Bed Bath & Beyond Procurement Co. Inc. (n/k/a Liberty Procurement Co. Inc.) v. Kim Bum
Claim Number: FA1402001545552
Complainant is Bed Bath & Beyond Procurement Co. Inc. (n/k/a Liberty Procurement Co. Inc.) (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Kim Bum (“Respondent”), South Korea.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bedbathanbdbeyond.com>, <bedbathandbeyonnd.com>, and <bedbathandbeyons.com>, registered with RegisterMatrix.com Corp.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 25, 2014; the National Arbitration Forum received payment on February 25, 2014.
On March 4, 2014, RegisterMatrix.com Corp. confirmed by e-mail to the National Arbitration Forum that the <bedbathanbdbeyond.com>, <bedbathandbeyonnd.com>, and <bedbathandbeyons.com> domain names are registered with RegisterMatrix.com Corp. and that Respondent is the current registrant of the names. RegisterMatrix.com Corp. has verified that Respondent is bound by the RegisterMatrix.com 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 March 4, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 24, 2014 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@bedbathanbdbeyond.com, postmaster@bedbathandbeyonnd.com, postmaster@bedbathandbeyons.com. Also on March 4, 2014, 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 March 28, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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
1. Respondent’s <bedbathanbdbeyond.com>, <bedbathandbeyonnd.com>, and <bedbathandbeyons.com> domain names are confusingly similar to Complainant’s BED BATH & BEYOND mark.
2. Respondent does not have any rights or legitimate interests in the <bedbathanbdbeyond.com>, <bedbathandbeyonnd.com>, and <bedbathandbeyons.com> domain names.
3. Respondent registered and uses the <bedbathanbdbeyond.com>, <bedbathandbeyonnd.com>, and <bedbathandbeyons.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Respondent registered the disputed domain names was April 11, 2005, and uses it to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.
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 Panel finds that Complainant has sufficiently proven its rights in the BED BATH & BEYOND mark under Policy ¶ 4(a)(i) through its registration with the USPTO. 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 appears to reside in South Korea; however, Complainant is not required to register its trademark in the country where Respondent resides. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Respondent’s <bedbathanbdbeyond.com>, <bedbathandbeyonnd.com>, and <bedbathandbeyons.com> domain names all differ from Complainant’s mark by a single character. This change does not differentiate the domain name from Complainant’s mark under Policy ¶ 4(a)(i). 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)); see also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”). The Panel also notes that Respondent substitutes the ampersand in Complainant’s mark with the word “and.” In Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000), the Panel held that the disputed domain name was “identical to the complainant’s WRIGHT & LATO mark, because the ampersand symbol (&) is not reproducible in a URL.” Thus, the Panel finds that Respondent’s substitution of the term “and” for an ampersand does not distinguish the disputed domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). Respondent has removed the spaces in Complainant’s mark and added the generic top-level domain (“gTLD”) “.com” to the <bedbathanbdbeyond.com>, <bedbathandbeyonnd.com>, and <bedbathandbeyons.com> domain names, both irrelevant to a confusingly similar analysis 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 Policy ¶ 4(a)(i).”). The Panel finds that Respondent’s <bedbathanbdbeyond.com>, <bedbathandbeyonnd.com>, and <bedbathandbeyons.com> domain names are confusingly similar to Complainant’s mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 claims that Respondent is not commonly known by the <bedbathanbdbeyond.com>, <bedbathandbeyonnd.com>, and <bedbathandbeyons.com> domain names. Complainant argues that Respondent is not sponsored by or legitimately affiliated with Complainant, nor has Complainant given Respondent permission to use Complainant’s mark. The WHOIS record lists “Kim Bum” as the registrant of the disputed domain names. Prior UDRP panels have held that a respondent’s lack of evidence showing that it is known by the disputed domain names proves that it is not known by the domain name. 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, the Panel finds that Respondent is not commonly known by the <bedbathanbdbeyond.com>, <bedbathandbeyonnd.com>, and <bedbathandbeyons.com> domain names and thus has no rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii).
Complainant alleges that Respondent is using the <bedbathanbdbeyond.com>, <bedbathandbeyonnd.com>, and <bedbathandbeyons.com> domain names to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. The Panel notes that the disputed domain names lead to webpages hosting links such as “Bed Bath and Beyond,” “Bed Bath Coupons,” and “Williams-Sonoma Sale.” Complainant asserts that Respondent receives click-through fees in exchange for hosting the competing links on its disputed domain names. The Panel finds that Respondent’s use of the disputed domain names to host competing hyperlink directories demonstrates a lack of bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees. . . . is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent is a serial cybersquatter, citing various UDRP decisions finding that Respondent has engaged in an ongoing pattern of findings of bad faith and transfer. See Ashley Furniture Industries, Inc. v. Kim Bum LLC / Kim Bum, FA 1467301 (Nat. Arb. Forum Nov. 27, 2012); W.W. Grainger, Inc. v. Kim Bum LLC / Kim Bum, FA 1470241 (Nat. Arb. Forum Dec. 26, 2012); The Boeing Company v. Kim Bum, FA 1510222 (Nat. Arb. Forum Aug. 30, 2013). Prior UDRP panels have held that a respondent’s history of registering domain names in bad faith is an indication of current bad faith under Policy ¶ 4(b)(ii). See Azar Int’l Inc. v. Texas Int’l Prop. Assocs., FA 1122600 (Nat. Arb. Forum Feb. 18, 2008) (determining that the respondent’s forty-one prior UDRP rulings were evidence of bad faith registration under Policy ¶ 4(b)(ii)). Thus, the Panel finds that Respondent’s pattern of UDRP proceedings resulting in bad faith and transfer demonstrates bad faith use and registration under Policy ¶ 4(b)(ii).
Respondent’s advertised pay-per-click links displayed on the websites resolving from the <bedbathanbdbeyond.com>, <bedbathandbeyonnd.com>, and <bedbathandbeyons.com> domain names promote products that compete with Complainant, diverting potential customers away from Complainant and disrupting Complainant’s business. Therefore, the Panel finds that Respondent’s use of the <bedbathanbdbeyond.com>, <bedbathandbeyonnd.com>, and <bedbathandbeyons.com> domain names constitutes bad faith under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Respondent presumably commercially gains from the hosting of the disputed domain names through click-through fees. In Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), the panel held that “Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’” The Panel finds that Respondent is using the disputed domain names to divert consumers away from Complainant’s website for its own financial benefit, and thus has registered and is using the <bedbathanbdbeyond.com>, <bedbathandbeyonnd.com>, and <bedbathandbeyons.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iv).
Respondent’s <bedbathanbdbeyond.com>, <bedbathandbeyonnd.com>, and <bedbathandbeyons.com> domain names include simple typographical errors in Complainant’s mark and thus Respondent is typosquatting. 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).”). Therefore, the Panel finds that Respondent has registered the <bedbathanbdbeyond.com>, <bedbathandbeyonnd.com>, and <bedbathandbeyons.com> domain names in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that 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 <bedbathanbdbeyond.com>, <bedbathandbeyonnd.com>, and <bedbathandbeyons.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 4, 2014
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