Macy's Inc. and its subsidiary Macy's West Stores, Inc. v. Domain Administrator / Modern Empire Internet Ltd.
Claim Number: FA1409001581440
Complainant is Macy's Inc. and its subsidiary Macy's West Stores, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Domain Administrator / Modern Empire Internet Ltd. (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <blomingdales.com>, registered with FABULOUS.COM PTY LTD.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically September 24, 2014; the National Arbitration Forum received payment September 24, 2014.
On September 24, 2014, FABULOUS.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <blomingdales.com> domain name is registered with FABULOUS.COM PTY LTD. and that Respondent is the current registrant of the name. FABULOUS.COM PTY LTD. verified that Respondent is bound by the FABULOUS.COM PTY LTD. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 25, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 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@blomingdales.com. Also on September 25, 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 October 23, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
Complainant makes the following allegations in this proceeding:
Complainant has used BLOOMINGDALE’S to promote a specific retail store line that uses the mark. The BLOOMINGDALE’S mark is registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 945,425 registered Oct. 17, 1972). The domain name is confusingly similar to the mark.
Respondent does not have rights in this <blomingdales.com> domain name. First, Respondent does not appear to be “known as” the <blomingdales.com> domain name, and Complainant has not authorized or endorsed Respondent’s use of the mark in Internet domain names. Further, Respondent is using the <blomingdales.com> domain name in a scheme to exploit an affiliate agreement with Complainant by using this confusingly similar domain name to divert Internet users to Complainant’s own websites.
Respondent registered and used the <blomingdales.com> domain name in bad faith. First, Respondent engaged in a pattern of bad faith registrations. Further, Respondent exploits an affiliate agreement with Complainant by using the <blomingdales.com> domain name to send users to respondent’s own websites. The use of the <blomingdales.com> domain name to send Internet users to Complainant’s websites also evidences Respondent’s apparent and actual knowledge of Complainant’s interest in the BLOOMINGDALE’S mark. The minor differences between this mark and the Internet domain name shows that Respondent seeks to prey upon common spelling errors in an act of typosquatting.
Respondent makes the following allegations in this proceeding:
Respondent did not submit a response.
The Panel notes that the <blomingdales.com> domain name was first registered Nov. 18, 2003, more than thirty years after Complainant’s registration of the mark.
Complainant established rights and legitimate interests in the mark contained in misspelled form in the disputed domain name.
Respondent has no such rights or legitimate interests.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain name 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical to or Confusingly Similar
Complainant states that it has used BLOOMINGDALE’S to promote a specific retail store line that uses the mark. Complainant notes that the BLOOMINGDALE’S mark is registered with the USPTO (e.g., Reg. No. 945,425 registered Oct. 17, 1972). The Panel agrees that the USPTO registration here is sufficient evidence of Complainant’s rights, irrespective of where Respondent resides. See, e.g., W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant further argues that Respondent’s domain name is confusingly similar to the mark. The Panel notes that the <blomingdales.com> domain name removes the mark’s apostrophe and a letter “o,” and adds the generic top-level domain “.com.” The Panel agrees that the removal of the apostrophe and the adding of a gTLD are irrelevant to a determination of confusing similarity. See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding punctuation is not significant in determining the similarity of a domain name and mark). The Panel also agrees that removing one letter from the mark in forming a domain name does not prevent findings of confusing similarity. 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)). Therefore, this Panel finds that the <blomingdales.com> domain name is confusingly similar to the BLOOMINGDALE’S mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to ICANN Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
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 of proof shifts to Respondent to show it does have such 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.”).
First, Complainant argues that Respondent does not appear to be “known as” the <blomingdales.com> domain name, and Complainant has not authorized or endorsed Respondent’s usage of the mark in Internet domain names. The Panel notes the WHOIS record for this domain name includes “Domain Administrator / Modern Empire Internet Ltd.” as the registrant of record. Here the Panel agrees that insufficient evidence links Respondent to Complainant’s mark and Respondent is not “commonly known” by the domain name under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Further, Complainant points out that Respondent is using the <blomingdales.com> domain name in a scheme to exploit an affiliate agreement with Complainant by using this confusingly similar domain name to divert Internet users to Complainant’s very own websites. The Panel notes that Respondent does appear to be using the domain name to reroute users to Complainant’s own websites. See Compl., at Attached Ex. H. In Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Nat. Arb. Forum May 12, 2011), the panel held that irrespective of the context of the use, a respondent does not acquire rights by merely allowing a confusingly similar domain name to resolve to a complainant’s website—the respondent could change such use at any time. Then as here, the Panel finds that Respondent has made no Policy ¶ 4(c)(i) bona fide offering, or Policy ¶ 4(c)(iii) legitimate noncommercial or fair use, because the domain name is ultimately confusingly similar to Complainant’s mark yet remains in the exclusive control of the unrelated Respondent.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
First, Complainant claims that Respondent engaged in a pattern of bad faith registrations. The Panel considered some of the representative decisions provided by Complainant. See, e.g., AutoZone Parts, Inc. v. Modern Empire Internet Ltd., FA 1497108 (Nat. Arb. Forum June 3, 2013). This Panel agrees that such prior adverse UDRP decisions provide a gateway to a finding of Policy ¶ 4(b)(ii) bad faith in the current proceeding. See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (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).”).
Complainant further claims that Respondent exploits an affiliate agreement with Complainant by using the <blomingdales.com> domain name to send users to Complainant’s own websites. The Panel again notes how Exhibit H suggests that an affiliate arrangement is used in the coding of the domain name’s resolution page to send users to Complainant’s very own websites. As such, the Panel finds that Respondent’s behavior constitutes Policy ¶ 4(a)(iii) bad faith because an agreement was breached and the domain name does no more than send users to Complainant’s own sites through a domain name held by an unauthorized third-party Respondent. See, e.g., MySpace, Inc. v. Gomez, D2007-1231 (WIPO Oct. 17, 2007) (finding bad faith when "Respondent has been using the disputed domain name to link to the Complainant’s own website. Inherent in that conduct is the risk that the Respondent may at any time cause Internet traffic to re-direct to a website that is not that of, or associated with, the Complainant."); Cricket Commc’ns, Inc. v. Oliver, FA 954005 (Nat. Arb. Forum May 29, 2007) (finding bad faith registration and use where the respondent registered domain names containing the complainant’s mark after enrolling in the complainant’s affiliate program).
Complainant further contends that the use of the <blomingdales.com> domain name to send Internet users to Complainant’s websites also evidences Respondent’s apparent and actual knowledge of Complainant’s interest in the BLOOMINGDALE’S mark. As such, the Panel agrees that Respondent actually knew of Complainant’s rights in the mark and as such Respondent’s use supports findings of bad faith under Policy ¶ 4(a)(iii). See, e.g., Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Complainant believes that the minor differences between this mark and the Internet domain name shows that Respondent seeks to prey upon common spelling errors in an act of typosquatting. In Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005), the panel agreed that bad faith could be implied when a domain name was so similar to a mark that the differences between the two had to have been intentional. Here the Panel finds Policy ¶ 4(a)(iii) bad faith through typosquatting because the domain name removes a single letter “o” from a domain name that would otherwise resolve to Complainant’s own domain name and underlying website.
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <blomingdales.com> domain name be transferred from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist.
Dated: October 30, 2014
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