national arbitration forum

 

DECISION

 

Bed Bath & Beyond Procurement Co. Inc. (n/k/a Liberty Procurement Co. Inc.) v. John Bonk / Land Merchandising Corp

Claim Number: FA1407001567950

PARTIES

Complainant is Bed Bath & Beyond Procurement Co. Inc. (n/k/a Liberty Procure-ment Co. Inc.) (“Complainant”), represented by CitizenHawk, Inc., California, USA.  Respondent is John Bonk / Land Merchandising Corp (“Respondent”), Tennessee, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bedbathndbeyond.com>, which is registered with GODADDY.COM, LLC.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electron-ically on July 1, 2014; the National Arbitration Forum received payment for its required fees on July 1, 2014.

 

On Jul 02, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <bedbathndbeyond.com> domain name(s) is/are registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name.  GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC 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 2, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 22, 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@bedbathndbeyond.com.  Also on July 2, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Re-spondent 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 28, 2014, pursuant to Complainant's request to have the dispute decided 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

 

Complainant has used the BED BATH & BEYOND trademark in commerce since 1971 in connection with the retail sale of linen products, housewares and home furnishings.

 

Complainant has a valid registration, on file with the United States Patent and Trademark Office (“USPTO”) for the BED BATH & BEYOND service mark (Registry No. 1,831,709, registered April 19, 1994).

 

Respondent registered the domain name <bedbathndbeyond.com> on or about November 26, 2005.

 

The domain name is confusingly similar to the BED BATH & BEYOND mark in which Complainant has rights.

 

Respondent has not been commonly known by the disputed domain name.

 

 

Respondent is not legitimately affiliated with Complainant in any way.

 

Complainant has not given Respondent permission to use its BED BATH & BEYOND mark in a domain name.

 

Respondent uses the domain name to redirect Internet users to a website featuring generic links to third-party websites, some of which compete directly with the business of Complainant.

 

Respondent uses the domain name to seek commercial gain through confusion caused among Internet users by linking Complainant’s potential customers to products sold by competitors of Complainant, and by collecting click-through revenue from the operation of the website resolving from the domain name.

 

Respondent has no rights to or legitimate interests in the domain name.

 

Respondent has offered the domain name for sale.

 

Respondent has engaged in an ongoing pattern of cybersquatting behavior.

 

Respondent’s use of the domain name disrupts Complainant’s business.

 

The domain name is an example of typo-squatting.

 

Respondent registered and uses the domain name in bad faith.

 

B. Respondent

 

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(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 to or 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.

 

DISCUSSION

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) (finding 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.”

 

Identical and/or Confusingly Similar

 

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.  See, for example, Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark reg-istration adequately demonstrates a UDRP complainant’s rights in a mark under Policy ¶ 4(a)(i)).

 

Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that the <bedbathndbeyond.com> domain name is confus-ingly similar to Complainant’s BED BATH & BEYOND service mark.  The domain name contains the entire mark, but for the deletion of a single letter “a” 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 it from the realm of confusing similarity under the standards of the Policy.  See Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (finding that the intro-duction of apparent typographical errors to the mark of another in creating a domain name do not avoid a conclusion of confusing similarity).

 

See also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of a domain name, such as “.net” or “.com,” does not affect the domain name for purposes of determining whether it is identical or confusingly similar to the mark of another under Policy ¶ 4(a)(i)).

 

Rights or Legitimate Interests

 

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 disputed domain name <bedbathndbeyond.com>, that Respondent is not legitimately affiliated with Com-plainant in any way, and that Complainant has not given Respondent permission to use its BED BATH & BEYOND service mark in a domain name.  Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “John Bonk,” which does not resemble the domain name.  On this record, we conclude that Respondent has not been commonly known by the contested do-main name so as to have shown that it has rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii).  See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) the panel there finding, under ¶ 4(c)(ii), that, given the WHOIS contact information for a disputed domain name, a UDRP respondent, Onlyne Corporate Services11, was not commonly known by the name ‘welsfargo’ in any derivation.

 

We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <bedbathndbeyond.com> domain name to redirect Internet users to a website featuring generic links to third-party websites, some of which compete directly with the business of Complainant, and that Respondent seeks to profit from the operation of the resolving website.  This employment 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 H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [complain-ant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).

 

The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii). 

 

Registration and Use in Bad Faith

 

We are persuaded by the evidence that Respondent has engaged in a pattern of cybersquatting behavior, as reflected in a series of UDRP decisions in which Re-spondent has been found to have registered and used in bad faith domain names which were confusingly similar to the marks of others.  See Memorial Sloan-Kettering Cancer Center v. John Bonk, FA1323580 (Nat. Arb. Forum June 24, 2010);  Comair Limited v. John Bonk, D2009-0094 (WIPO March 18, 2009);  and Ticketmaster v. John Bonk, D2008-1491 (WIPO Nov. 25, 2008).  Under Policy ¶ 4(b)(ii), this pattern stands as evidence that Respondent has registered and uses the disputed <bedbathndbeyond.com> domain name in bad faith.  See, for ex-ample, Travelocity.com v. Aziz, FA1260783 (Nat. Arb. Forum June 16, 2009):  

 

These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).

 

We are also convinced by the evidence that Respondent’s use of the disputed <bedbathndbeyond.com> domain name as alleged in the Complaint disrupts Complainant’s business.  Under Policy ¶ 4(b)(iii), this is further proof of Respond-ent’s bad faith in the registration and use of the domain name.  See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008):

 

Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to … products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).

 

In addition, the evidence shows that Respondent uses the disputed domain name to seek commercial gain from confusion caused among Internet users by the confusing similarity between the domain name and Complainant’s BED BATH & BEYOND service mark.  Under Policy ¶ 4(b)(iv), this too demonstrates Respondent’s bad faith in the registration and use of the domain name.  See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003):

 

Respondent's … 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.’

 

For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).

 

DECISION

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 <bedbathndbeyond.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.

 

 

Terry F. Peppard, Panelist

Dated:  August 5, 2014

 

 

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