BBY Solutions, Inc. v. Best Buy Online / M/S Best Buy Online
Claim Number: FA1505001620654
Complainant is BBY Solutions, Inc. (“Complainant”), represented by Karen A. Brennan, Minnesota, USA. Respondent is Best Buy Online / M/S Best Buy Online (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bestbuymy.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 21, 2015; the Forum received payment on May 21, 2015.
On May 22, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <bestbuymy.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 May 29, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 18, 2015 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@bestbuymy.com. Also on May 29, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On June 19, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 must prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 the BEST BUY mark in connection with its business as a leading electronics retailer. Complainant registered the BEST BUY mark with the United States Patent and Trademark Office (“USPTO”) (reg. no. 1,899,212, registered June 13, 1995). Complainant also registered the MY BEST BUY mark with the USPTO (reg. no. 4,605,558, registered September 16, 2014). A complainant’s registration of a mark with the USPTO (or other similar governmental authority) is sufficient to demonstrate their rights in a mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶4(a)(i).”) At this stage of a proceeding, Complainant need only prove it has some rights, not that Complainant’s rights are superior to Respondent’s rights. Complainant is not required to have registered its mark in Respondent’s home country. Complainant has sufficiently established its rights in the BEST BUY mark pursuant to Policy ¶4(a)(i).
Complainant claims Respondent’s disputed <bestbuymy.com> domain name is identical to Complainant’s BEST BUY mark. Respondent’s disputed domain name differs from Complainant’s registered BEST BUY mark through the addition of the possessive pronoun “my” and the gTLD “.com” to Complainant’s mark. The addition of the generic word “my” and gTLDs does not prevent a finding that the disputed domain name and mark are identical or confusingly similar. See NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”); Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”). In addition, Complainant owns the MY BEST BUY mark, which is even more similar to the disputed domain name. The Panel finds Respondent’s disputed <bestbuymy.com> domain name is identical or confusingly similar to Complainant’s marks under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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.”).
Respondent is not affiliated with Complainant in any way and has not acquired rights in Complainant’s trademarks. Respondent has neither been licensed nor authorized to use the BEST BUY mark. Respondent is not commonly known by the disputed domain name. Typically, claims that a respondent is not commonly known by a disputed domain name are based on WHOIS information showing the registrant is listed as something not related to the domain name. In this case, the registrant of <bestbuymy.com> is listed as “Best Buy Online.” A respondent’s WHOIS information matching a complainant’s mark does not necessarily mean that a respondent is commonly known by that name. See Skyline Displays, Inc. v. Hangzhou Skyi Display Equip. Co., FA 187706 (Nat. Arb. Forum Oct. 14, 2003) (“Despite the fact that Respondent lists itself as Hangzhou Skyi Display Equipment Co., Ltd. in its WHOIS contact information, there is no evidence presented to the Panel showing that Respondent is commonly known by the <skyidisplay.com> domain name prior to registering the domain name.”). Frankly, this Panel is a little skeptical of the “Best Buy Online” used to register the domain name. As far as this Panel can determine, there is no such entity in India. Therefore, this Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii).
Respondent’s use of the disputed domain name to host an online retail website, which prominently displays Complainant’s logo, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent advertises its online retailing services as “The Kind of products that you are looking for like- Shirts, Trousers, shoes and bedsheet for your home. In short, if you’ve got a product in mind, they probably have in this online store, on their list that can give you a discount for it.” Panels have found that diverting users to a commercial website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute 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)). Respondent’s use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶4(c)(i) and 4(c)(iii), respectively.
Finally, Respondent used a privacy WHOIS service to register the disputed domain name. This means Respondent acquired no rights to the domain name by registering it because Respondent didn’t publicly associate itself with the disputed domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent’s use of the disputed <bestbuymy.com> domain name creates a likelihood of confusion by which the Respondent presumably gains commercially. Respondent uses the disputed domain name to resolve to a website offering online retailing services. Using a complainant’s mark to divert and confuse internet users is evidence of bad faith registration and use. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”) Under the circumstances of this case, Respondent’s use of the disputed domain name constitutes bad faith under Policy ¶4(b)(iv).
Complainant claims Respondent was on notice of Complainant’s rights in the mark prior to domain name registration because Respondent included the entire mark in the domain name. Respondent used Complainant’s graphic depiction of the BEST BUY mark, down to the ® in the graphic. Respondent knew what it was doing; that is the point of the ®. Respondent actually knew of Complainant’s rights in the mark and Respondent is liable 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.”).
Finally, Respondent registered the domain name using privacy service. In the commercial context, this raises the rebuttable presumption of bad faith registration and use. Respondent took no steps to rebut that presumption. For this reason alone, this Panel will find bad faith registration and use.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <bestbuymy.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, July 2, 2015
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