Bed Bath & Beyond Procurement Co. Inc. (n/k/a Liberty Procurement Co. Inc.) v. Domain Admin / Hong Kong Domain
Claim Number: FA1411001591263
Complainant is Bed Bath & Beyond Procurement Co. Inc. (n/k/a Liberty Procurement Co. Inc.) (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Domain Admin / Hong Kong Domain (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bedbatnandbeyond.com> and <beddbathandbeyond.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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 20, 2014; the National Arbitration Forum received payment on November 20, 2014.
On November 25, 2014, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <bedbatnandbeyond.com> and <beddbathandbeyond.com> domain names are registered with Internet.bs Corp. and that Respondent is the current registrant of the names. 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 November 25, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 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@bedbatnandbeyond.com, postmaster@beddbathandbeyond.com. Also on November 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 December 23, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant uses BED BATH & BEYOND to identify its retail store services featuring a variety of consumer goods, including linen products, home furnishing, house wares, and appliances. Complainant owns the BED BATH & BEYOND mark as demonstrated by federal registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,830,725, registered April 12, 1994). Complainant conducts its online business through <bedbathandbeyond.com>. The <bedbatnandbeyond.com> and <beddbathandbeyond.com> domain names are confusingly similar to the BED BATH & BEYOND mark as the domain names deviate from the mark by a single added or substituted letter.
ii) Respondent has no Policy ¶ 4(a)(ii) rights or legitimate interests in the disputed domain names. Complainant shares no affiliation with Respondent, and Respondent is not commonly known by these <bedbatnandbeyond.com> and <beddbathandbeyond.com> domain names. Nor is Respondent using the disputed domain names in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Instead, the disputed domain names each resolve to a website promoting pay-per-click hyperlinks, some of which relate to Complainant or compete with Complainant’s retail offerings.
iii) Respondent has engaged in bad faith registration and use. The disputed domain names resolve to a website promoting links to providers of goods and services in competition with Complainant. As these competing links disrupt Complainant’s business through user diversion, Policy ¶ 4(b)(iii) is implicated. Next, the resolving website features pay-per-click links, which relate to and compete with Complainant; therefore Respondent is seeking profit through Internet user confusion in violation of Policy ¶ 4(b)(iv). Lastly, Respondent’s <bedbatnandbeyond.com> and <beddbathandbeyond.com> domain names constitute typosquatting of Complainant’s BED BATH & BEYOND mark, and therefore indicate Policy ¶ 4(a)(iii) bad faith.
B. Respondent
Respondent did not submit a response in this case. Respondent registered the <bedbatnandbeyond.com> domain name on November 28, 2005, and the <beddbathandbeyond.com> domain name on January 10, 2008.
Complainant established that it had rights in the mark contained in the disputed domain names. Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names 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 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 uses BED BATH & BEYOND to identify its retail store services featuring a variety of consumer goods, including linen products, home furnishing, house wares, and appliances. Complainant claims to own the BED BATH & BEYOND mark as demonstrated by federal registrations with the USPTO (e.g., Reg. No. 1,830,725, registered April 12, 1994). The Panel agrees that Complainant’s registrations with the USPTO satisfy the requirements of Policy ¶ 4(a)(i). See Homer TLC, Inc. v. Song Bin, FA 1505218 (Nat. Arb. Forum July 30, 2013) (“Complainant’s USPTO registration sufficiently establishes its rights in the HOME DEPOT mark under Policy ¶4(a)(i), despite the fact Respondent resides outside of the United States.”).
Complainant argues the <bedbatnandbeyond.com> and <beddbathandbeyond.com> domain names are confusingly similar to the BED BATH & BEYOND mark as the domain names deviate from the mark by a single added or substituted letter. The Panel notes that the <bedbatnandbeyond.com> domain name replaces the “h” in “bath” with the letter “n,” while the <beddbathandbeyond.com> domain name interjects a duplicate letter “d” after “bed.” The Panel also notes that the domain names remove the spacing from the mark, replaces the ampersand (&) with the equivalent “and,” and add the generic top-level domain (“gTLD”) “.com.” Prior panels have considered the removal of spacing, addition of a gTLD, and restatement of the ampersand, carry no significance to the confusing similarity analysis. See Lucky Brand Dungarees, Inc. v. Cole, FA 363048 (Nat. Arb. Forum Dec. 28, 2004) (stating that, “[i]t is well established that neither the deletion of a space between words in a trademark nor the addition of a generic top-level domain distinguish a domain name from the trademark”); PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (noting that PG&E’s home web page is found at <pge.com> because the ampersand symbol is not reproducible in a domain name). Further, panels have held that the addition or substitution of a single letter in an otherwise incorporated mark does not dispel confusing similarity. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding the respondent’s <microssoft.com> domain name to be confusingly similar to the complainant’s MICROSOFT mark because they differ by only one letter, and “such a small alteration is insufficient to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)”). Accordingly, the Panel finds the <bedbatnandbeyond.com> and <beddbathandbeyond.com> domain names confusingly similar to the BED BATH & BEYOND mark pursuant to Policy ¶ 4(a)(i).
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); 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 is of the position that Respondent has no Policy ¶ 4(a)(ii) rights or legitimate interests in the disputed domain names. Complainant urges that it shares no affiliation with Respondent, and asserts that Respondent is not commonly known by these <bedbatnandbeyond.com> and <beddbathandbeyond.com> domain names. In considering Policy ¶ 4(c)(ii), prior panels have looked to the totality of the evidence, including the WHOIS record, to surmise any semblance between Respondent and the disputed domain name. 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). At present, the Panel notes that the WHOIS information merely lists “Domain Admin / Hong Kong Domain” as registrant of both domain names. In light of the available evidence, the Panel finds no basis to consider Respondent commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii).
Additionally, Complainant asserts that Respondent has failed to use the disputed domain names in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Instead, Complainant offers that the disputed domain names each resolve to a website promoting pay-per-click hyperlinks, some of which relate to Complainant or compete with Complainant’s retail offerings. The Panel notes that the landing pages include links such as “Wayfair: Official Site,” “HauteLook™ Official Site,” “Bath Promo,” and “Bed Bath & Beyond Coupons.” The Panel agrees that Respondent’s use of the disputed domain names to feature hyperlinks in competition with or relating to Complainant indicate that no Policy ¶ 4(c)(i) bona fide offering is taking place through the disputed domain names, nor is there any legitimate noncommercial or fair use effectuated through the names per Policy ¶ 4(c)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”); Microsoft Corp. v. BARUBIN, FA 1174478 (Nat. Arb. Forum May 6, 2008) (“Respondent maintains a website at <msnmessenger2008.com> which appears to sell Complainant’s products and services and contains links to other third-party websites. Such use 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).”).
Complainant asserts that the disputed domain names resolve to websites promoting links to providers of goods and services in competition with Complainant. As these competing links disrupt Complainant’s business through user diversion, Complainant argues that a finding of bad faith pursuant to Policy ¶ 4(b)(iii) is warranted. The Panel notes that the disputed domain names do resolve to promote links to retail providers in competition with Complainant, including “Wayfair: Official Site,” “HauteLook™ Official Site,” and “Bath Promo.” See Compl., at Attached Ex. H. The Panel determines that Respondent’s efforts to redirect users to links of Complainant’s competitors falls within the behavior proscribed by Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Next, Complainant argues that Respondent is seeking profit through Internet user confusion in violation of Policy ¶ 4(b)(iv) as the resolving websites features pay-per-click links, some of which relate to or compete with Complainant. See Compl., at Attached Ex. H. Prior panels have found evidence of bad faith where the respondent uses the disputed domain name to derive click-through fees from links competitive with the complainant. For example, in Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), the panel wrote, “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).” Consistent with such precedent, the Panel agrees that Respondent has engaged in bad faith pursuant to Policy ¶ 4(b)(iv).
Lastly, Complainant argues that Respondent’s <bedbatnandbeyond.com> and <beddbathandbeyond.com> domain names constitute typosquatting of Complainant’s BED BATH & BEYOND mark, and therefore indicate Policy ¶ 4(a)(iii) bad faith. Prior panels have found bad faith under the Policy ¶ 4(a)(iii) totality provision where the respondent registered a domain name, not out of the ingenuity of the respondent, but because that respondent saw a mark that could be manipulated to siphon Internet users to an unrelated website. To illustrate, the panel in Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003), wrote, “Respondent’s registration and use of a 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).” The Panel recalls that the disputed domain names differ from the mark by the substitution or addition of a single letter, as well as revision of the ampersand to the equivalent “and.” In considering whether such alterations constitute typosquatting, the Panel notes that the ampersand is not replicable in domain names, and that Complainant operates its online business through the domain name <bedbathandbeyond.com>. See Compl., at Attached Ex. J. Prior panels have concluded that the replacement of the ampersand in a mark for “and” does not remove the resulting domain name from the realm of typosquatting. See Liberty Procurement Co. In. v. bedbathandbeyon.com / Hanna El Hinn, FA 1481712 (Nat. Arb. Form Mar. 11, 2013) (“Although not the classic case of typosquatting, because ‘and’ is the logical substitute for an ampersand in a domain name where punctuation is prohibited, the panel agrees that the domain name is a typosquatted version of Complainant’s BED BATH & BEYOND mark, which demonstrates bad faith under Policy ¶ 4(a)(iii).”). The Panel agrees that the <bedbatnandbeyond.com> and <beddbathandbeyond.com> domain names are typosquatted versions of the BED BATH & BEYOND mark, and therefore finds evidence of bad faith pursuant to 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 <bedbatnandbeyond.com> and <beddbathandbeyond.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: December 31, 2014
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