels with evidence of its registrations for the T.J. MAXX mark with the USPTO:
Reg. No. 1,495,462 registered July 5, 1988
Reg. No. 1,637,243 registered March 5, 1991
Reg. No. 1,871,345 registered January 3, 1995
Reg. No. 2,223,884 registered February 16, 1999
Reg. No. 2,199,819 registered October 27, 1998
Reg. No. 2,486,445 registered September 11, 2001
Reg. No. 4,006,314 registered August 2, 2011
Previous panels have found that evidence of trademark registrations with a recognized authority is sufficient to establish rights in a given mark under Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). The Panel notes that Respondent’s residence appears to be Chile but previous panels have found that it is irrelevant whether a complainant owns a registration in the country where respondent resides, requiring only that the complainant can establish a registration in some jurisdiction. 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). The Panel finds that Complainant has rights in the T.J. MAXX mark under Policy ¶4(a)(i).
Complainant argues that Respondent’s <shoptjmaxx.com> domain name is confusingly similar to Complainant’s T.J. MAXX mark under Policy ¶ 4(a)(i). Complainant argues that Respondent’s <shoptjmaxx.com> domain name features Complainant’s T.J. MAXX mark in its entirety with the addition of the gTLD “.com” and the generic word “shop.” The Panel notes that Respondent removes the spaces and periods in Complainant’s T.J. MAXX mark. Previous panels have found that removing spaces and punctuation, and adding generic words and a gTLD is insufficient to differentiate a disputed domain name from a given mark. See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also Memoirs, Inc. v. Patel, FA 98244 (Nat. Arb. Forum Aug. 28, 2001) (finding the domain name to be confusingly similar where a period was omitted from the I.MEMOIRS mark and the gTLD “.com” was added); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). The Panel finds that Respondent’s <shoptjmaxx.com> domain name is confusingly similar to Complainant’s T.J. MAXX mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has met this burden.
Complainant argues that Respondent has no rights or legitimate interests in the <shoptjmaxx.com> domain name because Respondent is not commonly known by the domain. Complainant contends that Respondent has no connection or affiliation with Complainant. Complainant further states that it has not licensed or consented to Respondent using its T.J. MAXX mark in any way. Previous panels have found that a respondent is not commonly known by a disputed domain name where there is no indication on the record that respondent is known by the disputed domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question). The Panel finds that Respondent is not commonly known by the <shoptjmaxx.com> domain name and has no rights or legitimate interests under Policy ¶ 4(c)(ii).
Complainant further alleges that Respondent has no rights or interests in the <shoptjmaxx.com> domain name because Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). Complainant contends that Respondent uses the disputed domain name to resolve to a pay-per-click website that attempts to trade on the goodwill associated with Complainant and its T.J. MAXX mark. Complainant argues that Respondent receives revenue from Complainant’s customers. The Panel notes that Exhibit F displays a screenshot of the website resolving from Respondent’s <shoptjmaxx.com> domain name and that some of the featured links include, “T.J. Maxx Deals,” “Belk- Official Site,” “Nordstrom-Official Site,” “Ralph Lauren Online,” “Sears Official Site,” “Victoria Secret,” “Macy’s Official Site,” and “Anthropology- Official Site.” Previous panels have found that this type of commercial use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and (iii), as a result of its use of the disputed domain name to offer website visitors competing hyperlinks.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant contends that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(ii). Complainant asserts that Respondent has a pattern of registering domain names that include famous marks combined with generic terms. See Homer TLC, Inc. v. PPA Media Servs. / Foo, FA1416637 (Nat. Arb. Forum Jan. 13, 2012); see also Am. Sports Licensing, Inc. v. PPA Media Servs. / Foo, FA 1426016 (Nat. Arb. Forum Mar. 2, 2012); see also Am. Sports Licensing, Inc. v. PPA Media Servs. / Foo, FA 1426024 (Nat. Arb. Forum Mar. 6, 2012); see also Inc. v. PPA Media Servs. / Foo, FA 1429880 (Nat. Arb. Forum Apr. 11, 2012); along with the remainder of Exhibit H. Previous panels have found bad faith use and registration when a respondent was subject to numerous UDRP proceedings where panels ordered the transfer of the disputed domain names containing trademarks of the complainants. See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting). The Panel finds that Respondent has registered and is using the <shoptjmaxx.com> domain name in bad faith under Policy ¶ 4(b)(ii).
Complainant argues that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii). Complainant claims that Respondent’s disputed domain name resolves to a parked website featuring links that compete with Complainant’s business. Complainant lists the competing links as, “Nordstrom, Dillard’s, Ross, Sears, and Macys.” Previous panels have found that using a confusingly similar domain name to resolve to a competing website disrupts a complainant’s business and indicates bad faith use and registration under Policy ¶ 4(b)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).”) The Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant asserts that Respondent uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv) because it is attempting to attract Internet users to its website for commercial gain. Complainant claims that Respondent is attracting Internet users for profit by using a confusingly similar domain name and resolving to a pay-per-click website featuring links to third parties. Previous panels have found that using a confusingly similar domain name to resolve to a website featuring pay-per-click links indicates bad faith use and registration under Policy ¶ 4(b)(iv). See 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).”) The Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that <shoptjmaxx.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: October 3, 2013
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